Learn all about trademark dilution to avoid stepping on the toes of a giant.
By Desirée Townsend
Trademark dilution is the unauthorized use of a famous trademark in commerce that diminishes the public's perception of the brand. Under the Trademark Dilution Revision Act of 2006 an owner of a famous trademark that is distinctive can file an injunction against another person who uses their famous trade name in commerce in a manner that is likely to cause dilution by blurring or tarnishment.
This law went a step further than the fundamentals of trademark infringement, which relies on the presence of consumer confusion and actual economic injury within the marketplace. Read more about this law. The law established the ability for the owner of a famous trademark to stop the unauthorized use of their mark with any goods or services. Regardless of whether or not the owner of the famous trademark sells in those categories.
Here are a couple illustrative examples of why famous brands want to prevent trademark dilution:
CRYPTO NO NO (based on true events): Someone decides to launch a new cryptocurrency called STARBUCKS. They launch it into the market and immediately consumers assume it is new associated with the coffee company. Consumers flood into the currency assuming that the currency is safe as it's backed by the famous company.
CHOCOLATE KISS (based on true events): A cannabis company launches a line of chocolates called GODIVA. News spreads of the new cannabis chocolates and some consumers stop buying from the company completely, while others buy the cannabis brand falsely believing it is coming from the same GODIVA CHOCOLATES company.
Outside of taking civil action in court, another way famous brands enforce their rights is by filing cases through the Trademark Trial and Appeal Board. eBay Inc. is infamous for cancelling or opposing ANY trademarks that are filed at the USPTO containing the word "BAY."
Moral of the story, when a brand has a famous and distinctive trademark, tread carefully if you're thinking of using something similar for your goods or services.
As always, consult with an attorney before taking action on any of the items contained within this article.
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