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In the US, trademarks are legally protected from being infringed. In addition, FAMOUS trademarks have legal protections against two additional intellectual property “injuries” which are dilution by blurring and dilution by tarnishment.
Most are familiar with trademark infringement. Infringement occurs when someone uses another’s trademark or one that is confusingly similar that causes confusion among consumers with respect to the unique commercial source of the goods or services with which the trademark is associated. All trademarks are protected against infringement. Generally, to prove infringement, some manner of proof must be provided that consumers have been confused.
Causes of action for dilution by blurring and dilution are less well known. Both are independent legal claims and both have been available for a long time under the common law and under some state trademark regimes. Both are also now explicitly protected under the Federal Trademark Dilution Act (“FTDA”), most recently amended in 2006. The FTDA is premised on the fact that distinctive and famous trademarks are powerful selling tools that deserve extra legal protection.
Dilution by blurring is an “association arising from the similarity between a trademark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” See 15 U.S.C. § 1125(c)(2)(B). The statute looks to six factors to determine when dilution by blurring occurs:
A famous list of hypothetical examples of trademarks diluted by blurring includes “Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos and Bulova gowns.” A real-world example comes from the case of Nabisco, Inc. v. PF Brands, Inc., 191 F. 3d 208 (2nd Circuit 1999) where the court held that Pepperidge Farm could pursue a trademark dilution action against Nabisco to protect its trademarked goldfish shaped crackers. Nabisco planned to launch a new cracker product cross-marketed with a children’s cartoon television show with flavored crackers shaped like cats, dogs, and fish. The fish crackers had a shape very similar to the Pepperidge Farm cracker. Under the six-factor test, the court concluded that a jury could find that Nabisco’s product would dilute-via-blurring the famous Pepperidge Farm trademark. An injunction was issued against Nabisco which was affirmed.
Dilution by tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name, often in a negative way. See 15 U.S.C. § 1125(c)(2)(C). Probably the most famous dilution-by-tarnishment case is Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F. 2d 200 (2nd Cir. 1979) where the court affirmed that the famous trademark would be tarnished by allowing use of the cheerleading outfit in an adult pornographic film. More recently, ice cream brand Ben & Jerry’s faced a similar problem.
Trademark is another word for branding and many modern businesses are correct to focus on branding and maximizing brand value. The extra protection provided to famous brands by the FTDA is another — often underappreciated — reason that trademarks should be the object of substantial business energy and investment. If a business can make its brand “famous,” then the brand can be protected from dilution-by-blurring and by tarnishment.
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For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.
Not all trademarks are eligible for federal dilution protection—only “famous” marks qualify under 15 U.S.C. § 1125(c). The statute was amended in 2006 by the Trademark Dilution Revision Act (TDRA) to address circuit splits and to set a clear standard: a mark is famous if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Courts look to four non-exclusive factors: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the USPTO’s Principal Register.
The TDRA’s “general consuming public” standard significantly raised the bar from pre-2006 law. Niche fame—being famous only within a particular industry or geographic region—is insufficient. Only marks with the recognition level of COCA-COLA, NIKE, or APPLE qualify. Regional or niche fame does not meet the FTDA standard, though it may support dilution claims under state dilution statutes, which often have lower fame thresholds.
Dilution by tarnishment is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” 15 U.S.C. § 1125(c)(2)(C). Tarnishment typically occurs when the defendant’s use of a similar mark associates the famous mark with inferior goods or services, or with unsavory or offensive subject matter.
Classic examples include comparative advertising that depicts a competitor’s product as inferior, sexual or crude parodies of famous brand marks, and domain name registrations that incorporate famous marks in association with objectionable content. However, the FTDA expressly excludes fair use, parody, criticism, commentary, and noncommercial use from dilution liability under 15 U.S.C. § 1125(c)(3). The Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), clarified that parody is not a blanket defense and that the expressive use exemption does not apply when the allegedly parodic mark is used as a source identifier.
A plaintiff who establishes dilution under the FTDA is entitled to injunctive relief as a matter of right—no showing of irreparable harm is required, as the TDRA amended 15 U.S.C. § 1116 to make injunctions available in dilution cases without the traditional four-factor test. Monetary damages are available only upon proof of actual dilution (not merely likelihood), or when the defendant willfully intended to trade on the owner’s reputation. Willful dilution by tarnishment or blurring can also support an award of attorney’s fees.
Many states have their own trademark dilution statutes, some of which predated the federal FTDA. State dilution laws frequently protect marks that fall short of the FTDA’s general-consuming-public fame standard, extending protection to marks that are famous within a particular state or industry. The FTDA does not preempt state dilution laws—both federal and state claims can coexist, and state claims can fill gaps where the FTDA does not reach. Companies with regionally famous marks that fall short of FTDA fame should evaluate state dilution options under the applicable law of the states where their marks are recognized.
If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.
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