Trademark dilution

Glenn W. Peterson

California owners of trademarks have specific rights that are afforded to them under the laws of the United States. These rights protect the owners from having their marks used by others. According to the National Paralegal College, dilution is when the value of a trademark is lessened due to someone other than the owner using it.

It is important to note that dilution is not the same thing as infringement. Infringement is a competitor using a mark without the owner’s permission or using a similar mark that could be confusing to consumers. The key difference is that with dilution confusion of the mark does not have to be proven.

The U.S. Government Publishing Office has made available the text of the Trademark Dilution Act of 2006, which outlines what constitutes trademark dilution. To be afforded the protection against dilution, a trademark must be famous and distinctive. This means it has to be recognizable and well-known.

Dilution can happen in two ways: by blurring and by tarnishment. Blurring occurs when a mark is used that is similar to the real mark and impedes upon the original’s distinctive nature. Tarnishment happens when the person using the mark intended to hurt the reputation of the mark’s owner. In either case, the owner can go to court to seek damages and to stop the person from using the mark.

However, there are some cases where dilution may not be found to have occurred even when a mark or similar mark was used. These include situations where fair use is in play, there was no intention to harm the owner, it was a comparison of goods in an advertisement or any nonbusiness use.