What is Trademark Dilution?
Trademark dilution is the use of a mark or trade name in a way that dilutes the distinctive quality of a famous mark. Unlike traditional infringement claims, to establish a claim for dilution, the owner of a famous mark does not need to demonstrate that there is any competition between its goods or services and those offered under the offending mark, or that there is any likelihood of confusion. Traditionally, the courts have found two types of dilution to be actionable: dilution by blurring and dilution by tarnishment.
Dilution by blurring is the traditional injurious impact of dilution as envisioned by its original and occurs when customers or prospective customers see the plaintiff’s mark used by other persons to identify different sources on many different goods and services. The unique and distinctive significance of the mark to identify and distinguish one source may be diluted and weakened, but no confusion as to source, sponsorship, affiliation, or connection has occurred. A hypothetical example of dilution by blurring would be the effect on the famous KODAK mark if it were used on pianos or ball gowns. While the average consumer would be unlikely to believe that Eastman-Kodak had begun to manufacture these items, KODAK would cease to become a unique identifier of Eastman-Kodak cameras and related products.
Dilution by tarnishment can arise where the effect of the defendant’s unauthorized use is to degrade positive associations of the mark and thereby dilute the distinctive quality of the mark. Since a tarnishing use lessens the ability and capacity of a famous mark to identify a certain standing or reputation of type, quality, or wholesomeness of goods or services, the definition of dilution under the federal statute may be read to include tarnishment. In Hasbro, Inc. v. Internet Entertainment Group, Ltd., the court held that the mark “candyland.com,” which was used for an Internet web site showing sexually explicit pictures, diluted by tarnishment the famous mark CANDYLAND for a children’s board game.
