Trademark Dilution occurs when someone owns a famous Trademark and someone else uses a similar Trademark which causes the famous Trademark to be weakened. In the United States, under federal law, Trademark Dilution can only occur if the Trademark is considered by the court to be famous. Courts look at several factors in determining whether a Trademark is famous including:
- Degree of inherent or acquired distinctiveness
- Duration and extent of use
- Amount of advertising and publicity
- Geographic extent of the market
- Channels of trade
- Degree of recognition in trading areas
- Any use of similar Trademarks by third parties
- Whether the Trademark is registered
Under U.S. state law, a Trademark does not need to be famous for Trademark Dilution to occur. Instead, Trademark Dilution is available if the:
- Trademark has selling power or a distinctive quality
- Two Trademarks are substantially similar
Under Canadian law there is a high threshold of proof required to support a finding of Trademark Dilution. It is defined by the following:
- The defendant's Trademark must be identical to the plaintiff's registered Trademark.
- The plaintiff must show that consumers are likely to associate the defendant's Trademark with the plaintiff's registered Trademark.
WHAT IS TRADEMARK DILUTION BY BLURRING?
Trademark Dilution by Blurring occurs when the power of the Trademark is weakened through its identification with dissimilar goods.
WHAT IS TRADEMARK DILUTION BY TARNISHMENT?
Trademark Dilution by Tarnishment occurs when the Trademark is cast in an unflattering light, typically through its association with inferior or unseemly products or services.
WHAT IS THE DIFFERENCE BETWEEN TRADEMARK DILUTION AND TRADEMARK INFRINGEMENT?
For Trademark Dilution to occur, the law does not require that there be any likelihood of confusion between the Trademarks, and the related goods and services do not have to be competitive.
WHAT IS THE REMEDY FOR TRADEMARK DILUTION?
The remedy for Trademark Dilution is a lawsuit, however the owner of a famous Trademark cannot obtain monetary damages for Trademark Dilution unless it can be proved that the other party willfully intended to dilute the famous Trademark or otherwise trade on the Trademark's famous reputation.
For all issues related to Trademark Dilution in the United States and Canada, contact the C2 Global Law Trademark lawyers. We have a wealth of knowledge and experience with Trademark law on both sides of the border.