This article has been written by Nikita Desai. This article explains the concept of trademark dilution and its development from numerous case laws in the US, along with the enactment of FTDA and TDRA. It also explains the categories of trademark dilution and how fame and the likelihood of confusion are crucial factors for trademark protection. In this article, defenses of dilution claims, trademark genericide, state anti-dilution laws, and guidelines for protecting trademarks internationally from dilution are discussed effectively. 

It has been published by Rachit Garg.

Introduction

How often have you stopped and wondered about a logo on the product that you buy from the local market or a brand? Is it genuine? Is it fake? How, as a consumer, do you differentiate between real and fake products? Well, for that, the trademarks come to the rescue.

Do you know that a trademark not only gives proof of authenticity to a product or service but also enables businesses and organizations to mark a distinct character of their own to stay relevant compared to their competitors in the market?

To identify and distinguish goods or products from other competitors in commerce, the company uses what we call ‘trademarks’. These trademarks can be a word, name, symbol, or design.

To identify the services provided by a company, they use ‘service marks.’ These are similar to trademarks but help consumers identify the services from various other service providers in the marketplace.

Trademarks are tools and forms of intellectual property protected even under US law because with fame comes crime, and the end victims are consumers and trademark owners.

However, there are circumstances where a trademark can be weakened or diluted, which can lead to potential legal issues. In this article, we’ll explore the concept of trademark dilution in the US and how you can protect your trademark from potential dilution.

Trade-mark dilution in the US

Let us understand the concept of dilution in the US through landmark judgments that applied the provisions of the Trademark Dilution Revision Act of 2006, (TDRA). These are applicable to both registered and unregistered trademarks.

Trademark Dilution, in simpler terms, refers to the weakening or diminished strength of a ‘famous mark.’ Now you may wonder how. Well, whenever any other local business or organization uses the famous mark in such a way (similar or identical mark) that it creates confusion and diminishes the reputation of the famous mark, leading to a loss of consumer trust, then that is what we call trademark dilution in law. 

Trademark dilution can happen in a variety of ways, such as through blurring, tarnishment, or an overall weakening of the mark’s association with the source trademark holder. This can lead to potential legal issues, which are very common in the US. Therefore, it is important to educate oneself regarding the know-how to protect oneself from such fraud as a consumer and safeguard one’s mark from dilution. 

For example: consider a scenario where an electrical appliance company starts putting Apple’s white logos on their products, confusing consumers’ minds as to whether Apple has started selling new products entirely. 

Key aspects regarding trademark dilution

Throughout the history of trademark dilution, the key five aspects were given major importance.

1. The retrospective application of the laws for development. This means that the rules about trademark dilution are also applied to the older cases and not just the new ones. This is done to protect the old brands from losing their uniqueness.
2. Determining whether the mark is famous or not. This means that if a lot of the general public recognizes the brand and its products, then the mark is considered well-known and is protected from dilution under U.S. laws; otherwise not.
3. Factors for dilution by blurring or tarnishment. This means that to determine whether a brand is diluted or not, the court looks at factors of similarity and differences between the two marks in dispute and concludes how likely it can confuse consumers.
4. To understand ‘commercial use’ in commerce. This means that for dilution to occur for a brand, it must be related to the selling of services or goods. Casually mentioning the brand name does not amount to dilution; its commercial use is mandatory.
5. Protection for defending against a dilution claim. This means that a brand can protect its name or logo by taking legal action to prove that the use of a similar mark by a third party is causing harm to the brand’s uniqueness and reputation. 

Concept of trademark dilution

To protect the consumer from deceit, enable fair competition, and secure the business reputation of the source trademark from that of the infringer trademark, the Lanham Act of 1946 was introduced.

From the Lanham Act to FTDA, the concept of dilution through 15 USC 1125- Sec. 43 (c)  was inserted, and with the enactment of TDRA, the concept of dilution was considered as a form of unfair competition in trade commerce.

According to 15 USC 1127- Sec. 45, dilution can be referred to as a kind of damage/ harm, or injury to the trademark. This provision protects the trademark owner’s rights in their source marks. 

Uniqueness

The source mark’s distinctiveness is lost when the unauthorized use of such marks in trade commerce is being done on unconnected goods and services by another individual or company (infringer) (third-party). This refers to dilution because the ‘one-of-kind’ identity becomes non-exclusive, making it difficult to recognize ‘well-known’ (famous) brands in the global consumer market, in turn leading to trademark infringement.

At present, there are three categories of trademark dilution (harm/ damage).

• Dilution by cybersquatting
• Dilution by blurring
• Dilution by tarnishment

For example, a hair products company is diluting the logo of Apple company by putting its logo on hair products (creating confusion among consumers and making Apple’s logo lose its uniqueness).

Wall v. Rolls-Royce (1925)

Significance of the case

• In Wall v. Rolls-Royce of America (1925), the interpretation of ‘trademark infringement’ was expanded by the U.S. Court of Appeals. For this, the Court considered unrelated products as competing goods based on certain similarities present between the products.

• The U.S. Court of Appeals, Third Circuit decision highlighted the ‘element of fame’ as a basis for dilution.
• The mark of Rolls-Royce was used on the radio tubes by the accused, and since both companies’ goods were competing (electronic materials), it formed the basis for the dilution case.

Judgment of the Court

• The concept of dilution was recognized for the first time by the U.S. Courts of Appeals.
• When a source trademark suffers harm or loss in its product sales, then the Court has to provide trademark protection. This trademark protection is provided for the unique and distinct character of the mark and to prevent the reduction of source trademark value in the marketplace, if used by a third party. 
• The scope for electronic products (radio tubes and automobiles) was expanded and justified by the infringement rule. This was based on the fact that electricity is a necessary part of the functioning of electronic products and forms the basis for both the competing products in dispute.
• The Court’s main focus was on preventing deception rather than searching for evidence of consumer confusion and damage to the sales of the products.

Development of trademark dilution in the USA

In the year 1900 

Direct competition was the primary reason for initiating legal action against trademark infringement because recognition of ‘deception’ (what we know today) was not widely popular during this era in trade commerce.

In the year 1920 

The concept of deception was associated with confusion for the first time regarding the source or originality of the product. This development occurred due to a major gap in the lack of protection of the trademarks from customer confusion and because of the revolution and industrialization in trade commerce.

In the year 1932 

Trademark dilution laws were established by the United States. However, many opposed this due to the unwillingness of the U.S. to include property rights for trademark dilution, and instead, the state of the U.S. came up with its laws for trademark protection.

In the year 1947 

This year marked the revolution and starting point for the States in creating their State laws for trademark protection (state anti-dilution laws). 

Starbucks v. Wolfe Borough (2009)

Significance of the case

• In Starbucks Corporation v. Wolfe Coffee Incorporation (2009), the US District Court applied the Polaroid balancing test to determine the likelihood of confusion between the products and services offered. 
• According to the Court, eight elements are essentials and when broken down into questions, it concludes;

1. How well-known and distinct is the trademark?
2. Is the trademark similar in appearance or sound?
3. How closely are the products related, and how are they competitive?
4. Is there any evidence related to the owner selling similar products?
5. Do consumers generally become deceptive about the trademark?
6. What are the motives for intentionally using the trademark?
7. What are the comparison factors for the quality of the products?
8. How knowledgeable are the consumers in the market about the challenged trademark?

Facts of the case

• The Black Bear Company is a home-grown coffee seller and manufactures related coffee products in New England.
• The Starbucks Company is a very reputed and famous coffee-selling brand worldwide.
• An alternative dark roasted bean of coffee called ‘Char-bucks’  was created by the Black Bear Company. These later came to be known as Mister Char-bucks.
• Starbucks alleged that because of such usage of the names, there existed confusion in the marketplace about the products for consumers, and based on that fact, Starbucks initiated a suit in the U.S. Civil Court.

The Issue involved in the case

• The issue was whether there was a likelihood of confusion between the products/goods of Starbucks and the Black Bear companies or not.

Judgment of the Court

• The U.S. District Court for the Southern District of New York derived the judgment in favor of the Black Bear Company on the following basis:

• The Court ruled by taking the references to the eight factors of the polarized (dilution) test (as discussed earlier).
• The Court was of the view that there exists no likelihood of confusion between the products because the symbolic representation between the two products was slightly similar, but the major use of the black bear mark on the ‘Charbucks’ products and other related products made a huge difference. 
• Therefore, the case was dismissed because such products do not amount to creating confusion (mental aspects) in the consumers.

“KODAK” case impact (1992)

Significance of the case

• In Eastman Kodak Co. v. Image Technical Services Inc. (1992), the Eastman Company of Kodak Camera Manufacturers of England sued Kodak Cycle Company for using the trademark “KODAK” on their bicycle. 

• The U.S. Court of Appeals for the Ninth Circuit gave importance to the unique and distinct characteristics of the mark KODAK for trademark protection rather than factors such as confusion, deception, or direct competition related to the marks in dispute.
• This judgment was marked as precedent and followed by the various judges of the U.S. Courts as a reference.
• A prima facie evidence of this can be seen in the Vogue Co. case.

Vogue Co. v. Thompson (1924)

Significance of the case

• In Vogue Co. v. Thompson-Hudson Co. (1924), Thompson-Hudson used the logo  V on their ‘VOGUE HATS’ which was considered a violation of the trademark owned by the Vogue Co. as they used the letter V on their ‘V-GIRLS’ posters along with the picture of a woman.
• This implied that the judgment of the previous case was used (trademark protection rule).

Judgment of the Court

• The Court of Appeals for the Sixth Circuit took a different stance than that of the District Court in this same matter.
• According to the Court, letter V would create confusion and mislead consumers related to the V-GIRL, which was used by the Vouge Co.
• The Court did not apply the trademark protection rule based on the fact that there was very little similarity between the marks of the goods in question.
• The Court granted the relief based on Trademark Infringement laws; however, this implies that the judgment of the previous case was not used in this case. 
• The laws regarding trademark dilution are covered and governed both by State and Federal laws in the US.

The Federal Trademark Dilution Act, 1995 (FTDA)

Precedence to lower authorities 

The FTDA is also referred to as the Dilution Act. 

Did you know? The FTDA preempts state laws, meaning whenever disputes arise between the two laws (state and federal), the FTDA prevails over the state laws.

The objective of the FTDA and its impact

The chief goal of FTDA was to protect only the famous or well-known mark despite the presence of elements of competition or potential confusion in the marketplace regarding the goods and services. In FTDA, there was an absence of a definition of such marks; what mark should be considered famous, and should such famous marks be put in a bubble for protection or not?

Throughout American history, this ambiguity led to inconsistencies in the Court rulings and decisions of the United States in various cases. 

Even though there was no proper definition for the word famous under the FTDA, it established the detrimental factors (eight factors, as earlier discussed) for considering the mark under the famous category for it to be recognized for protection under U.S. law.

It prevents both actual dilution and the likelihood of dilution.

Question of law regarding anti-dilution state law

There were various debates and arguments regarding whether the mark should be included for protection under the anti-dilution state law. This includes the following factors:

• Whether the pre-existing (naturally distinct) mark should only be protected, or 
• Whether those distinct marks should also get the protection that ‘acquired fame’ over time from their use in commerce
• Whether trade dress and packaging protection should be covered under this or not

The element of quality of the mark is of priority 

Another interesting thing the FTDA provides to the trademark owner in cases of dilution is an exemption from the burden of proof for the likelihood of confusion.

What happens in regular infringement cases is different from what happens in dilution infringement cases of the mark in dispute.  

• In the former, the existence of confusion between the marks is of importance. 
• In the latter, however, only the existence of loss of uniqueness (loss of quality of product) is essential.  
• The aggrieved party, here,  can sue for both the claims i.e.,  trademark infringement and trademark dilution, even if the goods and services are not connected.

For example, A is a brand manufacturing and selling cars, say ‘Tesla’, and B is a local brand selling home appliances but with a slightly similar logo to that of Tesla.  So, what happens in these cases is that even when the goods and services are not connected, the owner of the Tesla company can sue the company of the brand selling home appliances for the likelihood of confusion as well as for the loss of quality of the same.

New York Stock Exchange  v. NYNYH (2002)

Significance of the case

• In New York Stock Exchange Inc. v. New York, New York Hotel LLC (2002), only distinct natural marks were protected from dilution claims under the FTDA as observed by the U.S. Court of Second Circuit.
• The Court stated that the requisite quality of fame was not met by the NYSE. The NYSE even presented evidence of ‘acquired distinctiveness from its use in trade and commerce,’ despite which the Court ruled against the NYSE.

TCPIP v. Haar Communication

Significance of the case

• In TCPIP Holdings Co. v. Haar Communication  Inc. (2001), the U.S. Court of Second Circuit established the importance of the question of law (whether the mark was naturally distinct or acquired distinctiveness through its use). 
• The Court was of the view that, upon satisfaction of these conditions, protection from dilution under the U.S. trademark laws can be granted to the mark in dispute. 

Trademark Dilution Revision Act, 2006 (TDRA)

Significance of the TDRA

• The TDRA nationwide made notable changes to the scope and subject matter of the FTDA 1995.
• It also expanded the rights of famous mark holders, while also enabling them to claim remedies for dilution of their mark in the marketplace.
• This change arrived after the case of Victoria’s Secret (explained in detail under the heading ‘cases of dilution by tarnishment and blurring).
• The standard for famous (fame) was established by the TDRA.
• The eight factors for determining fame were introduced (as discussed earlier in the case of Starbucks). 
• The TDRA adopted and recognized the factor called ‘acquired distinct mark’ for protection from dilution under U.S. law rather than just considering the natural distinct mark for protection.
• The TDRA recognized and accepted, even the trade dress and mark for protection from dilution. 
• A famous mark refers to a mark that must be recognized by the general public worldwide or nationwide and must be famous before the infringing party starts using the same.
• According to the TDRA, only acquired distinct marks are covered for protection, and that too only if they are famous worldwide.

Examples of iconic brands and non-iconic brands

• The brands of the US include- Apple, Google, Microsoft, Coca-Cola, McDonald’s, and IBM. All these brands would be covered under the TDRA for protection from trademark dilution as they meet the requirements of fame. 
• The non-famous brands in the US include-  Lowe’s, Wells Fargo, Keenex, Sears, and Gatorade. These are some of the most famous brands in the US but have not acquired fame worldwide, thus making it difficult to protect them from trademark dilution under the TDRA.

The fame of the trademark

Fame or famous

Have you ever imagined what makes a mark popular? The mark is popular because of us, the consumers,  the quality of the product or services (recognition in the marketplace), and the owner’s constant time, energy, and capital investment (strength). 

According to 15 USC 1125 Sec. 43 (c)(2), in simpler terms, the trademark becomes famous:

• When the trademark is easily recognized and gains global popularity, (becomes a brand).

This brand has become popular and is known as a famous or well-known mark. Examples of brands include Apple, Nike, Adidas, Gucci,  etc.

For the protection of a trademark from dilution, the product or service needs to be associated with the famous mark. Even the same is applicable under US laws. The stronger the mark, the higher the chances for protection.

Factors that make the mark famous or distinct

For determining the strength and value of a famous and distinct trademark, the following factors are considered:

• Advertising and publicity.
• Sales volume.
• Recognition.
• Registration.

Apart from these eight factors (as discussed earlier in the case of Starbucks), the U.S. Court would use these to determine whether the mark is popular,  famous, or distinct or not.

Fame in the channels of trade

According to the author, Edward E., there are certain important questions to look out for when we consider the recognition of the trademark to be famous in the marketplace. This includes:

• The market in which the challenged mark (diluted mark) and the famous mark travels.
• The consideration for protection should only be considered when it is established that 50% of the consumers in the marketplace recognize or know about the diluted mark’s (challenged mark’s) existence.

What is the time frame for the mark to become famous

According to the author, as analyzed from:

• 15 years is sufficient time for a mark to be recognized as famous in the marketplace by consumers.
• The element of fame requisites can be measured by comparing other marks in the marketplace to the source mark.
• The U.S. Courts refer to the examples provided by Congress for assessing dilution of the mark, such as the case of Kodak (supra) (iconic brands).

How one can recognize the distinctiveness of the mark

The distinct nature of the mark can be determined from:

• How extensively a third party uses the mark in the marketplace.
• How the use of the mark by a third party diminishes the distinctiveness of the source mark in the marketplace.
• The area used for advertising and publicity also makes it easier to know the distinct character of the source mark.
• The mark should be famous nationwide for protection.

The 1997 Ringling Bros. case (Actual harm test)

Significance of the case

• In Ringling Bros. Barnum & Bailey Combined Shows. Inc. v. Utah Division of Travel Development UTDT (1997), the U.S. Court of Appeals, Fourth Circuit, established two aspects for recognizing the mark as famous in the marketplace.
• One includes the mental association of the consumers with the products and services offered by the diluted mark and the source trademark.
• The second one includes the cause of actual harm that occurred to the source mark. This helps in distinguishing it from the challenged mark.
• The Ringling Bros. failed to prove the actual harm parameters in the survey conducted by them.
• The U.S. District Court decision was upheld by the U.S. Court of Appeals for the Fourth Circuit and stated that due to their failure to prove their selling power  (Ringling Bros.), the UDTD had not caused any harm to Ringling Bros.
• The Court stated that Ringling Bros. even failed to prove the causes of dilution as established under the FTDA (during that time of law).

The 1998 Hershey case (Trade dress protection)

Significance of the case

• In Hershey Foods Corp. v. Mars Inc. (1998), a dilution claim for trade dress violation was of importance and at issue.
• The U.S. District Court, Pennsylvania, denied the protection based on the fact that the color combination used by Hershey on the products was similar to that of other brands in the food industry (considered not that famous).
• Hershey wanted to protect the color combination-yellow, brown, and orange of the peanut butter from the alleged packaging of M&M’s color combination.
• According to the Court, Hershey failed to prove their point (the mark is famous among consumers) even after altering the packaging (conducting a public survey by changing the packaging).

The 1996 Star Markets case (Test for distinctiveness)

Significance of the case

• In Star Markets Ltd. v. Texaco Inc. (1996), the company failed to prove the strength of the trademark with that of the challenged mark in dispute, as observed by the U.S. District Court, Hawaii.
• According to the Court, the degree for a level of association directly does not imply the mark to be distinct.
• According to the Court, both the surveys conducted by Star-Market failed to prove the strength and recognition of their mark among the consumers in the marketplace. 

Dilution likelihood

Once a trademark is determined to be famous, the next step is to assess the likelihood of dilution. The U.S. has a specific law that prohibits the dilution of famous marks, the Federal Trademark Dilution Act (FTDA) of 1995.

What are the two forms of trademark dilution

The two forms of trademark that are protected from dilution include:

• Blurring: It occurs when the use of a similar or identical mark creates confusion in the marketplace about the source of the product or service. It is further discussed under the heading “dilution by blurring” in this article.
• Tarnishment: It occurs when the mark is used in a way that is damaging to the reputation and goodwill of the trademark holder. It is further discussed under the heading “dilution by tarnishment” in this article.

Trademark infringement

Trademark infringement is different from trademark dilution and forms the basis of liability (cause of action) for claims by the aggrieved consumer and trade owner, both under the FTDA and State Laws. 

The benefits of this were also taken by the trademark holder until the TDRA’s enactment. For claiming relief under the FTDA, proving the likelihood of dilution (which causes dilution) was of utter importance.

How does trademark infringement occur

Trademark infringement occurs when there is a use of a registered trademark without the owner’s consent. This usage is of the identical trademark on similar goods and services, thereby causing a likelihood of confusion. The aggrieved owner has a remedy to file a lawsuit regarding unfair trade practices parameters even if the trademark is not registered (TDRA Laws).

This remedy protects consumers in the marketplace from getting duped by market competition. 

Infringer 

According to 15 USC 43(a) of the Lanham Act, “using, copying, or intimidating the registered trademark during the trade is considered an infringement.” This is for goods and services that bear a mark of registration.

For claiming damages and profits

For claiming damages and profits regarding trademark infringement, the owner has to provide proper details regarding the registered trademark or give written notice to the infringer about the registration of the source mark.

In cases regarding unintentional infringement (by media housing publications) and related or associated activities, the owner can only ask for an injunction to retaliate but cannot ask for damages or profits from the infringer.

Jeffery Sorensen case (2015) (Bad faith)

Significance of the case

• In Jeffrey Sorensen v. WD-40 Company (2015), claims were made by Jeffrey Sorensen for the usage of a similar trademark in bad faith by WD company.  However, the appellant failed to prove the contention of the fact.
• The U.S. Court of Appeals for the Seventh Circuit decided and stated that there was no confusion between the two products and services in the marketplace for consumers of the same.

Federal corporation case (2012) (Trademark commercial strength)

Significance of the case

• In Bridgestone Americans Tire Operations v. Federal Corporation (2012), the U.S. Court of Federal Circuit opined that the trademark of  Bridgestone was far stronger in the market with their “extensive usage, promotion, and tire sales”  bearing the mark as compared to the challenged mark in dispute.
• According to the Court, there existed an element of likelihood of confusion.

HYDEL enterprise case (2015) (Necessity of likelihood of confusion)

Significance of the case

• In Nola Spice Designs v. HYDEL Enterprise (2015), the U.S. Court of Appeal, Fifth Circuit, and trial court both went in favor of the HYDEL enterprise based on the fact that the trademark ‘Mardi Gras Bead Dog’ was ineligible for protection under the Lanham Act of 1946 because the element of likelihood of confusion was missing in their mark.

Registration for the trademark

According to 15 USC 1125 – Sec. 43(c)(6), a registered trademark under the TDRA and state laws is ineligible for legal action. However, legal action can be taken in the following scenarios if the party can satisfy the U.S. Court:

• The weakening of the mark
• The trademark’s reputation is being tarnished. 
• The claims for damage to the mark’s distinctiveness 

Factors for determining the likelihood of dilution

To determine the likelihood of dilution, a Court will consider several factors:

• The similarity of the marks
• The strength of the mark
• The commercial strength of the mark
• The intent of the alleged infringer, and 
• The actual dilution or tarnishment caused by the alleged infringement

Nabisco Inc. v. PF Brands (1999)

Significance of the case

• In  Nabisco Inc. v. PF Brands (1999), the U.S. District Court of Second Circuit denied the test established to conclude actual harm (for this case) and assumed the success of PF Brands for its dilution claims.
• The Court further laid down a ‘ten-factor universal and casual test’ based on federal anti-dilution laws (FTDA) for determining the likelihood of confusion.
• These ten factors are

1. Uniqueness.
2. Identical.
3. No gaps between the products.
4. The connection between the first three factors.
5. Similar consumers and similar areas.
6. Actual confusion.
7. Consumer’s mentality.
8. The damage occurs to the source mark.
9. The delay by the accused (products and services).
10. Lack of strictness in protecting the mark by the U.S. government.

• These first three factors were independent of each other, as confirmed by the Second Circuit, which stated that both companies are likely to have common customers.
• Therefore, the case was dismissed in favor of PF Brands.

Time Mirrors magazine’s case (2000)

Significance of the case

• In Times Mirrors Magazines Inc. v. Las Vegas Sports News LLC (2000), the Lower Court granted an injunction to the Times magazines based on the Six-factor test, and the U.S. Court for Third Circuit upheld that decision by additionally stating the factors for the likelihood of dilution as used in the Nabisco Case (Supra).
• The Court opined that using the products and services with those of the trademark of the Times magazines by Las Vegas left room for confusion in the customer’s mind because of which the consumers were unable to distinguish them from the source trademark products and services.
• The Times Magazine filed a suit, partly against Las Vegas, for its trademark dilution under the FTDA.
• The respondent used the term “sporting” in its publication, which was already a registered trademark of the Times Magazines from 1886.

Eli Lilly & Co. Case (2000)

Significance of the case

• In Eli Lilly & Co. v. Natural Answers Inc. (2000), the case was filed by Lilly Co. against Natural Answers Inc. for the claims of trademark infringement under the Lanham Act, dilution under FTDA,  and unfair competition under Indiana State Law.
• The U.S. District Court, Indiana, held that there was no need to prove the element of actual harm and that the likelihood of confusion already existed from using the mark by Natural Inc.
• The Seventh Circuit upheld the decision of the Court and went in favor of Lilly Co. for granting relief to their claim in the form of an injunction.
• The standard of proof from the Nabisco Case (Supra) was applied here as well.
• From the Year 1988, Prozac, a prescription drug to cure depression, was sold by Lilly Co.
• Herbrozac, a product chain of herbal medicine (alternative to Prozac), was sold by Natural Inc., which was an internet-based company selling medicines without a prescription.

Categories of trademark dilution 

The Federal Trademark Dilution Act, 1966 (FTDA), prohibits the use of a mark that is likely to cause dilution by blurring or tarnishment.

Trademark dilution is divided into three distinct categories:

• Cybersquatting (newest form).
• Tarnishment
• Blurring

Dilution by cybersquatting

Cybersquatting is a new form of trademark dilution. Cybersquatting occurs when someone uses, registers, and sells the domain name of an already existing company using their trademark or service mark, with the main motive of making a profit by selling it to the rightful owner. Yes, in simpler terms, this is a form of blackmail but with the use of technology. 

The whole purpose of registering the domain name is to retrieve money from the owner. This form of cybersquatting leads to the diminishment of the reputation of the source company with the registered domain name. When consumers are not able to direct them to the webpage they desire, it frustrates the customers, causes them to lose trust in the company,  and reduces the market value of the original business trademark on the internet. 

For example, A is a company that has not yet registered a website (domain name). B is a company or a person (cybersquatter) who wants to make money in the wrong way. B grabs the chance and creates a website similar to A’s name. Later, B tries to sell the same to company A to make money illegally. This is done to gain profit or to lure more consumers to such websites through advertising.

Bad-faith determinate factors

According to 15 USC 1125- Sec. 43(d)(B)  of the FTDA, 1946, bad faith concerning the piracy of the domain name refers to the use of ulterior motives and intentions by the cybersquatter.

The following are considered elements of bad faith, according to the Act. This includes:

• Legal rights of cybersquatter over the domain name (IPR)
• The domain name is the actual name or nickname of the alleged cybersquatter. 
• Legitimate proof of using such domain name for legitimate cause (previous record).
• Question regarding the fair usage of the domain name.
• The element of the intention of re-directing consumers towards the fake website for monetizing profits or defaming the original trademark is a factor. 
• Record of selling the domain name to the trademark owner.
• Record of providing fake contact details while registering the domain name.
• Record of multiple similar and deceptive domain names. 

How to obtain legal remedy against cybersquatting

There are mainly two ways through which grievances can be raised and remedies can be obtained against cybersquatter. This includes:

• Filing a lawsuit under the ACP Act (1999).
• ICANN.

Anticybersquatting Consumer Protection Act (ACPA)

According to 15 USC 1125, the provisions of Sec. 43(d) (Cyberpiracy prevention) of the FTDA were adopted by the US government under the ACPA to restrict the activity of cybersquatting. Unlike the FTDA, the main goal of the ACPA is to protect the owner of the trademark in cyberspace, when their domain name is being used and not to prohibit any individuals from exercising their rights to free speech and usage. 

Where to file the suit against the cybersquatter 

The aggrieved party can file a suit under this ACPA to obtain the domain name back from the business or from the cybersquatter itself. According to the ACPA, for a single individual domain name, statutory damages ranging from $1000 to $100,000 can be claimed back by the aggrieved party. 

The burden of proof

The burden lies with the one filing the suit. Proof regarding the following is essential:

• Proof of the ulterior motive of the cybersquatter is to gain profit.
• Proof of uniqueness of the domain name while registering the same.
• Proof of originality and prior usage by the plaintiff.
• Proof of element of confusion.
• Proof that the domain name is protected under the trademark protection law of the United States.

What remedy is available to the defendant

The following defense is available for the opposite party. For that, the defendant needs to  satisfy the court with the following:

• The motive for registering that particular domain name was entirely for different reasons (society’s goodwill) and not to acquire profit from the owner of the trademark.

Internet Corporation of Assigned Names and Numbers (ICANN)

Another alternative remedy for seeking the claim is to approach the ICANN arbitration system, as it is the most effective, least time-consuming, and quicker resolution process than what one can achieve from the traditional court system. 

The ICANN arbitration system is also known as Uniform Domain Name Dispute Resolution (UDRP). 

Steps for claiming back the domain name 

The following steps are needed to be taken for “acquiring, transferring, or canceling the domain name” under this system:

• Proving the existence of an element of an identical or similar trademark to that of the original owner’s trademark.
• Proving the existence of no legal right or claim over the alleged domain name.
• Proving that the alleged domain name is illegally used to cause harm to the source owner’s domain name (trademark). 

WWFE Inc. v. Michael Bosman (1999)

Significance of the case

• According to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (AMC), this was the first case to be ever registered for cybersquatting. 
• In World Wrestling Federation Entertainment, Inc. v. Michael Bosman (1999), the WWFE case demonstrated the effectiveness of the UDRP by ICANN of 1999 for restricting abusive domain name registration.
• This proved to be a cost-effective dispute resolution method for the trademark owner to protect their rights in the online marketplace. 
• This case was decided within 45 days.

Facts of the case

• WWF showed evidence regarding the registration of two marks that were valid for 20 years with the United States Patent and Trademark Office (USPTO).
• WWF used its trademark for various activities to promote its business, and proof of the same was provided.
• Michael Bosman, however, registered the domain name “worldwrestlingferation.com” for 2 years, without having the authorization or license to use the WWF marks (proof of evidence of registration details was provided by WWF).
• After 3 days of registering the domain, Michael, with the intention and motive of gaining profit from WWF, tried to sell, rent, and transfer the same to the WWF on numerous occasions and once made an offer of $1000. 
• Proof of evidence was presented by the WWF for the illegitimate interest of the defendant (valid reasons for the defendant’s lack of claim over the domain name).

Issue involved in the case

• The issue was whether there existed illegitimate interest in and registration of a domain name in bad faith by Michael Bosman over the original service mark and trademark of the WWF or not.

Judgment of the Court

• The AMC, after hearing both counsels of the parties, stated that the alleged domain name has the element of identical and similar mark to that of the WWFE mark.

• The AMC stated that there existed no legal right of Michael Bosman to use a domain name. The ulterior intention and motive of the same were established by the Court. 
• The case was decided in favor of the WWF.

Panavision v. Toeppen (1996)

Significance of the case

• In Panavision v. Toeppen (1996), this case enabled the U.S. District Court, California, to provide a broad interpretation of ‘use in commerce’, which later became a precedent for other Courts to follow in various cases. 
• According to the Ninth Circuit, it was stated that simply registering the domain name does not amount to use in commerce, but the intention to make a profit from the offer made with the said domain name amounts to use in commerce.

Green Products v. Independence Corn (1997)

Significance of the case

• In Green Products Co. v. Independence Corn By-Products Co. (1997), both companies were in a competing business of corn by-products, and neither of them created a website for the same company.
• The U.S. District Court was of the view that ICBP’s deceptive use of a domain name similar to that of the Green Products domain name likely created initial interest in customer confusion (misleading), making it appear to be superior to that of the Green Products Co.
• The intention of deceiving, along with the actual decisiveness, formed the basis for trademark infringement of the domain name.

Dilution by blurring

According to 15 USC 1125 – Sec. 43(c)(2)(B) of FTDA, dilution by blurring refers to the weakening of the uniqueness of a well-known, brand mark, or trade name. Let’s say it is less recognizable and less clear to consumers in the marketplace. If the mark is widely recognized and associated with a particular product or service, it is more likely to be protected from dilution by blurring.

Blurring is a classic form of harm (damage) that arises from the dilution of such, and it is one of the most difficult to prove.  In simpler terms, we can say that the brand image of the goods and services associated with the mark diminishes in the public eye over time due to the gradual usage of such by the third party. Here, the source mark becomes difficult to recognize from the fake mark.

For example: Consider, where the famous brand Apple is selling electronic items, say mobile phones or laptops. Now, imagine what would happen if someone else started selling bedsheets and mattresses under the name of Apple by using the same logo as that of Apple? Even though they are not the direct competitor in the electronic item, consumers will link those products and services to those of the Apple-electronic brand whenever they see or hear about such bedsheets, thus creating confusion among the consumers. 

This means whenever Apple’s logo or Apple’s name pops up in the consumer’s head, they will link the same with the bedsheets and mattresses, an act of ‘show cause’ that they are selling the same. Hence, the unique nature of the brand Apple is lost.

Another example we can take of brand logos is Gucci on alcoholic beverages, Nike on clocks, Coca-Cola on cars, and Ford on food beverages.

The determining factors of dilution by blurring 

For determining the factors for blurring 15 USC 1125 Sec. 43(c)(B), the U.S. Court would consider the polaroid balancing test consisting of the eight factors (as discussed earlier in the classic case of Starbuck v. Wolfe Borough). This balancing test consists of the following: 

• Similarity
• Uniquenesses
• Independent use
• Recognition capacity
• The Intention of Use
• Connectivity

Thus, these factors form the basis and guide the court to reach a judgment for justice.

Injunctive relief

According to this, the owner of the trademark can acquire relief in the form of an injunction, and only for the following:

• The famous mark or trade name.
• The use of such a mark or name shall be done in commerce by the other party that caused dilution by blurring.
• In the case where there is the absence of actual harm or likely confusion, competition, or injury.

Dilution by tarnishment

Dilution by tarnishment occurs when a mark is used in a way that is damaging to the reputation and goodwill of the trademark holder. This can happen in a variety of ways, such as when the mark is used in a way that is offensive or derogatory.

According to 15 USC 1125 – Sec. 43(c)(2)(C) of the FTDA, tarnishment refers to a damaged reputation. This means that whenever a famous brand is closely associated with a similar brand or trade name in the marketplace, and with such association, the brand image or name receives harm or damage to the source owner’s trademark, it creates dilution of the trademark by tarnishment. 

This form of dilution occurs with or without confusion. This usually occurs when a similar brand uses inferior, objectionable, and low-quality goods and services in the name of the original brand. Here, the status and reputation of a reputed brand is at risk.

For instance, when a third-party brand or trade name, unauthorized, starts selling T-shirts with degrading text or print over the T-shirts using the name of the brand,  say  Gucci. So what happens over here is that the brand image or name of Gucci is being tarnished. This creates a negative impact on the minds of consumers of famous trade names and brands.

The difference between tarnishment and blurring 

Tarnishment and blurring differ in the ‘question of law’ that the Court gives importance to while considering the disputed trademark in the cases that arise before them. This includes:

For tarnishment – does such a mark affect the brand’s reputation or not?

For blurring- is there a loss of quality in goods and services because of such a mark?

The determining factors for dilution by tarnishment 

Under FTDA

In the FTDA, there is no cause of action for dilution by tarnishment, as argued by some scholars. However, there is proof of Congress’s support for protecting the trademark from dilution by tarnishment.

The Victoria’s Secret case (discussed further under the heading “cases of tarnishment and blurring”) however, proved otherwise and inspired the Court to add clauses regarding the dilution by tarnishment under TDRA.

15 USC 1125 (c)(1) explicitly provides provisions for the cause of action and a definition for dilution by tarnishment.

What are the factors for the cause of action of dilution by tarnishment

The required factors for the cause of action for tarnishment include:

• The mark’s eligibility for protection under the TRDA.
• The mark’s usage by the third party (officially and commercially)
• The mark has to be famous. 
• The use of the challenged mark created a negative impact on the consumer’s mind related to the famous mark.
• The mark is likely to cause injury to the famous mark.

Cases of tarnishment and blurring 

Moseley v. Victoria’s Secret (2003)

Significance of the case

• In Moseley v. V Secret Catalogue Inc.(2003), the order passed by the U.S. Court of Appeals for the Six Circuit was reversed by the U.S. Supreme Court.
• The Court stated that proof of actual harm needs to be presented rather than proof of likelihood of confusion for claiming the reliefs for trademark dilution by blurring.
• The burden of proof for the presence of dilution by blurring was on Victoria’s secret. 
• This case led to the amendment of the FTDA to TDRA and determined the dilution test (as discussed earlier).
• Later, the case was tried based on dilution by tarnishment and dismissed accordingly.

Facts of the case

• The Victoria’s Secret Catalogue Inc. is an international and well-known lingerie company and is the owner of the Victoria’s Secret (brand logo) mark.
• The Victor’s Little Secret, previously named Victor’s Secret, was owned by Cathy and Victor Moseley (husband-wife duo), who were into the business of selling sex-oriented toys and products.
• After becoming aware of this fact, Victoria’s Secret sued Moseley’s for the reason that the use of such a name caused harm to their company while also tarnishing the reputation of their brand name.
• The Court, based on this fact, issued an injunction to the Moseleys, who later operated the business under the name, Cathy’s Little Secret.
• The U.S. District Court believed that even though the company’s products and services differed in nature, their presence degraded the brand image of Victoria’s Secret (a famous brand).
• The store owner appealed this decision, and a review was sought from the U.S. Supreme Court.

Issues involved in the case

• Whether Victoria’s Secret meets the requirements of dilution by tarnishment under the revised TDRA Act or not?

Judgment of the Court

• The arguments presented by the Moseleys were not enough to prove their intent of not tarnishing the reputation of the famous mark.
• According to the Court, if any new mark (a similar mark that is not famous) is closely associated with the famous mark, as in this case, it strongly means that such a mark has caused harm and also tarnished the reputation of the famous mark.
• The Court stated that evidence of the likelihood of confusion (mental aspect) is also required rather than evidence of actual harm.

Louis Vuitton Malletier v. Giggity (2007)

Significance of the case

• In Louis Vitton Malletier S.A. v. Haute Diggity Dog LLC (2007), parody exclusion was used for the first time in history as a defense that established how a parody can protect against a claim of trademark dilution in TRDA.
• According to the Court, parody does not make a source mark lose its strength, nor does it make the mark unclear in the marketplace.
• It was established that parody, however, strengthens the famous mark value when used distinctly and funnily (creating a second positive image in the customer’s mind).

Facts of the case

• Louis Vuitton (LVM) is a luxury luggage and accessories manufacturer in Paris.
• The Haute Diggity Dog (HDD) is a seller and manufacturer of pet products in Nevada and nationally.
• The LVM sued HDD for trademark infringement, dilution, and copyright infringement based on the parody of its famous luxury trademark on dog plush toys. 
• The U.S. District Court believed that HDD products by Chewy Vuitton successfully fall within the ambit of parody (intimation of the original work in comic fashion) and not within the ambit of dilution, infringement, or violation of any other laws.
• The case went in favor of HDD and rebutted the claims made by LVM. 
• Later, the case was admitted for appeal before the Supreme Court.

Issues involved in the case

• Whether the HDD marks fall within the ambit of parody exclusion?
• Whether such use by HDD causes blurring of the LVM mark in question or not.

Judgment of the Court

• According to the U.S. Supreme Court, LVM failed to prove the likelihood of confusion even after the Court used additional factors to determine dilution.
• The Court stated that HDD products failed to create confusion with the LVM mark for consumers, and all the claims made by the LVM were rejected.
• Trademark dilution claim – the Court analyzed that LVM failed to prove their claim for dilution by blurring (negative impact of HDD dog toy products on the LVM Mark) along with dilution by tarnishment (LVM argued that the possibility of death of the dog from choking the products would cause harm).
• According to the Court, LVM failed to provide evidence regarding the reasons argued for dilution by tarnishment.

Specific defenses to a dilution claim

The Individualized defenses for the likelihood of confusion or fame and distinctiveness of the mark for trademark infringement were discussed earlier, so now let’s move toward the paradigmatic defenses available against the dilution claims.

In some cases, these are known as specific defenses (the class of defenses) that can be used to defend against a dilution claim. These include the use of:

• A fair use defense.
• The defense of laches, or 
• The defense of prior use.

Fair use defense

According to 15 USC 1125 Sec. 43 (c)(3),  defenses are made available for the infringer against the dilution claim regarding dilution by blurring and tarnishment. These cannot be legally challenged and are known to be exclusions or exceptions (traditional or classic form).

Fair use can be termed the “non-confusing use of the term by delivering accurate data to the consumers so that they can make better-informed decisions regarding their purchases.”

According to the provisions of the law, the dilution claim is not actionable in a suit for the following reasons:

• Fair use (descriptive or nominative, or of a famous mark by a third party) in respect of-

• Comparative advertising or promotion
• Parody 

• News reporting and commentary
• Non-commercial use of the mark

This is based on the idea that the use of the mark does not create confusion in the marketplace. 

Fair use in comparative advertising and promotion

According to the statute, fair use in comparative advertising or promotion is only applicable to descriptive marks, meaning this allows the third party to use source marks on their products and services in a fair manner and in good faith.

What are the different levels of the marks of trademark dilution

According to 15 USC 1052, they can be categorized as:

Generic

These are generic terms, meaning commonly used terms for certain categories of the mark for the products and services, and they do not fall under the domain of trademark protection.

For example, frisbee is the trademark name, and a small plastic disc to play with would amount to a generic name or mark name. Another example refers to using Cola for Coca-Cola or Aspirin for any painkiller medicine.

Suggestive

These are used to identify the characteristics of the products or services without directly associating them with the trademark name for describing them. Imagination for understanding the products or services is the main concern here. They are protected under the law. 

For example, if someone asks you to think of a red color with a round shape, you will associate it with either an apple fruit or a red ball. 

Arbitrary or fanciful

These kinds of words are protected under the law, but they are considered to be ‘made-up’ names, totally disassociated with the products or services.

Descriptive

These are known to be some special symbols and names, such as color, smell, function, size, or ingredients of the products and services, which cannot be considered trademarks, but if this is accepted as a unique identifier in the consumer marketplace, then such becomes a part of trademark protection (creating secondary meaning in the consumer’s mind).

Nominative 

This is used when it becomes necessary to identify the owner’s products from those of the infringer’s products and is protected under the law as it does not create a mental association with the source products and services in the mind of the consumer. 

Hence, this is unable to weaken the strength or distinct nature of the trademark, but in turn, it proves the significance of the source mark. 

Oak Grove case (1983) (Descriptive factor)

Significance of the case

• In Zatarains Inc. v. Oak Grove Smokehouse Inc. (1983), the issue was regarding the descriptive mark association for understanding the product or services without having it link with the secondary meaning.
• The U.S. Court of Appeals, Fifth Circuit, decided and held that descriptive terms without special meaning are not protected under trademark protection laws.
• The party was able to prove to the Court that the product (Fish-Fri) fell within the ambit of a generic term and that the use of such a mark was done within the fair use or good faith policy.
• Upon consideration, it was found by the Court that both the marks of the party who initiated the suit were descriptive, out of which one acquired protection (Fish-Fri), and the other did not as it failed to create the element of secondary meaning.

Playboy Enterprise case (1998) (Normative factor)

Significance of the case

• In Playboy Enterprise Inc. v. Welles (1998) the issue was whether the website usage by the accused for associating their website with that of the Playboy Enterprise created dilution or not.
• The U.S. District Court, California, for Ninth Circuit applied the normative exception and stated that the accused only used it to describe herself in the past and did not associate their website name with that of the source mark.
• Thus, it was established that this did not weaken the title of the Playboy enterprise and was only done for identification purposes. 
• Also, on the website, it was mentioned by the accused that it was not sponsored by the publisher. 

Fair use of parody

The fair use parody defenses are protected under the First Amendment and the eight-factor rule (as discussed earlier) if they are for genuine purposes and do not create a significant commercial impact.

For deciding whether the mark is violating the source mark or not, every Court in the United States uses different factors, from the First Amendment to eight factors, to establish the likelihood of confusion and fame.

The Louis Vuitton Malletier v. Giggity case (supra), which we discussed earlier in the head “cases for blurring and tarnishment,” is a classic example of fair use in parody defense.

Fair use of news reporting and commentary

These defenses are also protected under U.S. trademark law, similar to the parody aspects. The question, however, is whether the media housing publications are collecting new information for commercial purposes or not.

According to the article, the news agency is provided with more protection by the Apex Court than what is made available in the First Amendment.

Non-commercial use of a mark

The non-commercial use of a mark is also protected under the First Amendment. This includes Constitutionally protected Speech such as parody, the use of humor for criticism or jokes, opinions on topical issues, and other forms of expression. 

However, during earlier times, conflicts regarding the mixed elements of commercial and non-commercial use of speech made it difficult for the Court to assess the situation. 

This is because the question was not regarding the protection but the question was whether the parody use of the mark falls within the ambit of ‘commercial or non-commercial use’. Is it communicating a message, or is the message related to the trademark?

For that, various contradictory verdicts were taken in various cases.

The case intended in favor of commercial use

In Planned Parenthood Federation of America v. Bucci (1997), the U.S. Supreme Court stated that even the minute evidence of diluted speech forms the basis of commercial use, as it would make this eligible for safe harbor under the FTDA. 

Here, Bucci used the PPFA trademark in his domain name, which was specifically made to cause actual harm to the source owner’s mark. Here, the Court was satisfied with the use in commerce for two reasons: 

• One, the use of the internet and its impact on the source mark’s activities, and 
• Second, the presence of likelihood of confusion among customers. 

The cases that are intended in favor of non-commercial use.

In Mattel, Inc. v.  MCA Records Inc. (1998), the U.S. District Court, California, for the Ninth Circuit stated that even if the speech has the slightest evidence of the non-commercial use element, then the speech is to be considered diluted, and protection will be provided under the First Amendment. In this case, the song title ‘Barbie Girl’ was at issue.

In Dr. Seuss Enterprises L.P v. Penguin Books USA Inc. (1996), the U.S. District Court, California, resorted to the fair use of parody and stated that it was ‘merely for mimicking the Dr.Seuss style and not for generating sales on their products.’ The Court further stated that commercial use of elements was absent.

Non-commercial use test

Presence of profit and absence of harm

• The main focus is on whether the dilutive speech is creating commercial profits for the speaker or not.
• According to the U.S. Supreme Court, the necessary elements should be of direct commercial benefit for it to fall within the ambit of non-commercial use.
• In this case, the actual harm factor is irrelevant if such use is done by mistake. 
• In the event that actual harm is done intentionally, then it would amount to profit for the dilutive speech speaker. 

If there is a case where the dilution that occurred was intentional or caused harm to the reputation of the trade, then under such circumstances, the relief of an injunction is available as a remedy.

A Defense of Laches

The defense of laches is based on the idea that the trademark holder has waited too long to take action against the alleged infringer. This defense is often used when the trademark holder has not taken action against the alleged infringer promptly.

This is an equitable defense, available in ‘trademark infringement litigation cases.’

The meaning of defense of laches

The doctrine of laches or the defense of laches (fair and equitable defense), in simpler terms, can be defined as ‘approaching the Courts for the dilution claims without making any significant delays for the same by the trademark holder.’ (the one initiating the claim).

The significance of defense of laches

The defense is based on the Latin maxim “Vigilantibus non dormientibus aequitas subvenit,”

This translates to ‘equity aids the vigilant, not those who sleep on their rights.’

According to the rule, the law only helps those who do not sleep or have neglected their rights for an extended period. One must be aware of their responsibilities for initiating the claims before the Court.

The purpose of the maxim

Whenever the trademark owner or holder delays in filing the case against the infringer for the trademark dilution claim, it can have the following impact:

• If the infringer is innocent, then it can impair his ability to mount a fair defense.
• For both parties, it may create trouble during the proceedings, such as evidence disappearing, memories fading away, and a witness going corrupt against the case.
• The infringer may even gain benefits. This is because the whole burden of proving innocence is shifted to the trademark holder. 
• It can also happen that the trademark holder may not be able to receive certain claims for legal remedies. 

The burden of proof

For a successful trademark dilution claim, the burden of proof lies on the source trademark owner (the one initiating the claim). 

The ingredients for the defense of laches 

To stop the trademark holder from initiating a cause of action, the following ingredients are necessary:

• Delay on the part of the trademark owner in applying the claim according to the discretion of the Court.
• Negligence of the trademark owner in asserting their claims or rights.

Information on claims or rights should be known to the trademark holder. ‘Ignorance is bliss’ kind of attitude should be avoided by all means necessary.

What are examples of the defense of laches

• A knew that B was using A’s trademark, which is similar and identical, and such use has occurred for a long time by B. Despite this fact, if A did not take any legal action but came to do so after a lapse, then, under such circumstances, A is barred from bringing the dilution claim against B.
• After a lapse of 8 years, Zoe claimed sexual harassment against their colleague. During this time, the department was changed, the witnesses were missing, and she even changed her job. In such cases, the Court may avoid entertaining the cases because of delay. The important information, data, and evidence regarding the case may be diluted or corrupted, making it difficult to provide justice.
• Another is when there is a presence of likelihood of confusion in a case but it can be solved because the interest is to avoid confusion among the consumers, and under such circumstances, this doctrine may not be applied strictly. 

The case regarding the defense of laches

Starbucks v. Wolfe’s Borough (2004) forms a classic example of the defense of laches because here also Starbucks knew about the use of their trademark by Wolfe’s as Charbucks (on one of their products) mark for many years, but Starbucks caused a delay in bringing the case to the Court.

Significance of the case

• The U.S. District Court, New York, found Starbucks guilty of asserting their rights on time.
• The Court was also of the view that this delay by Starbucks created immense hardship for Wolfe’s company as they dedicated their precious time and investment of resources to branding their products and services. So, if the change were to happen now, then this would cause harm to Wolfe’s brand, and based on that, Starbuck’s claim for the defense of laches was barred by the law.

Defenses of Prior Use

Finally, the defense of prior use is based on the idea that the use of the mark predates the use of the claimed trademark. This means that even if your mark is registered but someone else has been using that mark before your registration, the mark is considered to be valid and yours to be invalid in respect of the trademark protection rights. 

For example, X obtained registration of a particular mark in 1995, but Y has been using that trademark since 1920  without such registration. In such situations, trademark usage (time frame) by Y is valid and is protected against the trademark usage of X even with the registration of such a mark. 

This defense is a prime example of a ‘first come, first served’ basis for trademark protection with respect to the use, regardless of the registration of the trademark.

This defense is often used when a mark has been used by another party before the trademark holder began using the mark.

Right of exclusive use

According to 15 USC 1125 Sec. 33 (b)(5) of the TDRA, registration of the trademark is conclusive proof (evidence) for its validity and enables the trademark holder to use such a mark with rights in their businesses. This is limited to the products and services specified for registration and renewal.

According to this rule, such registration can be challenged by someone based on the fact that they have been continuously using the trademark, by adopting such a trademark,  since before the registration of the claimed trademark in issue. 

Proof of evidence for prior use defense

• The continuous usage of the mark prior-use proof is mandatory?
• The trademark holder acquired distinctiveness and fame from such usage.
• The trademark holder has used that mark before a certain date of importance.
• The trademark holder used that mark before the claimed mark in the issue was published.

Thus, we can say that continuous usage of the trademark provides superior rights for trademark protection to the trademark holder despite the element of registration.

Right of exclusive use before the amended trademark law

During the times of Common Law in the U.S., trademark protection was provided to the trademark holder based on the location and market area where the business was first commenced and when they first started using their mark.

This means that the use of the trademark was permitted in two instances:

• Acting in good faith (good intention for using the mark).
• Use of the same mark in different locations or markets.

However, after the Lanham Act was introduced, this whole concept established by common law was overturned with the introduction of a ‘National Scheme for Trademark Protection’ that we know today as TDRA.

Burger King case (1968)

Significance of the case

• In Burger King of Florida v. Hoots, (1968), the U.S. Court of Appeals for Seventh Circuit applied the rule of Sec.33(b)(55) of the Lanham Act and concluded that Hoots was well within their rights to continue their business using the trademark BURGER KING.
• This exclusive use of rights was only limited to the area or location of the Hoots registered business.
• The first restaurant by Burger King (a multinational hamburger chain) was launched in 1953.  In the year 1961 it was launched in Illinois and obtained the registration BURGER KING mark in the same year. In 1966, the mark came to be recognized as a famous or well-known mark.
• Hoots, on the other hand, was a small businessman in Illinois who opened its restaurants in 1957 and had a state registration of the mark BURGER KING from 1959.
• The case went in favor of Hoots because the use of the trademark by them was way before the time of the use of a trademark by Burger King (prior use defense).

Preemption of state laws

In addition to the Federal Trademark Dilution Act, several state laws protect against trademark dilution. These laws are known as state anti-dilution statutes, and they provide additional protection against trademark dilution.

However, it is important to note that these state laws are preempted by the Federal Trademark Dilution Act. This means that if a mark is protected under the Federal Trademark Dilution Act, it is not necessary to rely on the state anti-dilution statutes.

This means that Federal law always prevails over State laws, Constitutions, Courts, Legislatures, etc. 

The first contact point

The year 1927- This all started with Professor Frank Schechter, who believed that a dilution is a form of injury to the trademark that needed protection because there was a need to strike a balance between the Industrial Revolution and commercial trade increment (domestic or international) due to the use of similar marks on competing goods.

The year 1947- After two decades following the Professor’s theory for dilution and to provide a remedy for the same (concerns of judicial and scholarly opinion regarding the same), the state anti-dilution statute was first adopted by Massachusetts.

The main purposes for injunctive relief were:

• A likelihood of injury to the status of the mark.
• A likelihood of dilution of the unique quality of trade name or mark.
• The absence of importance to competitions or elements of confusion for source goods and services from the challenged mark.

Allied Maintenance Corp. case (1977)

Significance of the case

• In Allied Maintenance Corp. v. Allied Mechanical Trades Inc. (1977), the doctrine of dilution gained popularity and became widely accepted. This case was decided by the Court of Appeals for the State of New York.
• Under the New York statute, the claims were not prohibited based on the absence of likelihood of confusion or competition.
• This was only applicable for distinct marks.

US Olympic Committee case (1987)

Significance of the Case

• In San Francisco Arts & Athletics Inc. v. United States Olympic Committee (1987), the validity of the dilution doctrine was upheld by the U.S. Supreme Court following the Constitution.
• The dilution theory established by Professor Frank was given validity and recognition by the Court.
• The case went in favor of the Olympic Committee due to the presence of the likelihood of confusion.
• The provision of 15 USC 1125, Sec.43 (c) was inserted under the FTDA.

State anti-dilution statute

The United States Trademark Association (USTA) adopted the Model State Trademark Bill, 1964 established by the International Trademark Association (ITA) and as amended by the MSTB, 2021. Major state statutes resolved around Sec. 12 of MSTB, 1964.

MSTB, 2021

The main purpose of the Bill is to provide for the registration and protection of claimed trademarks. According to the MSTB, 2021, Sec. 12, 13, and Sec. 14 enable trademark protection. 

Sec. 12 – Trademark Infringement

• The law states that, by common law rights, any individual who:
• Without the permission of the registered trademark owner, uses such mark for, sale, distribution, advertising, offer, reproduction, copy, or identical imitation.
• It would be considered illegal because such use would have a negative impact on the source mark in the marketplace.
• It is also prohibited to do the same for the above activities related to the registered trademark in trade dress activities.
• The party has a right to civil action and remedy against the infringer.
• However, if such application is based on trade dress, then the registrant cannot claim profits or damages unless proof of negative impact is established.

Sec. 13- Dilution in the form of injury to business reputation 

• According to this, if the mark is famous under the state and the famous mark’s distinctiveness is diluted by the use of it by a third party, then relief can be sought through equity principles or an injunction. 
• The party needs to establish the eight-factor rule, or rules of a mark to be famous. 
• Injunction relief is granted to the owner if the infringer intended to gain profit by injuring the reputation and damaging such a famous mark. Even additional remedies are provided.
• Similarly, here also, fair-use, non-commercial use, and news reports and commentary are exempt. 

Sec. 14- Remedies or claims

• An injunction remedy (shows proof of irreparable harm) is made available to the trademark owner in respect of the damages that occurred from the use of their mark by the third party.
• The U.S. Court can also order the destruction of such products and services by the third party.
• In the event that the third party acted in bad faith, damages awarded can be tripled by the Court along with the attorney’s fees. 
• The remedies are also available in criminal law in the form of initiating a suit under that law. 

Drawbacks of the state anti-dilution statute before FTDA and TDRA

• The law was not uniform or harmonious.
• The law only protected trademark owners.
• The statutory language conflicted with the decisions in the dilution cases because aspects such as intent, confusion, and competition were established, despite their absence in the state laws.
• For trademark protection, their application was inconsistent.
• The law gave birth to the amendment in the Lanham Act, 1946, for enabling cause of action and by introducing FTDA (Federal anti-dilution laws).

Deere Co. case (1994)

Significance of the case

• In Deere & Co. v. MTD Products Inc. (1994), the case was regarding Deere’s Deer logo and MTD’s animated version of this logo in commercial advertising (indicating what we know today as a parody).
• According to the U.S. District Court, New York for Second Circuit considered such use of the logo by the defendant to be a case of dilution following the then-state laws.
• After the enactment of the FTDA, the dilution claim was dropped by the Court based on the verdict ordered by the U.S. Supreme Court in the Muppet character case.

The Toyota case (1998)

Significance of the case

• In Mead Data Central Inc. v. Toyota Motor Sales US Inc. (1988), this was regarding Mead’s LEXIS trademark and Toyota’s LEXUS trademark (a mark used by one of Toyata’s division departments).
• This case led to the creation of the dilution test based on factors similar to those of the likelihood of confusion. 
• The factors are used under state and Federal laws, with certain amendments (currently). 

The distinction between the anti-dilution laws: State and Federal

State laws

• It prohibits dilution.
• It enables protection in respect of harm to business status.
• The mark need not be famous and distinct.
• Only an injunction for remedy is made available.
• Exemptions are made available.

Federal laws

• Prohibit dilution as well.
• According to this, dilution means weakening the strength of a famous mark, regardless of competition or consumer confusion.
• The focus is mainly on the distinct and famous mark for protection.
• Monterey damages and an injunction;  both are available as a form of remedy in cases of willful intention for dilution by the infringer.
• Exemptions from the MTDS are adopted herein as well. 

Trademark Genericide in the U.S.

Do you know why trademarks are fought for protection by scholars, policymakers, and businesses alike? The reason is that:

• Trademarks enable consumers to distinguish one product from the other products in the marketplace related to their quality and,
• Trademarks establish unique features regarding the branded products and services in the market that set them apart from their competitors.

These individuals recognize how valuable trademarks are for businesses and consumers alike. 

Did you know that according to 15 USC 1064 (3), registered trademarks based on the doctrine of genericide can be put them on the verge of cancellation of the mark registration, and even the challenger can file a petition regarding the same? Yes, this is possible and it was first established with the amendment in the Act of 1984.

However, what is interesting to note is that pre-existed generic terms can still be protected under the U.S. trademark law only if the existence of evidence of secondary meaning is associated with the source trademark. This is because it encourages the customers to purchase the products and services of the famous mark indirectly impacting the social economy of a country as well and not otherwise.

The whole doctrine of genericide revolved around one important question.

• The ‘term’ used for products and services should be recognized as a trademark or
• A ‘generic name’ itself should be a recognized trademark to whatever products or services it is tied to.

The cases that established the doctrine of genericide

Anti-monopoly case (1979)

Significance of the case

• In Anti-Monopoly Inc. v. General Mills Fun Group (1979), the U.S. District Court, California, stated that a trademark becomes a public property for use when the consumers associate themselves with the source trademark products and services based on their purchase loyalties.
• The loyalty of consumers was important. The Congress also emphasized this fact from “how consumers perceive the mark should be of utmost importance.” 
• Due to these reasons, amendments were made to the FTDA and introduction of trademark genericide was put forward. 

Bayer Co. case (1921)

Significance of the case

• In Bayer Co. v. United Drug Co. (1921), the factors for determining the genericide were introduced by the U.S. District Court, New York.
• In this case, a  drug called Aspirin came to be recognized under the generic name term.
• Aspirin was a drug produced by Bayer (pain reliever) and had the exclusive right of use; despite the manufacturers and registered source trademarks, it became widely popular with consumers, who started associating the name aspirin with any pain reliever medication.
• As it got more accepted by the general public in the general products category, it became generic and lost its unique identity, which ultimately led to a loss of trademark protection.
• Now any company has the right to produce and sell a pain reliever by using Aspirin as a term and it does not amount to infringement. 

The doctrine of genericide and its importance

It is rightly pointed out by the author, Charles R. Taylor, that according to the Lanham Act and the Trademark Dilution Revision Act (TDRA), when the protected brand name becomes too common, its right to trademark protection is canceled under the trademark laws of the US. The gamble for a trademark to become generic is often high risk. The consumer begins to associate the products or services with a specific name that becomes free for everyone to use. 

For example, the experiment conducted by the legal team of Velcro in 2017 for their product Hooks and Loops on YouTube established how often consumers see a brand for the products and services they offer in a marketplace. Here, the consumer started calling the company itself Velcro instead of the product Velcro that was sold by them.

What are the brands that lost their trademarks because of genericide and brands that did not

Some of the brands lost their unique nature because of their common use by the public. This includes

• Aspirin.
• Cola.
• Cellphone.
• Elevator.

Brands that are still under the ambit of protection include:

• Jeep.
• Lego.
• Scotch.
• Teflon.
• Kitty Litter.

How can one determine the value of a brand or a famous mark

According to the authors, Oakenfull and Gelb (1996), when lawsuits are initiated against the famous mark, their equity is often too elevated. Apart from the physical aspects of the brand name, the financial aspects of the same are also of importance from a marketing perspective. 

The reason behind that is that the more famous a brand name is, the more positive it has on the consumer’s mind, the more willing the consumer is to pay a higher amount of money, and the more chances there are of being approached by marketing agencies. All of this is interconnected.

What happens here is that the brand itself becomes the ‘product’, and the companies start protecting it rather than the products. These can be marked by companies protecting:

• Trade dress and the design of the product.
• Logos.
• Structure of the packaging.
• Image of the company in the consumer’s mind.

Genericide and no legal protection

Generic terms (words or symbols that describe the products and services) are not liable for receiving protection because if such protection is allowed, then the product would fall under the category of monopoly. Examples of generic terms are E-mail and Cereal.

Difference between the generic mark and the descriptive mark

We earlier discussed in the heading “Fair use defense” the meaning of the generic mark and the descriptive mark; now let us understand their differences.

These two differ in one aspect, that is, how well they can create secondary meaning in the consumer’s mind. This is because, in the latter one, this aspect can be proven, but in the former one, it cannot, as they are defined as categories of products and services.

• For example, a finance firm cannot be used as a service mark because it describes the type of service and has no unique factor associated with any specific finance firm.

Determining factors for the registered trademark to be genericide

The U.S. Court examines the following reasons for determining whether the brand name has become generic or not.

Guidelines for determining the factors

• The U.S. Court will use the provisions of 15 USC 1064.
• The Court will determine its meaning in the dictionaries (present or absent).
• How the trademark owners are using the mark in the marketplace.
• How the trademark competitors are using the mark in the marketplace.
• Surveys of consumers conducted by trademark owners.
• How the products are associated with the source trademark in the marketplace. 

How genericide claims are dealt with according to the surveys

In the marketplace today, when there are multiple types of products and services offered by businesses and organizations, how can one defend a trademark and state that it has not become generic?

Well, to do that, nowadays, the U.S. Courts heavily rely on the counsel surveys of each party whose trademark is in issue/dispute.

The Court relies upon a singular answer from the survey:

• How a consumer views the products and services of the businesses or organization.

It means how well consumers view the trademark of a company as a brand name and not a generic name.

The two major surveys the Court relies upon are:

• Teflon Survey
• Thermos Survey

Teflon Survey

• This survey was established from the case of El DuPont De Nemours and Co. v. Yoshida International, Inc. (1975). This case was decided by U.S. District Court for the Eastern District of New York. In this, the company offered non-stick coating products under the trademark name Teflon.
• This case is mostly used to determine the challenges regarding trademark genericide.
• This explains what it means to be common and what it means to be a brand.
• This has a three-factor test.

1. Explanations and examples: Provide definitions and explanations of the terms common and brand.

This helps to eliminate the bias and differentiate between the two.

2. Minor test: This is used to verify with the consumers their understanding of the first test by further asking for examples from them to explain the products.
3. Major test: Here, they ask the consumer to classify what they understand between the two:

The trademark in issue and the distinction between the identical marks and identical terms.

Thermos Survey

• This survey is less popular than the Teflon survey and is related to the brand name Termos and the product used as a vacuum bottle.
• Here, the survey only talks about how consumers would approach the market and what questions they would ask to acquire the product.
• Will they refer to the product with a brand name or with the name the product was originally intended to be used for?
• Then, based on that, the trademark genericide is decided.
• So basically, if the product category is defined for acquiring the product rather than the brand name Termos, then under such situations, the product has become generic and otherwise not. 
• However, the loyalty factor, as seen in Teflon, is absent in this survey.

The occurrence of trademark genericide  

Trademark genericide occurs when consumers use the registered trademark too often with a similar product or service instead of the specific one of the source trademark. This is the reason why when a trademark becomes too common, it loses its protection under the law, and the registration of the same is aborted.

For example, let’s take escalators, which have been too common to refer to by that name instead of referring to it as a “passenger conveyor.”

Products are often termed as the by-product when the brand name becomes so dominant in the market. The customers start to associate it what the companies are offering for sale.  

The evolution of technology and concentration of the market with different products offered by the famous and non-famous brand have changed the whole strategies on how a trademark can be protected from dilution.

How trademark dilution can lead to trademark genericide

By now, we know that trademark dilution occurs when the famous mark is used by any third party without the source trademark holder’s authority, diminishing its strength. This led to the loss of uniqueness and how consumers refer to the products and services in the market, even in unrelated contexts.

But did you know that even trademark dilution can lead to trademark genericide? Yes, it is possible. The trademark brand of Aspirin that we saw in the Bayer’s Co. case (supra) is the prime and classic example of how trademark dilution can lead to trademark Genericide.

This genericide was possible because the trademark Aspirin became so widely popular that instead of perceiving it as the exclusive product of Bayer’s Co., consumers started perceiving all related products of pain relievers as Aspirin. This whole saga led to the loss of association with the exclusive product of the Bayers Co., in turn leading to the loss of uniqueness and distinct characteristics of the trademark (it became generic and incapable of distinguishing it from a specific brand).

Another example is, let’s say, cell phones or yo-yos, which were once owned by reputed companies, but due to becoming well-known brands, consumers started associating the products with similar products or items in the market, thus losing their exclusivity and the rights to protection.

Despite the trademark owner’s efforts, consumers in the marketplace still refer to the brand trademark to associate with any general products.

Let us understand how trademark dilution factors lead to trademark genericide with the help of a few cases:

Xerox case (1982)

Significance of the case

• In Xerox Corp. v. County of Harris (1982), it shows a classic case of how the products or services of Xerox Corp. became a megabrand when the word ‘Xerox’  was used as descriptor ‘verb’.  The brand became the only way through which consumers started referring to it for a certain type of product. In this case, the consumers started referring to the brand as Xerox 914, first plain paper photocopier (product of Xerox Corp.).

• Xerox Company (photographic paper and equipment) was established in 1906, and from that year to 1961, many changes in the trade name were adopted by the company to signify the status of the products they were selling. This was done for consumers so that they are easily able to distinguish the products from the competitor’s products.
• This case is related to the Xerography (dry copy) 914 machine, which became the standard for photocopying (gaining popularity as an act of photocopying) 
• This turned the brand name into an entirely new word and introduced it to the risk of Genericide. This is because Xerox company was aware of the misuse of its name (Xerox).
• Efforts were made to protect the trademark Xerox from getting diluted by its use in the marketplace.
• The company even did advertising and ran a campaign to make the general public aware of the use of word photocopying instead of Xerox (doing damage control).
• However, it remains a prominent name in the marketplace rather than a photocopy.
• Despite this, Xerox has not yet become generic in the public eye.

Google v. Elliott case (2014)

Significance of the case

• In Google Inc. v. Elliott (2014), this case signified that using the verb automatically does not amount to a trademark becoming a generic term.
• After this case, major changes were seen in how companies used the strategies to protect their mark from being in the hold of genericide.
• Even Google itself started taking advantage of social media branding by focusing on the language and verb aspects that take place in customers’ daily lives.
• Other companies, like Twitter and Facebook, have also used this algorithm to stay prominent in public lives. 

Facts of the case

• Google, a popular search engine as we know it today, filed a complaint with the National Arbitration Forum – provided by ICANN (which we discussed earlier). 
• David Elliott and Gillespie (who purchased 763 domain names) claimed that Google should be announced as a generic name because now it is widely recognized as an act for ‘search’ on the internet.
• They claimed Google violated 15 USC 1064 of the Lanham Act and called for the cancellation of the Google registration (based on the Teflon survey, expert reliability, and legal dictionary).
• However, the case went in favor of Google by order of the U.S. District Court (based on the Teflon survey).

Issue involved in the case

• It was regarding the usage of the Verb when dealing with the generic nature of the mark.
• Ignoring the evidence presented by Elliott that Google has turned to a generic name as consumers refer to ‘searching the internet’ with the term Google.

Judgment of the Court

• The U.S. Court of Appeals for the Ninth Circuit upheld the U.S. District Court’s decision based on the Lanham Act provisions.
• The Court stated that for a genericide claim, the alleged trademark should be associated with the source trademark’s products and services.
• The Court also stated that the use of verbs does not signal that the trademark has become generic. This is because what search engine the consumers are going to use for the ‘search,’ remains in question.
• For the second question in issue, the Court relied on the Google survey, which presented evidence that proved; how their brand is much more capable of non- genericide.

The changes after Elliott’s case

According to the author, there is no doubt that the Elliott case granted the opportunity to the trademark owners to make the branding strategies for their trademark in the marketplace, but the very purpose of the trademark genericide protection as established in the case defects the purpose of the trademark protection law if we look at trademark protection solely as a property right (protecting consumers from confusion regarding the products and the services). 

However, the property rights of the trademark can protect the brand from trademark genericide. Let us understand this through the McDonald’s case.

McDonald’s case (1988)

Significance of the case

• In Quality Inns Int’l Inc. v. McDonald’s Corp. (1988), it was established by the U.S. District Court, Maryland, that the trademark protection law is a way through which the trademark owner can guard their brands regardless of consumer confusion. 
• According to the Court for protection of a trademark, the likelihood of confusion by customers is of no importance. This is purely based on the fear of the trademark owner in the hoard to safeguard their brands from becoming nouns.
• The Court decided the verdict based on a survey presented by both parties’ counsels as evidence of whether or not the prefix “Mc” had become generic or not.
• From the survey evidence, it was established by the Court that the prefix was associated with McDonald’s by the general public in some way or another, and the court granted McDonald’s the exclusive use of the rights, depending upon their branding strategy.
• This case was regarding the “McSleep” term used by Quality Inn for their chains of hotels.

How to prevent trademark genericide and protect the rights

The following steps can help prevent trademark Genericide.

• The brand name should be used along with the descriptive terms. For example, Hygenex is a trademark name, so Hygenex disinfectant wipes can be used alongside the trademark name.
• Trademark holders should actively monitor any unauthorized use of their products and services and prevent dilution to avoid the risk of genericide.
• ‘Trademark notices’ can be used in documents to show the difference, and no alterations or modifications should be made to the trade name or trade dress. This will help to avoid acceptance for misuse.
• Trademark owners should take leverage of advertising (category advertising and how products or services are used) and public relations, thus preventing the brand name from falling within the ambit of the generic name.
• Trademark owners should create the company’s guidelines for using the products.
• The trademark name should not be used as a verb. It should always be used as an adjective during marketing campaigns. 
• If a trademark infringement occurs, legal steps should be taken to address the issue, and for defending the same, survey research should be relied upon. 
• Companies should adopt marketing strategies with caution; otherwise, it can backfire and cause trademark genericide as well.
• One can also ask for the registration cancellation of the trademark that has become generic.
• Despite such factors, sometimes it becomes difficult to control the trademark from tuning into genericity.

International protection of trademarks

In addition to the protection provided by US laws, trademarks can also be protected internationally. This is done through several international treaties and conventions, such as the TRIPS Agreement by the WTO, the Paris Convention, and the Madrid Protocol.

These international treaties and conventions protect trademarks in many countries. This can be a useful tool for businesses and organizations that are looking to protect their mark internationally. In this article, we will provide an overview of these two (PC and MP) treaties. 

Paris Convention

Brief about the Paris Convention

The Paris Convention for the Protection of Industrial Property, 1979 (PCPIP) is an International trademark law adopted in 1883 to help artists and creators protect their work in other countries as well. This is applicable for trademarks, patents, industrial designs, services, and trade names and marks as well as for curbing unfair competition. It is governed by WIPO.

Significance of the Paris Convention for trademark protection

• According to this, a trademark is a symbol that helps to differentiate one company from the others in the marketplace by enabling owners to have exclusive rights over the products and services that they offer to consumers.
• Foreign trademark owners receive the same treatment for the protection of their trademark as they do in their home country.
• Registration of a trademark in a domestic country is of utmost importance for availing of its protection in a foreign country. This then turns into an independent mark. 
• Even if this is filed for registration in a foreign country, it cannot be refused or invalidated based on the fact that it is ineffective in the origin country.
• Article 6(3) of the convention further states that a trademark registered in one’s domestic country is eligible for protection and recognition in the contracting country as well.
• The main thing to keep in mind is that such actions should not infringe upon the rights of others in contracting countries.
• Upon request (5 years) or automatically, the trademark registration can be canceled if the trademark winner does not comply with the law. 
• Based on the domestic law of one’s country, equal rights to the foreign trademark are provided, and there is no need to extend the protection beyond borders.
• Every country has different requirements for such use, including proof of commercial use and its significance within their territory.
• However, although the convention’s principles clash with domestic law, it can sometimes happen that the trademark does not receive equal protection in a foreign country.

Madrid Protocol 

Brief about the Madrid Protocol 

The Madrid Protocol was adopted in the year 1891, which established the Madrid Agreement for International Registration of the Marks in 1989– 

According to this treaty, filing for the registration of the mark in several countries by obtaining a sole registration applicable in all contracting countries (unified system) is possible. One single registration serves as proof of trademark protection in foreign countries.

Significance of Madrid Protocol for trademark protection

• It is cost-effective and efficient.
• One application filing with one office, one language, and a set of fees is done without any help from any agent.
• The question regarding the burden of protecting the registered trademark lies with the contracting countries.
• WIPO International Bureau oversees the request for trademark registration, renewal, and other documentation processes. 
• Application for registration is according to the Regulations, 2023. 
• According to the Madrid Protocol, the fee structure, 2023 is applicable as such.
• The basic fees are according to Article 8 (2) (i) and for the absence of mark representation in color, they are payable according to the currency of Switzerland (Swiss francs 653 and 903), respectively.
• Other supplementary, complementary, and individual fees for international registration are governed by this. 

Protecting your trademark

Here are some ways in which you can protect your trademark from dilution.

• Take proactive steps to ensure that your mark is not being used in a way that could potentially dilute it.
• Step one: Register your trademark with the USPTO. This provides you with legal protection against infringement and dilution. In addition, you should also monitor your mark for any potential uses that could potentially lead to dilution.
• Step two: You should also ensure that your mark is widely recognized and associated with your product or service. This can be done through marketing and advertising efforts, as well as by ensuring that your mark is properly displayed on all of your products and in all of your advertising materials.
• Final Step: You should also consider taking legal action against any potential infringers or diluters of your mark. This can be done through either a cease and desist letter or, if necessary, a lawsuit.

Conclusion

What quality of products and services you offer to your customers leaves a long-lasting impression on generations. Mouth publicity is something a business or an organization receives when the trademark becomes an iconic brand in the public eye, keeping it on a pedestal of success and economic reforms for one’s country. Therefore, registration and protection of one’s trademark should always be kept in mind when you put your foot in this competitive environment of trade commerce. 

Trademark dilution not only impairs the status, reputation, and image of the source or original trademark of a business or organization in the marketplace but also creates a negative mental image in the consumer’s consciousness for a famous brand when associated with the alleged, derogatory trademark revolving in the marketplace.

For trademark protection from dilution, both the elements of fame and confusion regarding the source mark are of utmost importance for claiming relief under the US laws, apart from other considerable factors that are discussed.

Being vigilant, whether you are a country, state, consumer, or business organization, can help to keep the infringer at bay, and what better place to start than your efforts for discipline, knowledge, and keeping up-date with the changing trademark environment requirements.

Frequently Asked Questions (FAQs)

What is trademark dilution in the U.S.?

When there is an unauthorized use of a famous trademark by a third party, and the impact of such an unauthorized use weakens the distinct quality and tarnishes the reputation of an iconic mark, then such is referred to as trademark dilution. Here, only famous marks are protected from trademark dilution.

How is trademark dilution different from trademark infringement?

Dilution and infringement are different from each other in one aspect. 

• Dilution aims to preserve and protect against the harm that is caused due to the loss of distinct character and reputation, regardless of confusion of competition of a famous mark.
• Infringement, on the other hand, occurs when identical or similar marks are used on similar goods or services to the mark in question.  

What is required to establish a claim of trademark dilution?

To establish a claim for dilution in the U.S., the element of eight factors is necessary, along with proof of evidence regarding the harm caused and the mark in question has to be famous.

What types of dilution are recognized under U.S. law?

The U.S. Law recognizes two forms of dilution, with the newest in the entry, thus making it three forms of dilution.

• Cybersquatting- This occurs when the usage, sale, or registration of the domain name of the source mark is made by the third party to gain profits from the reputation and goodwill.
• Blurring- This occurs when the source mark of the goods and services is hard to recognize from the challenged mark for the goods and services in the marketplace. 
• Tarnishment- occurs when the source mark suffers the negative impact (mental element) in the consumer’s mind and when harm has occurred to the goods and services of the source mark. 

What remedies are available to combat cybersquatting and trademark dilution in the U.S.?

The legal remedies available are:

• To file a complaint under the Anticybersquatting Consumer Protection Act (ACPA) or the Lanham Act.
• Civil remedies such as injunctions, damages, or transfer of an infringing domain name to the rightful owner are possible.

What are remedies available for trademark dilution?

When there is proof of evidence regarding the trademark dilution, the trademark owner has the following options under U.S. law.

• Injunctive relief- order of prohibition for continuing dilution activity.
• Damages- compensation for the harm caused.
• Defendant’s profits claim- from the usage of such diluting activity.
• Court order- for the destruction of diluting products and services or for cancellation of the defendant’s trademark registration.

How can I determine if someone is engaging in cybersquatting on my trademark in the U.S.?

To detect such activity, you should do regular searches of the domain names that are identical or similar to your trademark. Furthermore, it is advisable to monitor online platforms, social media accounts, and e-commerce websites for unauthorized use of your trademark to help identify such activity. 

Can a trademark be diluted by completely unrelated products or services?

Yes, in U.S. law, this can be possible based on the blurring and tarnishment aspects of the dilution.

Can I prevent cybersquatting and trademark dilution in the U.S. by registering my trademark as a domain name?

Yes, registering your trademark as a domain name can be a proactive step to prevent these activities. These provide additional security and reduce the risk of misuse by the cybersquatter.

References

• https://digikogu.taltech.ee/et/Download/36c9b527-77d9-4f86-b19c-862f7cf5a330/TuntudkaubamrkidekaitseAmeerikahendriikide.pdf
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/berktech23&section=23
• https://blog.ipleaders.in/doctrine-of-laches-a-comprehensive-analysis/ 
• https://heinonline.org/HOL/LandingPage?handle=hein.journals/valr83&div=26&id=&page= 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/indana80&section=44 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/wisint15&section=15 
• https://www.jstor.org/stable/1600604
• https://www.jstor.org/stable/1192072
• https://www.jstor.org/stable/23561268
• https://www.jstor.org/stable/3312976
• https://www.jstor.org/stable/1192071
• https://www.jstor.org/stable/26377549
• https://www.jstor.org/stable/4099351
• https://www.jstor.org/stable/26667679 
• https://www.jstor.org/stable/30000717 
• https://www.jstor.org/stable/1251279  
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/sccj24&section=30 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/frdipm9&section=20 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/ncjl8&section=11 
• https://www.jstor.org/stable/1192071 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/sethlegj18&section=19 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/frdipm7&section=14
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/hoflr46&section=29
• Mukhtar S, Zainol Z, Jusoh S.,  Civil Procedure of Trademark Enforcement in Pakistan: A Comparative Analysis with Malaysia and USA.
• Ghose A, Aamir Ali S, Dynamics of trademark Dilution: Issues and Challenges in India and USA.

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.