The Trademark Dilution Revision Act of 2006: Prospective Changes to Dilution Definition, Claim Analyses, and Standard of Harm

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The trademark is one of the most valuable marketing tools used today in the United States. (2) Famous, nationally renowned trademarks are often synonymous with multi-billion dollar industries. (3) Trademarks promote marketing by communicating product source, quality, and desirability to consumers. (4) Federal laws provide two primary types of trademark protection. (5) First, traditional trademark infringement laws prohibit junior use of similar trademarks on competing goods which may lead to consumer confusion. (6) Second, for only the most famous trademarks, anti-dilution law prohibits junior use of similar trademarks on competing or non competing goods, regardless of consumer confusion. (7)

Trademark dilution theory is one of the most contentious aspects of trademark law. (8) Although Congress enacted the Federal Trademark Dilution Act ("FTDA") in 1996, courts struggle to interpret the statutory language. (9) The definition of dilution is unclear, and the appropriate standard for injunctive relief is hotly contested. (10) Additionally, no uniform framework for litigating dilution claims exists. (11) The Supreme Court's 2003 edict on trademark dilution in Moseley v. V Secret Catalogue, Inc. did little to quell disputes because the Court only addressed the standard of harm necessary for injunctive relief. (12) Recently, in response to the Supreme Court's interpretation of the FTDA in Moseley, Congress proposed an overhaul of the trademark anti-dilution law. (13) Presently, Congress appears close to enacting the Trademark Dilution Revision Act of 2006 ("TDRA"). (14)

This note evaluates whether the proposed TDRA provides beneficial alternatives to the current definition of dilution, methodologies for analyzing claims, and standard of harm necessary for injunctive relief. Part I provides an overview of trademark law and historical highlights of trademark dilution, including the emergence of blurring and tarnishment theories. Part II investigates the inherent weaknesses of the FTDA definition of dilution, explores courts' various methodologies for analysis of dilution claims, and explains the interpretations of the standard of harm necessary for injunctive relief. Part III explains the Supreme Court's interpretation of the FTDA and identifies statutory language changes made by the TDRA in the three areas of dilution law explored in Part II. Part IV discusses the prospective impact of the TDRA in the three areas highlighted in Part II. Part V concludes the TDRA effectively addresses the need for a clear definition of dilution and analytical framework, and presents a pragmatic standard for injunctive relief.

I. Overview Of Trademark And Dilution Law And Evolution Of Trademark Dilution Law

A. Overview

Trademark laws regulate identification of goods and services. (15) A trademark is a "word name, symbol, or device" that identifies and distinguishes goods. (16) A trademark communicates the origin and ownership of goods to consumers. (17) Through personal experience or advertising, consumers associate trademarks with the quality and brand reputation of affiliated products. (18)

Trademark infringement laws protect consumers from deceptive marketing practices and trademark owners from unfair competition. (19) The basis of a trademark infringement action is the likelihood of consumer confusion arising from use of similar trademarks on related consumer products. (20) Trademark owners may seek relief under trademark infringement laws if they can prove consumers may be confused as to the identity or source of the affiliated goods as the result of improper junior use of their trademark or a similar version of their mark.

Federal anti-dilution law was developed to address a gap in the infringement statute, situations where unauthorized, junior trademark use exploits the goodwill of famous marks, but does not result in a likelihood of consumer confusion. …