Dilution

Under the Federal Trademark Dilution Act of 1995, the term dilution means “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception.”

“The concept of trademark dilution dates back to an article written by Frank I. Schechter and published in the Harvard Law Review. Schechter explained that the true function of a trademark is ‘to identify a product as satisfactory and thereby to stimulate further purchases by the consuming public.’ Schechter rejected the theory that the exclusive role of a trademark was to serve as a source identifier. * * * He argued that injury occurs to a trademark owner whenever a trademark is used by another, even when used on non-competing goods. He explained that an injury to the trademark owner occurs when there is ‘a gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods. The more distinctive or unique the mark, the deeper is its impress upon the public consciousness, and the greater is its need for protection against vitiation or dissociation from the particular product in connection with which it has been used.’ This argument that the trademark laws should protect owners in connection with non-competing goods was novel.

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“The serious push for a federal trademark dilution law began in 1987 with the publication of ‘The United States Trademark Association Review Commission Report and Recommendations to USTA President and Board of Directors.’ In that report, the Commission proposed the adoption of a new federal trademark dilution law. Trademark dilution provisions were included in S. 1883, the proposed Trademark Law Revision Act of 1987. However, while most of the bill’s provisions eventually became law, concerns &mdash; raised by the broadcast industry and rallied by Rep. Robert Kastenmeier (D. Wis.) &mdash; that dilution protection would impinge on the First Amendment resulted in the deletion of the dilution provisions from the final legislation.

“In 1991, the United States Trademark Association (USTA) Board of Directors adopted a resolution supporting a federal trademark dilution provision. The American Bar Association Patent, Trademark and Copyright Law Section, in its 1991-92 Annual Report, voted overwhelmingly in favor or adding a dilution section to the Lanham Act.

“On March 22, 1995, the Federal Trademark Dilution Act of 1995 was introduced in the House of Representatives as H.R. 1295. With changes largely designed to make the bill applicable to the owners of both federally registered and common law trademarks, the bill was signed into law on January 16, 1996 as Public Law 104-98, creating a new Section 43(c) to the Lanham Act.”

“The definition is designed to encompass all forms of dilution recognized by the courts, including dilution by blurring, by tarnishment and disparagement, and by diminishment. In an effort to clarify the law on the subject, the definition also recognizes that a cause of action for dilution may exist whether or not the parties market the same or related goods or whether or not a likelihood of confusion exists. Thus, a mark protected against dilution can have acquired its fame in connection with one type of good or service and, as a result, be so famous as to be entitled to protection against dilution when used on or in connection with an unrelated good or service.”