Sections
The Trademark Reporter®
Global Trademark Resources


May-June, 2010 Vol. 100 No. 3 Back to TMR Main Page
 
Trademark Infringement and Dilution Are Different--It's Simple
 
 
Trademark infringement and trademark dilution are separate
causes of action embodied in the U.S. Trademark (Lanham) Act1
that are intended to redress distinct wrongs. Since the enactment of
the first federal dilution statute, however, the vast majority of
complaints that plead a dilution cause of action have also brought
infringement causes of action, and the disposition of the cases have
typically been in lockstep, with the plaintiff either winning or losing
both claims. There should be no such overlap between infringement
and dilution, and both Congress’ initial amendment to the Lanham
Act adding a dilution cause of action and its rewrite of the dilution
statute eleven years later support this construction. Indeed, where
infringement analysis ends, dilution begins. Our present
predicament, where dilution is almost redundant of infringement,
stems from the appropriate recognition that dilution can occur even
though goods or services are related. Unfortunately, this fact forces
courts to address the relevance to a dilution claim of evidence
supporting a likelihood of confusion necessary to prove an
infringement claim, including evidence of actual confusion. Many
courts simply conclude that proof of a likelihood of confusion proves
dilution but offer little to support their conclusion. Recognizing this
trend, a number of commentators have written hoping to rationalize
these results within trademark protection. This article goes in the
opposite direction, arguing that proof of infringement precludes a
finding of dilution and explains why this must be the case.