Trademark owners can protect their intellectual property by bringing a trademark infringement action. This post highlights another valuable legal tool—an action for trademark dilution.
Trademark dilution occurs when a third party’s use of your trademark impairs the mark’s distinctiveness. Unlike infringement, it does not matter whether or not the mark is used on a competing product or in a way that is likely to cause customer confusion.
Under federal law, a dilution claim can be brought only if the mark is “famous.” In determining whether a mark is famous, the courts will evaluate the following factors:
- The degree of inherent or acquired distinctiveness;
- The duration and extent of use;
- The amount of advertising and publicity;
- The geographic extent of the market;
- The channels of trade;
- The degree of recognition in trading areas;
- Any use of similar marks by third parties; and
- Whether the mark is registered.
In addition, most states have laws against trademark dilution, which do not require a mark to be famous.
How I Can Help
Of course, this post provides only a broad overview of trademark dilution. If you believe your trademark is being diluted, it is advisable to consult with an experienced intellectual property attorney such as myself.