Academic journal article Santa Clara High Technology Law Journal

Trademark Dilution: Of Fame, Blurring, and Sealing Wax, with a Touch of Judicial Wisdom

Academic journal article Santa Clara High Technology Law Journal

Trademark Dilution: Of Fame, Blurring, and Sealing Wax, with a Touch of Judicial Wisdom

Article excerpt

Abstract

The Trademark Dilution Revision Act of 2006 (TDRA) purported to clarify dilution law. Although it may be too early for a complete assessment, there are initial indications that the result was more than mere "clarification." Instead, the TDRA significantly altered the contours of dilution law and presented courts with a number of new unresolved issues. Some plausible interpretations of the newly "clarified" law, aided by continued judicial skepticism, may cause federal dilution based on claims of blurring to disappear almost entirely, an outcome that I suggest would have some merit.

I. INTRODUCTION

Predicting the impact of Supreme Court opinions and Congressional legislation is challenging. Predictions can be completely inaccurate even when the Court or Congress says it is merely "clarifying" what was already in place. In 1993, the United States Supreme Court decided Daubert v. Merrell-Dow, purporting merely to clarify established law governing the admissibility of scientific evidence. (1) Many scholars and practitioners believe that Daubert's mere clarification in fact had the effect of substantially raising the bar for the admissibility of scientific evidence. (2) The passing of the Trademark Dilution Revision Act ("TDRA") of 2006 represents a similar possibility that substantive change occurred in the name of clarification. Congress claimed to be simply correcting misunderstandings about what Congress intended to do in passing the Federal Trademark Dilution Act ("FTDA") signed into law ten years earlier. (3) It is now a year since the TDRA went into effect, so it is probably too early for a full assessment of the law's impact. Nevertheless, considering the history that led to the TDRA, the legislation itself, and the first cases decided under the Act, there are signs that more than a "clarification" has occurred. The TDRA is likely to ensure that few plaintiffs will succeed with their claims of dilution under the federal statute, although the recent legislation may have changed the contours of that limited success. Moreover, the courts will have to grapple with a number of challenging but unresolved issues in interpreting the newly "clarified" law. At least some plausible interpretations may cause federal dilution based on claims of blurring to disappear almost entirely, an outcome that I suggest would have some merit.

II. THE PLACE OF FEDERAL TRADEMARK DILUTION IN FEDERAL TRADEMARK LAW

Trademark dilution is an oddity within federal trademark law, which may explain its checkered history and the reluctance of many federal courts to sustain claims based on allegations of dilution or likely dilution. The traditional core justification for trademark protection is consumer protection. (4) That is, trademarks efficiently convey information to the consumer about the source of products and services. To the extent that consumers come to see the source of a trademark as providing desirable goods and services, consumers will be motivated to use the trademark as a cue guiding future purchases of both previously purchased items and new items that apparently are put out by, or authorized by, that source. Trademark owners are thereby motivated to invest in the quality of the goods marketed under their trademark to generate good will and future purchases. If a competitor interferes with the cuing function of a trademark by using the same or a confusingly similar trademark to label unauthorized goods or services, the owner of the original trademark can sue for infringement.

To succeed in an infringement action, the trademark owner must show that the defendant's use of a trademark is likely to confuse consumers about the source of the goods or services. (5) Thus, if a producer of denim jeans sells them as "Levy's Jeans" and the makers of Levi's Jeans can show that consumers are likely to think that the Levy's Jeans were produced or authorized by the makers of Levi's Jeans, infringement will be found. …

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