What is Trademark Dilution?

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Picture of Andrew Rapacke
Andrew Rapacke is a registered patent attorney and serves as Managing Partner at The Rapacke Law Group, a full service intellectual property law firm.

One of the biggest threats to famous trademarks is trademark dilution. Famous trademarks are those trademarks that are widely recognized by the consuming public (based on the geographical area where the trademark is used). Trademark dilution involves the use of a famous trademark in such a way that the use diminishes the famous mark’s capacity to distinguish the source of the goods that the famous mark is associated with. Trademark dilution is particularly troubling because the strength of the trademark is reduced by someone else using the famous mark – even if that use has nothing to do with the goods or services that are associated with the famous mark.

Trademark Dilution Arises in Two Forms: Tarnishment and Blurring

Dilution of a famous trademark via tarnishment involves someone using the famous trademark in a way that poses the risk of tarnishing the reputation of the famous trademark. Tarnishment of a trademark often involves use of the famous trademark in a scandalous or disreputable way. Unflattering associations of a famous trademark can be bad for business.

For example, if the trademark FRITTLES is famously used for a line of candy adored by children, it would be trademark dilution by tarnishment if someone were to use the famous mark for a new brand of cigarette.

Dilution of a famous trademark by blurring occurs when the famous mark and the diluting mark are similar and the use of the diluting mark impairs the distinctiveness of the famous mark. In many cases, a famous trademark is associated with a single product or a line of products. When a similar trademark is used on a variety of other products, the similar mark dilutes the famous mark by signifying to consumers that the similar mark is associated with the wider variety of products. To think of this another way, use of the similar mark on a broader range of products blurs the lines between a legitimate product bearing the famous trademark and a product sold under the similar trademark.

By way of example, the Nike swoosh is a famous trademark and it is well known that the Nike swoosh is used for athletic wear and equipment. If a competitor uses a stylized “check mark” symbol that is similar to the Nike swoosh on a range of cooking utensils, the competitor could be sued by Nike for trademark dilution by blurring.

When it comes to trademark dilution, it does not matter if the famous mark owner and the alleged infringer are competitors, nor does it matter if there is a likelihood of confusion between the two marks. Consumers do not have to be misled by the infringing mark in order to dilute a famous trademark.

Contact A Lawyer if You are Concerned About Trademark Dilution

Famous trademarks are immensely valuable business assets and it is important to protect famous trademarks from dilution. If you have questions or concerns about whether your trademark rises to the level of being a “famous” trademark, or dilution through tarnishment or blurring, contact the professionals at The Rapacke Law Group. Contact us today for a free initial consultation.  

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