Laws in the United States distinguish between dilution by blurring and dilution by tarnishment.
One of the requirements for dilution is that the senior user was a famous mark prior to the junior user’s use.
Dilution by Blurring involves “similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”
For example, if you see this mark, what do you think of?
Probably Coca-Cola. Coca-Cola opposed the registration of this mark, arguing it would dilute its famous script mark by blurring, even though consumers may not be confused as to the source.
Some commentators have suggested that trademark blurring is not real and it’s unlikely that big brands have actually been damaged by junior users.
Dilution by Tarnishment involves “the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”
This could relate to poor quality or the sale of goods or services that the owner of the mark may be morally offended to have their brand be associated with.
For example, Jack Daniels raised dilution claims against the Bad Spaniels toy made by VIP Products. Even though consumers may not be confused as to the source of the dog toy, the brand itself could be tarnished by the poop jokes.
At one time, the New York New York Hotel & Casino called its players club the NEW YORK $LOT EXCHANGE. The New York Stock Exchange was not amused and it sued.
You may also remember the toy store TOYS R US. When ADULTS R US was used to sell adult sexual products, this tarnished the famous “R US” family of trademarks which are used to sell toys for children.
In another case involving a dog toy, the 4th Circuit held the Chewy Vuitton dog toys did not dilute the famous brand and was instead a successful parody of Louis Vuitton.
McDonald’s is an example of a famous mark that seems to oppose everything with an MC or MAC. For example, they’ve recently opposed MACGOAL for Bird baths and bird cages and MCFILTER for vacuum cleaner bags.
How do you feel about dilution? Should the famous brands be protected in this manner? Leave your thoughts in the comments!
Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.
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