Fact Sheet: Protecting a Trademark

Trademark Dilution (Intended for a Non-Legal Audience)

Updated: November 9, 2020

1. What is trademark dilution?

Trademark dilution refers to the unauthorized use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark. The question of whether a famous trademark is diluted is a separate question from whether the mark is infringed, i.e., whether the unauthorized use is likely to cause consumer confusion (though trademark owners often allege both dilution and infringement together when enforcing famous trademark rights). Dilution is sometimes divided into multiple types, the most common being blurring. Other types include tarnishment and, in the EU, free-riding.

Unlike trademark infringement, trademark dilution does not necessarily involve the unauthorized use of a mark in connection with goods or services that are confusingly similar to those offered in connection with the famous mark. For example, the unauthorized use of FERRARI as a brand of harmonicas may not be trademark infringement, but it may be trademark dilution, even though harmonicas and luxury automobiles are so unrelated that consumers are unlikely to believe Ferrari harmonicas come from the famous automaker. Trademark dilution protects marks that are so well-known, highly reputable, or famous that jurisdictions have decided they deserve protection whether or not their unauthorized use is likely to cause consumer confusion.

To be considered well-known, highly reputable, or famous, a trademark must be recognizable to the general public, i.e., it must be a “household name.” For example, the following would likely be considered famous marks in many countries around the world: GOOGLE, COCA-COLA, SONY, NIKE.

2. Which jurisdictions recognize the concept of dilution?

Most countries recognize some form of trademark dilution, although the concept and associated requirements and penalties vary by jurisdiction.  Jurisdictions that expressly recognize trademark dilution include the United States, the European Union, South Africa, India, and Japan, as well as several Central and South American countries. Others, such as Canada and Australia, have no explicit dilution law but provide similar protection under other trademark laws. Canada prohibits unauthorized use that deprecates the goodwill of a mark, and Australia defines trademark infringement to include the use of well-known trademarks that is likely to cause consumers to infer a connection between the owner of the mark and unrelated goods or services.

3. What are the elements of trademark dilution?

Fame—A trademark must be famous to be diluted. In the United States, a mark must be widely recognized by the general consuming public to be considered famous. In the European Union, a mark must be well-known, with courts determining just how well-known. In most jurisdictions, courts and trademark offices decide fame on a case-by-case basis. In some jurisdictions, protection from dilution varies depending on how famous a mark is. Fame is not static, so mark owners may have to prove fame as of the date of the dilution claim or as of when the alleged diluter started using the mark. In addition, a favorable finding of fame may weaken as time passes, such that it will no longer be accepted as evidence of fame in new disputes.

Likelihood that unauthorized third-party use will weaken or tarnish the distinctiveness of the famous mark—The unauthorized use must be likely to weaken the ability of the famous mark to identify and distinguish the famous goods or services or be likely to tarnish the famous mark. The owner of a famous mark need only show that there is a likelihood of dilution—not actual dilution.

4. What are the forms of dilution?

Blurring—Blurring is the most common type of dilution. It occurs when unauthorized use of a famous mark weakens or impairs the distinctiveness of the mark. A hypothetical example may be use of GOOGLE as a mark on toothpaste, such that consumers who previously associated the GOOGLE mark solely with the tech giant’s products begin to also associate the mark with toothpaste.

Tarnishment—Tarnishment occurs when unauthorized use of a famous mark is offensive or unflattering. This may include use of a famous mark in connection with subject matter that is critical of or offensive to the mark owner’s beliefs or reputation or that directly criticizes or attacks the mark owner or its products or services. A hypothetical example may be use of ADIDAS as a mark on a line of unhealthy food—a product in conflict with the ADIDAS brand of fitness related products. But tarnishment may be protected free speech and considered “fair use” of a famous trademark, e.g., use of a mark for the purpose of parodying a famous mark owner or its products or services.

Free-riding—The EU recognizes a type of dilution called free-riding: unauthorized use of a well-known mark on unrelated goods or services for the purpose of, or resulting in, a positive association with the well-known mark owner’s legitimate goods or services. An example of free-riding may be unauthorized use of GUCCI as a mark for a high-end restaurant.

Additional Resources

Famous and Well-Known Marks
Fact Sheet

Famous and Well-Known Marks: An International Analysis
Uniquely explores the rationale for, and the history and implementation of, the protection of these exceptional trademarks.

U.S. State Trademark and Unfair Competition Law
A single source for facts, analysis, and commentary on U.S. state trademark and unfair competition law. Provides comprehensive information on trademark filing, prosecution, registration, maintenance, and enforcement on a state-by-state basis.

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