In a previous post, I mentioned that there are two common ways in which a trademark holder’s rights can be infringed: direct infringement and dilution. Direct infringement occurs when one person uses another person’s trademark in a way that is likely to confuse the public as to the source of a particular good or service. Dilution, on the other hand, occurs when a trademark loses its distinct reference to one specific brand and starts representing a broad, or even unsavory, range of unrelated goods and services.
Dilution occurs when a famous or distinctive mark is used in a way that would weaken the uniqueness that makes the mark valuable to its true holder. Dilution usually involves two completely unrelated types of goods or services, so confusion is not a concern. Take, for example, a McDonald’s restaurant, and a hypothetical hardware store bearing the same name. There is no likelihood that a consumer would confuse a hardware store and a fast-food restaurant. The restaurant might have a concern, though, that the hardware store’s use of the McDonald’s name might weaken the uniqueness of that name in relation to the singular association with it that the company seeks to promote: when you hear “McDonald’s,” the restaurant wants you to think of Big Macs and fries, not hammers and nails. The hardware store’s use of the “McDonald’s” name might therefore dilute the strength of the McDonald’s trademark.
There are two types of trademark dilution: blurring and tarnishing. Blurring occurs, as in the hardware store example above, when a mark becomes used in a way that, quite literally, dilutes the strength of the mark. If, for example, a hardware store, a clothing retailer, an auto repair chain, and an accounting firm all operated separately but under the same “McDonald’s” name (or some variation thereof), there would be no likelihood of confusion, but the strength of the McDonald’s name would certainly be blurred and diluted, making it much less unique and effective for the fast-food company. Holding the trademark allows McDonald’s to maintain and protect the uniqueness of its name.
Tarnishing occurs when a secondary use of a trademark could lead to an unflattering or unsavory association with the mark. Since trademarks serve to protect the reputation and goodwill a brand has developed, a secondary use of that mark that damages the positive associations that have attached to the mark could be a “tarnishing” of the original mark. In a recent case out of the Sixth Circuit, the court found that an “adult novelty” store called “Victor’s Secret” had tarnished the “Victoria’s Secret” trademark. The names were so similar, the court concluded, that the sexually explicit adult-toy store’s use of the name would create “unfavorable sexual associations” for the global lingerie retailer, thus diluting its trademark through tarnishing.
Trademarks protect both consumers and businesses. A strong trademark can allow a company to control the image and connotations associated with its name, and ensure that its goodwill and reputation is maintained. And a strong trademark lets consumers know exactly what they’re getting. What a trademark is diluted through blurring or tarnishing, the trademark’s protection is undermined and its purpose defeated.
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