Federal Trademark Dilution Act of 1995

Citation: Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985, amending the Trademark Act of 1946, codified at 15 U.S.C. § 1125 et seq.

The Federal Trademark Dilution Act of 1995 was signed into law on January 16, 1996. It provides a federal cause of action against those who make commercial use of a "famous" trademark in such a manner that it dilutes the distinctive qualities of that mark. While a number of states already had anti-dilution laws on the books, enactment of a federal law provides uniform, nationwide protection for famous marks.

The Act also provides a major weapon for trademark owners in their effort to control the use of their trademarks as a domain name. Prior to enactment, federal law only protected against infringement of federally registered trademarks, false advertising and unfair competition. Unfortunately, none of those rights were a good "fit" when seeking to stop another party from using a famous trademark as a domain name.

Unlike an infringement claim, no likelihood of confusion, mistake or deception needs to be shown under the Act. Nor does the trademark owner need to show that there is direct or indirect competition between the trademark owner and the alleged usurper. Nor does the mark have to be federally registered. The trademark owner only needs to show that a famous mark is being used commercially by another in a manner which "lessens the capacity of a famous mark to distinguish goods or services . . . ."

There are two types of dilution:


 * Dilution by blurring &mdash; This occurs when another uses a famous mark on an unrelated product. While there may be no confusion as to the origin of the goods, it weakens the mark because the public comes to associate it with multiple sources of goods or service.
 * Dilution by tarnishment &mdash; This occurs when a mark is tainted or degraded due to its association with products or services which are inferior, immoral or scandalous, or which reflect negatively on the trademark owners' goods or services.

The Act does not distinguish between these two types of dilution. The Act also lists eight, non-exclusive criteria a court should consider in determining whether a given mark is "famous."

Unless willfulness is shown, the owner of the famous mark is only entitled to injunctive relief. However, if willfulness is found, the owner may also receive the diluter's profits, actual damages, treble damages and attorneys' fees and costs of the suit. Certain "safe harbor" defenses are also specified, including:


 * the use of another's mark in comparative advertising ("fair use")
 * non-commercial use, and
 * news reporting, commentary and other first amendment purposes.