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Trademark creation and use are both essential for the success of modern businesses. Trademarks are logos, words, phrases, designs, marks, and other things that consumers use to identify a business as the commercial source for goods or services. Trademarks are generally registered and can be valid for as long as the trademark is being used in commercial activity. Under U.S. trademark laws, trademarks are legally protected from being infringed upon by others using the same trademark or a trademark that is confusingly similar.
Additionally, when a trademark becomes “famous,” the trademark gains further legal protections against “dilution” — which means that the “power” of the trademark is reduced by its association with other trademarks, products, or activities. There are two types of dilution. First, there is dilution by blurring, where the famous trademark is used with other products and services, blurring the association of the famous mark with its primary commercial product/service. An example might be “Barbie BBQ Sauce,” which, over time, will tend to blur the famous trademark’s association with a particular type of child’s doll. Second, dilution by tarnishment occurs when the famous trademark is associated with something unsavory, distasteful, objectionable, illegal, or scandalous. An example might be “Budweiser Adult Theater Productions.”
As noted, to be eligible for these additional legal protections, a trademark must be deemed “famous.” So, the question becomes: how to prove a trademark is “famous.” The experienced Trademark Attorneys here at Revision Legal provide a discussion of that question below.
First, it is NOT enough to show that a trademark has been in use for many, many years. Whether a trademark is “famous” is a fact-based question for the courts to decide, and years-in-use is only one factor considered by the courts.
Second, “famous” is based on fame and recognition in the wide commercial market, not based on fame in a narrow niche market. A brand of horse polo mallets might be known to every enthusiast of the sport — famous — but the trademark will never be “famous” in the trademark sense, given that there is no mass market for horse polo.
Under the U.S. trademark laws, courts are to look at various factors. As noted, the length of continuous use of the trademark is one factor. The other statutory factors are:
These statutory factors are not exclusive, so there may be other types of evidence that can be used to show that a trademark is famous. One possibility is to provide evidence that the trademark has significant engagement on social media – likes, mentions, shares, etc. – and/or in more traditional media (books, magazines, newspapers, etc.). Another possible option, if available, is to present evidence that the trademark at issue has been deemed “famous” in different legal proceedings. If the trademark is used internationally, the same may be said if a foreign, non-U.S. court has deemed the trademark to be “well-known.”
Contact The Trademark Attorneys At Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
The federal dilution cause of action — codified at 15 U.S.C. § 1125(c), the Trademark Dilution Revision Act of 2006 — gives owners of famous trademarks a claim against uses that are likely to dilute the distinctive quality of the mark, even when there is no likelihood of consumer confusion. This is a significant expansion beyond standard trademark infringement, which requires proof of confusion. A dilution claim requires only that the mark be famous, that the defendant’s use began after the mark became famous, and that the use is likely to cause dilution by blurring or tarnishment.
The distinction matters because a well-known mark can be harmed — made less distinctive — even by uses that consumers would never confuse with the original. If a company were to market a brand of cleaning supplies under a name identical to a famous tech company’s trademark, no consumer would confuse cleaning supplies with computers. But repeated association of the famous mark with unrelated products erodes its distinctiveness over time, which is the harm that dilution law prevents. A famous mark’s owner can stop that dilution before the erosion becomes irreversible.
The Trademark Dilution Revision Act of 2006 specifically rejected the concept of “niche fame” — a standard that some pre-2006 courts had applied, under which a mark could qualify as famous based on recognition within a specific industry or consumer segment. Under the current statute, a mark must be “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.” The statutory phrase “general consuming public” means mass market recognition, not just recognition among enthusiasts, professionals, or industry insiders.
Courts have applied this standard rigorously. In Bd. of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008), the court found that the University of Texas Longhorns logo, while famous in certain markets, did not meet the general-public-recognition standard for dilution claims. By contrast, marks like NIKE, COCA-COLA, APPLE (for technology), and GOOGLE have consistently been found to meet the fame threshold because survey and market evidence shows recognition at or near universal levels among U.S. consumers.
The practical effect of the niche fame rejection is that relatively few marks qualify for dilution protection. Most brand owners pursuing dilution claims face threshold dismissal motions because they cannot demonstrate general public recognition. The marks that can confidently assert dilution protection are household names — the kind of marks that appear in cultural references, media, and everyday conversation without being associated with any particular product in context.
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