Trademark Dilution Claims and How they Differ from Infringement

Trademark dilution occurs when another entity uses a trademark in such a way as to cause a protected mark’s distinctiveness to be diminished in a non-related market. Unlike a trademark infringement action, dilution does not result in confusion among consumers as to the origin of the product since the unauthorized use does not compete with or have a substantial connection to the products or services of the trademark owner. Rather, trademark dilution laws attempt to safeguard robust trademarks from losing their strong correlation with a single product or service in the public eye.

A trademark owner can bring a claim for dilution under either federal or state law. The Federal Trademark Dilution Act of 1996 requires that the mark be “famous” as determined by several factors including: the level of distinctiveness, the extent of use, the degree of advertising and the geographic boundaries of the market. Brand names that fit this category include Kodak or Exxon. The federal law was revised in 2006 when Congress enacted the Trademark Dilution Revision Act, which sought to eliminate confusion under prior federal law by providing that the owner of a famous trademark does not need to establish actual or likely confusion or injury when pursuing an injunction to prohibit dilution of its mark based on the theories of blurring and tarnishment (discussed below). In contrast, state law does not require a trademark to be famous, but rather supports a dilution claim if the mark has a distinguishing quality and the two marks are considerably similar.

In order to bring an action for trademark dilution, a trademark owner must demonstrate “blurring” or “tarnishment” of the protected mark. Blurring results when the mark is diluted through an association with unrelated goods. This would occur, for example, if a manufacturer were to sell Exxon brand sports equipment. Tarnishment arises when a connection is created between the protected trademark and an inferior or inappropriate product, thereby tainting the reputation of the protected mark. In a recent case, ToysRUs asserted a trademark dilution claim for tarnishment against, a website displaying pornography.

The experienced team of attorneys at Connors & Associates provides its clients with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Dylan Connors

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