Dilution in the United States
Dr Ilanah Simon Fhima
Institute of Brand and Innovation Law
University College London
US dilution – a brief history
•
1932 – failed attempt to pass dilution legislation
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1946 – Lanham Act passed – no dilution provision
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1947 – First state trade mark dilution legislation (23 more states followed until 1996, and three more
adopted dilution as part of their common law)
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1988 – Trademark Revision Act – dilution put forward but rejected
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1995 – Federal Trademark Dilution Act – dilution becomes actionable at the federal level
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1999 – Trademark Amendment Act - dilution become ground of opposition to registration
•
2003 – Supreme Ct decided Victoria’s Secret
•
2006 – Federal Trademark Dilution Revision Act
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Current legislative provisions
• Trademark Dilution Revision Act 2006, amending §43(c) of
Lanham Act and conforming amendments
• Ingredients:
– Earlier famous mark
– Junior use likely to cause dilution by blurring or dilution by
tarnishment of the famous mark
– Regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury.
The fame standard
•
Fame requires wide recognition among general consuming public of US
•
Consider:
–
–
–
–
Extent of advertising
Extent of use
Actual recognition
Whether mark registered
•
Replaces niche fame
•
Compare: General Motors v Yplon – reputation only needed among public concerned by
the goods bearing the trade mark
•
BUT Antartica v OHIM - applicant’s argument that NASDAQ mark had to have a
reputation among general public NOT rejected
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Standard of proof
•
TDRA introduced to replace Victoria’s Secret actual dilution standard
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Claimant must show ‘likely’ dilution
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No need for actual economic harm
•
BUT Victoria’s Secret on remand
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Likelihood of blurring required – fact that blurring could happen not enough
•
Compare: Intel v CPM – don’t need actual and present injury, but do need
serious risk. For blurring need change in economic behaviour of consumers
Defining blurring
•
Similarity of marksassociationimpairing of distinctiveness of senior mark
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6-factor test for blurring:
i. Similarity of marks
ii. Degree of inherent or acquired distinctiveness of the famous mark.
iii. Extent to which the owner of the famous mark is engaging in substantially exclusive use of the
mark.
iv. Degree of recognition of famous mark.
v. Whether junior user intended to create association with famous mark
vi. Any actual association between two marks
•
Note: test is non-exhaustive and has been applied robustly, e.g. Haute Diggity Dog v
LVMH – most of factors satisfied but fact it was a parody used to find to likelihood of
blurring
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Defining blurring
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(i) Similarity of marks
–
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(ii) Degree of inherent or acquired distinctiveness of the famous
mark
–
•
Intel – relevant to association
Intel – relevant to association & detriment to distinctive character
(iii) Extent to which the owner of the famous mark is engaging
in substantially exclusive use of the mark
–
Intel – uniqueness of senior mark helpful in showing detriment to
distinctive character, but not decisive
Defining blurring
•
(iv) Degree of recognition of famous mark
–
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(v) Intention to create association
–
•
Not considered (but perhaps unnecessary – unfair advantage)
(vi) Actual association
–
•
Intel – wide reputation helpful in establishing association
Not considered
Note: US now doesn’t appear to consider relationship between
parties goods (said to be helpful in Intel)
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Defining tarnishment
•
Similarity of marksassociationharm to reputation of senior mark
•
No test
•
PepsciCo, Inc #1 Wholesale LLC and others - Real PEPSI cans made in to
bottle and can safes tarnishment because can safes often used to conceal
illegal drugs
•
Harris Research v Lynton – Chem-Dry v Chem-Who; negative association, not
a parody because goods in competition
•
Louis Vuitton v Haute Diggity Dogg - Rejection of idea that tarnishment a risk
because dog might choke on a defective HDD toy.
Unfair advantage
• No US protection
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Defences
• Fair use in comparative advertising/parodies/identify TM
owner’s goods but NOT if trade mark use
• News reporting/news commentary
• Non-commercial use
• Should due cause be doing this job?
Thank you
• i.fhima@ucl.ac.uk
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