You always hear about trademark infringement, but did you know that “trademark dilution” is also an intellectual property offense?
Below is a crash course on trademark dilution law. We’ll start off with a quick review of trademarks in general. Then we’ll delve into the specifics of the main trademark dilution laws. Finally, we’ll examine a few trademark dilution lawsuits to get a better understanding of the law in action.
What Is A Trademark?
A trademark is a type of intellectual property. Specifically, it’s a “word, phrase, logo or other graphic symbol used by a manufacturer or seller to distinguish its products from …others.” Some legal dictionaries consider trademarks “a commercial substitute for one’s signature.” Ultimately, the primary purpose of a trademark is to designate the source of a good or service. Ultimately, the primary purpose of a trademark is to designate the source of a good or service.
The Backbone of U.S. Trademark Law: Lanham Act
In order to enjoy federal intellectual property protections, as outlined in the 1946 Lanham Act, the prospective mark must be:
- Distinctive or a descriptive mark that has “acquired sufficient ‘secondary meaning’ in the marketplace.”
- Affixed to a commercial product.
- Registered with the United States Patent and Trademark Office. However, common law rights are extended to unregistered trademarks.
Trademarks are categorized according to function, popularity and type. Every prospective mark falls into one or more of the categories delineated in the chart below.
|Abandoned Trademark||A trademark that has not been used for three or more years. Sometimes in In these cases, rights protections are lost.||Any trademark that hasn’t been used for 3 years.|
|Arbitrary Trademark||“A trademark containing common words that do not describe or success any characteristics of the product to which the trademark is assigned.” In order for a mark to be considered arbitrary it must be inherently distinctive. An arbitrary trademark doesn’t require secondary meaning proof, and it is entitled to strong legal protections.||“Bicycle” for playing cards.|
|Certified Trademark||“A word, symbol or device used on goods or service to certify the place of origin, material, mode of manufacture, quality, or other characteristic.”||“Made in the USA”|
|Collective Trademark||A mark used by an association, union or group to identify collective product or services or to signify membership.||NCAA|
|Composite Mark||“A trademark or servicemark made up of several words that form a distinctive whole, even if the individual words are ordinary. Advertising slogans are often protectable composite marks.”||“Just Do It.”|
|Counterfeit Trademark||“A spurious mark that is identical to, or substantially indistinguishable from a registered trademark.”||McDougals “arches” from “Coming to America.”|
|Descriptive Trademark||“A trademark is a meaningful word in common usage or that merely describes or suggests a product. This type of trademark is entitled to protection only if it has acquired distinctiveness over time.”||Target|
|Disparaging Trademark||“A trademark that tends to bring a person or class of people into contempt or disrepute.” Section 2(a) of the Lanham Act prohibits the registration of disparaging marks.||Case involving a depiction of “Buddha” for a beach-ware line.|
|Famous Trademark||“A trademark that not only is distinctive but also has been used heavily advertised or widely accepted in the channel of trade over a long time, and is so well known that consumers immediately associate with one specific product.”||Coca Cola|
|Fanciful Trademark||“A trademark consisting of a made-up of coined word; a distinctive trademark or trade name having no independent meaning. This type of mark is considered inherently distinctive and thus protected at common law and is eligible for trademark registration from the time of its first use.”||Kiji|
|Geographically Descriptive Trademark||“A trademark that uses a geographic name to indicate where the goods are grown or manufactured.” Can only be registered only after it has acquired distinctiveness over time.||Kentucky Fried Chicken|
|Prohibited and Reserved Trademark||“A mark that is not protected under the Lanham Act because it either falls into an expressly excluded category or else is similar to a mark granted by statute to another.”||Any trademark that has been granted protection rights.|
|Suggestive Trademark||“A trademark that suggests rather than describes the particular characteristics of a product, thus requiring a consumer to use imagination to draw a conclusion about the nature of the product.” Entitled to protection without proof of secondary meaning.||Q-Tips; Greyhound for bus line.|
What Is Trademark Dilution?
Trademark cases often involve infringement, in that the plaintiff feels the defendant is using and profiting from unauthorized use of a mark. For example, if ACME Computers* uses EMCA Computers’ logo, EMCA would probably sue ACME for Trademark infringement.
Using the above example, let’s say ACME ripped off Apple Computer’s logo instead of EMCA’s logo. In this case, Apple could, technically, sue for both trademark infringement and trademark dilution – a tort reserved for “famous trademarks,” which confers extended IP rights.
Main Trademark Dilution Laws In The United States
The Federal Trademark Dilution Act of 1995 and the Trademark Dilution Revision Act of 2006 are the two main trademark dilution laws in the United States. Both amend the Lanham Act of 1946.
Federal Trademark Dilution Act of 1995
The Federal Trademark Dilution Act of 1995 went into effect in January of 1996. Primarily, the bill defines dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of, (a) competition between the owner of the famous mark and other parties, or (b) likelihood of confusion, mistake or deception.”
Under the law, dilution has to do with “blurring” and “tarnishing.” Blurring is defined as “the chipping away at the distinctiveness of a mark via unauthorized use of a mark on dissimilar products.” Tarnishment is defined as “unauthorized use of a mark that links it to poor quality or unsavory products.”
The FTDA also pinpoints factors to consider when determining dilution. They are:
- Duration and extent of use;
- Duration and extent of advertising;
- Geographic area in which mark has been used;
- Degree of Distinctiveness;
- Degree of Recognition;
- Method of Distribution;
- Use by 3rd Parties;
- Whether federally registered.
The FTDA provides for Injunctive relief as a remedy for dilution. In cases where the plaintiff can prove the defendant acted in bad faith, monetary awards based on profits, damages and attorneys’ fees may be ordered. Destruction of goods that bare the dilutive mark can also be court ordered.
To ensure the bill didn’t impede free speech and other civil rights, the Federal Trademark Dilution Act exempts action for instances of:
- Fair use in the context of comparative commercial advertising or promotion;
- Parody, satire and editorial commentary;
- All forms of reporting and news commentary.
The FTDA was the trademark dilution law of the land for about a decade, until the ruling in Moseley v. V Secret Catalog, Inc. prompted politicians to pass the Trademark Dilution Revision Act of 2006 — a bill which mostly supplanted the FTDA.
Trademark Dilution Revision Act of 2006
On October 6, 2006, President George W. Bush signed H.R. 683, a.k.a. the Trademark Dilution Revision Act, into law. The bill amended the Lanham Act and significantly changed the FTDA. Officials from both sides of the aisle championed the bill after the unpopular ruling in Moseley v. V Secret Catalogue, Inc. The issue that caused the most consternation was whether or not a trademark dilution plaintiff has to show “actual trademark dilution, rather than the likelihood of dilution.”
In Moseley, the court declared that a claimant in a dilution case must show actual material harm. This didn’t sit well with people who believed that intellectual property rights should be strong enough to prevent encroachment, even if the encroacher isn’t profitable.
The Trademark Dilution Revision Act effectively reverses Moseley by stipulating only the likelihood of confusion need be present in order to pursue a trademark dilution claim. However, not all trademarks are subject to the act. “Products in niche markets,” for example, cannot pursue action under the TDRA. “Products in niche markets” cannot pursue action under the Trademark Dilution Revision Act.
Trademark Dilution: Tarnishment and Blurring
The Trademark Dilution Revision Act also delineates definitions for tarnishing and blurring. The former is defined as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Blurring is defined as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”
The Trademark Dilution Revision Act prescribes a dilution test – or factors judges should consider when deciding on a dilution action. They include:
- Similarities between two marks;
- Degree of mark’s distinctiveness;
- Degree of substantial exclusivity of mark;
- Extent of the famous mark’s notoriety;
- The Defendant’s intent;
- “Actual association” between the two marks.
To ensure citizen rights, the TDRA exempts fair use and all forms of new reporting and commentary from being actionable as dilution by blurring or tarnishment.
Famous Trademark Dilution Lawsuits
The best way to understand a legal concept or law is to look at a few cases involving the statute of interest. Below we’ll examine four important trademark dilution lawsuits.
Moseley v. V Secret Catalogue, Inc.
Moseley v. V Secret Catalogue is the 2003 U.S. Supreme Court case that triggered the Trademark Dilution Revision Act. The plaintiffs, the Moseleys, won because a bench ruled that “actual proof of dilution” is required to win a trademark dilution claim. The ruling was so unpopular that officials quickly drafted and passed the Trademark Dilution Revision Act, which stipulates that rights holders can bring dilution actions against entities that attempt to tarnish or blur a protected famous trademark.
Details of the Case
Victor and Cathy Moseley opened a store called “Victor’s Secret.” Perhaps not a teetotaler hangout, Victor’s Closet sold lingerie and other adult novelty items. To advertise their grand opening, the Moseleys sent out mailers promoting Victor’s Secret. Unfortunately for them, an arguably prim person — who found Victor’s mailer obscene — got in touch with Victoria’s Secret and tattled on Victor. The whistle-blower called attention to the commonality of the company names and the “unwholesome, tawdry merchandise” sold at Victor’s. After receiving the tip, Victoria’s Secret contacted the Moseleys, who promptly changed the name to “Victor’s Little Secret.” Still unsatisfied, Victoria’s Secret decided to file a lawsuit citing, among other things, the Federal Trademark Dilution Act of 1995.
The case made it all the way to the Supreme Court of the United States, where justices ruled in favor of the defendant. Approximately 3 years after the ruling, the House passed the Trademark Dilution Revision Act to reverse the Moseley decision.
Mattel v. MCA Records
If you’re old enough to remember the Kelly Kapowski, Slater, Zach love triangle, then you’re probably old to remember the 1997 jam “Barbie Girl” by Danish-Norwegian band, Aqua. The annoyingly catchy song was on a near perpetual loop back in the day, but Mattel was doing everything in their power to get it pulled from the airways.
The toy company formally complained that the song violated the Barbie Trademark by turning the icon into a sex object. They also argued that the album cover impinged on “Barbie Pink” – a color Mattel trademarked. Furious about the perceived brand dilution, Mattel referred to MCA as “bank robbers.”
MCA scoffed at the accusations and insisted Mattel was “injecting their own meanings to” the lyrics. Incredulous, they also counter sued Mattel for defamation – MCA argued, “We’re no bank robbers!”
After several rounds in court, in 2002 Judge Alex Kozinski ruled that both “parties [were] advised to chill,” and summarily dismissed both “Speech-Zilla’s” (Kozinski’s name for MCA) and “Trademark Kong’s” (Kozinski’s name for Mattel) suits. The hip-talking judge ultimately declared that Aqua’s song was parody protected by the First Amendment; he also said MCA’s defamation claim had very little merit – after all, MCA was hardly damaged financially by Mattel’s quip. “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.” ~Judge Alex Kozinski
Legal precedence confirmed by Mattel v. MCA: Parody is protected. Bluntly speaking, it’s difficult to win a lawsuit against someone just because they poked fun at you.
MasterCard International Inc. V. Nader 2000 Primary Committee, Inc.
MasterCard’s now ubiquitous “priceless” marketing campaign has been extensively parodied over the years. But back in 2000, the credit card company tried to sue Ralph Nader for using the “there are some things money can’t buy, for everything else, there’s MasterCard” formula in a 2000 campaign commercial. Nader’s spot, however, concentrated on federal campaign financing.
After hearing arguments, a New York District Court judge handed down a summary judgment in favor of Nader. Ultimately, the bench reasoned that there was “no likelihood” of confusion between a political ad and a credit card commercial; as such, the plaintiff’s lost on account of insufficient evidence of actual confusion. Dilution claims didn’t work either because the FTDA specifically exempts non-commercial uses from action. MasterCard argued Nader’s advertisement was commercial since people contributed to his campaign after viewing. The court, however, disagreed and said he was only expressing an opinion on presidential campaign financing.
Mattel Inc. v. Walking Mountain Products
Another trademark dilution case involving Barbie’s maker, Mattel, Inc. v. Walking Mountain Products affirmed that critique is an acceptable form of fair use. Photographer, Thomas Forsythe made a series of photos called “Food Chain Barbie.” In his pictures, Barbie dolls donned their “birthday suits” and were shown as being in danger of vintage kitchen appliances. On his website, Forsythe marketed the project on his website, which featured a critical analysis of the ideas reflected in his art, but the actual images could not be purchased directly online.
Unimpressed with the way Forsythe used and characterized Barbie, Mattel filed for trade dress and copyright infringement, plus trademark dilution. At the beginning of the case, Mattel’s request for a preliminary injunction against Forsythe’s work was rejected, but a summary judgment was granted – in favor of the defendant.
The photographer won because the First Amendment provides for free speech – and critique of a popular toy in an artistic manner certainly qualifies as free speech. Moreover, the ruling judge reasoned that the lack of initial interest confusion meant no laws were broken and since Forsythe’s website wasn’t an e-commerce on, he was not committing trademark dilution – which requires a commercial element. The judge explained that Barbie was a product that “Transcend their identifying purpose” and “enter public discourse and become an integral part of our vocabulary.”
Even though Forsythe won, the plaintiff was not ordered to pay Forsythe’s lawyer fees because the judge deemed the case “unexceptional.”
Trademark Dilution Lawyer
Need a lawyer who understands trademark dilution? Contact RM Warner law today. We maintain a dedicated intellectual property practice, which focuses on Internet and digital trademark infringement and dilution. You can give us a call at; send an email to, or use our secure contact form. To schedule a consultation immediately, go here.*All company names in hypothetical examples are fictitious.