Under federal trademark law, trademarks that are deemed to be “famous” are entitled to extra legal protection. Whether a trademark is “famous” is a factual determination that includes these non-exhaustive statutory factors:

• The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties
• The amount, volume, and geographic extent of sales of goods or services offered under the mark
• The extent of actual recognition of the mark and
• Whether the mark was registered under older versions of the Trademark Act and/or whether the trademark is listed on the Principal Register under current law.

See 15 U.S.C. § 1125(c)(2)(A). Courts have routinely identified several trademarks as “famous” including Budweiser beer, Camel cigarettes, Starbucks coffee, Pepsi, and Barbie dolls.

Time is often a key factor. Thus, new trademarks are generally not “famous.” But, a new trademark can quickly become famous if sufficient advertising and marketing resources are dedicated to making the trademark well-known among the relevant consuming public. The relevant consuming public is also an important consideration. A trademark can be basically unknown to the general public, but famous to consumers in a niche market. Sometimes (but not always) that is sufficient to make a trademark “famous” for purposes of trademark law.

Why having a famous trademark matters

If a trademark (or a confusingly similar trademark) is used by some person or entity other than the owner, the owner of the trademark may sue for trademark infringement. Only the owner of a trademark may use it. The underlying legal purpose is to protect consumers from being misled in their purchasing decisions. Consumer confusion is a key element that must be proven to win a trademark infringement case. As an example, the Pepsi trademark is associated with various carbonated beverages. Use of the Pepsi trademark with something wholly unrelated to carbonated beverages — like concrete or other other construction materials — might not be trademark infringement. In this example, likely, no consumers would be confused by the different uses of the trademark.

However, if a trademark is famous, it can be protected from dilution and/or tarnishment. The underlying legal purpose is to protect the trademark, not the consuming public. Thus, the famous Pepsi trademark might be diluted by allowing its use with construction materials (even if the public is not confused). Dilution generally occurs when the famous trademark begins to lose its ability to identify and distinguish the products/services of its owner as consumers begin to associate the trademark with other goods/services.

Dilution by Blurring vs. Dilution by Tarnishment

The Federal Trademark Dilution Act, codified at 15 U.S.C. § 1125(c) and amended by the Trademark Dilution Revision Act of 2006, recognizes two distinct forms of dilution:

Dilution by blurring occurs when use of a mark that is identical or similar to a famous mark — even on unrelated goods or services — impairs the famous mark’s distinctiveness. The concept is that a truly famous mark like “Kodak” immediately calls one thing to mind. If other businesses began selling “Kodak” pianos, “Kodak” restaurants, or “Kodak” clothing, the mark would lose its singular identification with photography products. Courts assess blurring by examining the degree of similarity between the marks, the degree of distinctiveness of the famous mark, the extent of exclusive use of the mark by its owner, the degree of recognition of the mark, and whether the defendant intended to create an association with the famous mark.

Dilution by tarnishment occurs when use of a mark in a manner that is harmful to the reputation of the famous mark. Classic examples involve using a famous mark in the context of low-quality goods, pornography, illegal activity, or any context that would cause the public to associate the famous mark with something unwholesome or unsavory. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the court held that dog toys parodying Louis Vuitton’s famous marks did not constitute tarnishment, in part because the parody nature of the use prevented any actual harm to the luxury brand’s reputation. However, the case illustrates that the line between permissible parody and actionable tarnishment requires careful legal analysis.

The “General Public” Requirement: Niche Fame Is Not Enough

A critical limitation on famous trademark protection is the requirement that the mark be widely recognized by the general consuming public of the United States — not merely by a specialized niche market. The Trademark Dilution Revision Act specifically rejected the pre-2006 case law from some circuits that found marks famous if they were famous only within a specific industry or geographic area. Under current law, a mark that is extremely well-known within the medical device industry, among professional chefs, or within a particular region of the country does not qualify as “famous” for dilution purposes unless it also enjoys broad recognition among the general public.

This is why most dilution cases involve nationally or globally recognized consumer brands. It also explains why courts have found that relatively successful marks — like the Lexington Hotel chain or the AWOL bar concept — are not “famous” even though they are well-known within their markets. Meeting the fame threshold is genuinely difficult, which is why dilution claims are reserved for the most iconic marks.

Dilution vs. Infringement: Strategic Choice of Claims

When a famous trademark owner has a potential claim, the choice between bringing a trademark infringement claim and a trademark dilution claim has significant strategic implications:

• Infringement requires proof of consumer confusion. Likelihood of confusion is the essential element. Courts apply a multi-factor test (the Polaroid factors in the Second Circuit, the Sleekcraft factors in the Ninth) examining the strength of the mark, proximity of the goods, similarity of the marks, evidence of actual confusion, quality of the defendant’s product, and sophistication of consumers. If the goods and services are in very different markets, proving likely confusion can be difficult.
• Dilution requires no proof of confusion. A famous mark owner bringing a dilution claim need not show that any consumer was confused or is likely to be confused. The sole inquiry is whether the use of the similar mark impairs the distinctiveness or reputation of the famous mark. This makes dilution an extremely powerful remedy where infringement would fail due to lack of confusion.
• Dilution provides a wider remedy for unauthorized commercial use. A famous mark owner can block uses of the mark by unrelated businesses in completely different markets — something that infringement law cannot reach.

Building Toward Famous Trademark Status

While most businesses will never reach the fame threshold needed for dilution protection, pursuing the factors that courts consider — sustained advertising investment, high sales volume, broad geographic use, and active maintenance of a federal registration — builds the strongest possible trademark portfolio regardless of whether fame is ultimately achieved. A mark that reaches near-famous status may not qualify for dilution protection, but will still be the strongest possible mark for infringement purposes and will be nearly impossible for competitors to register or use.

Contact Revision Legal

Revision Legal’s trademark attorneys advise clients on trademark portfolio strategy, famous mark protection, and dilution claims. Whether you believe a competitor is diluting your famous mark or you want to build a trademark that can eventually achieve famous status, contact us today.