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Trademark Dilution

There are three main types of intellectual properties. There are patents, which protect “new, useful and non-obvious” inventions. There are copyrights, which generally protect works of expression or communication. Lastly, there are trademarks, which are used to designate the source of a good or service.

Trademarks have the effect of protecting consumers by designating which products come from which company. In other words, the trademark acts as an identifier. When you see gold arches, you know it’s McDonald’s. When you see Coca-Cola’s distinctive script, you know where the product is from. Aside from consumer protection, it also protects the owner of the mark by insuring that the goodwill or business renown it has gained from its product is not taken advantage of by another company with a distinctly similar mark (intentionally or unintentionally).

Trademark Owners, then, have two primary avenues for suing to protect their mark: infringement or dilution. We’ll just talk trademark dilution for now.

Trademark dilution is the weakening of a capacity of a mark to identify and distinguish goods/services. This inquiry does not rest on “likelihood of confusion,” as with infringement. Depending upon several factors, the most important of which is whether a trademark is federally registered, you would pursue trademark dilution at the federal or state levels. At the state level, you’d pursue primarily common law tort or property claims. You generally have to show similarity between the marks and/or a similarity of the underlying products. Attention is also given to whether there exists a good faith use of the junior trademark. The same analysis, too, generally applies to trademark dilution claims pursued at the federal level. The primary difference between the two is what remedies are available. For instance, with a “famous” federally registered trademark, the mark’s owner can get an injunction if he/she can prove that a new mark is causing his/her mark to lose its value because of distinct similarities.

Remember that dilution is a gradual weakening or “blurring” of a trademark. Infringement (which will be discussed at another time) centers on the “likelihood of confusion” of the consumer; it’s a much more direct challenge.

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