Four Things To Know About Trademark Dilution Claims
Brand matters. A trademark is one of the most powerful branding tools that businesses and entrepreneurs have at their disposal. Many are aware that they can file a trademark infringement claim against another party that uses their protected mark without authorization. However, many are unaware that they may also have a similar (but distinct) claim if another party “diluted” the value of their famous mark. In this article, our Florida brand protection attorney highlights four key things that you should know about trademark dilution claims.
- Trademark Dilution is the Unauthorized “Weakening” of a Protected Mark
Trademark Dilution Act of 1995 is a federal law that provides additional legal rights and protections to parties that have a famous trademark. As explained by the United States Patent and Trademark Office (USPTO), trademark dilution occurs when unauthorized use “diminishes the strength or value” of a federally protected trademark by “blurring” its distinctiveness or “tarnishing” the brand’s image.
- A Party May Have a Dilution Claim With or Without an Infringement Claim
A trademark dilution claim is a wholly separate claim from a trademark infringement claim. To prove trademark infringement, a plaintiff must prove that the unauthorized mark is “confusingly similar.” This is not required in a trademark dilution claim. Further, these claims are not either/or legal actions. A party may file both an infringement claim and a dilution claim simultaneously. Alternatively, a party may take legal action solely to stop trademark dilution.
- Fame is a Required Element in a Trademark Dilution Claim
To bring a trademark dilution claim, a plaintiff must have a “famous” mark. Under federal law, it is not possible to prove that a mark’s value has weakened due to blurring or tarnishment unless that mark is reasonably well-known in the first place. In this context the mark must be widely known by the general consuming public to be considered famous. To be clear, national recognition is not always required. It may be possible for a trademark to have fame in a particular market.
- Plaintiffs May Seek Remedies for Trademark Dilution (Most Often an Injunction)
Under federal law, plaintiffs have a right to seek a remedy against trademark dilution. In these cases, an injunction is the primary legal remedy. In effect, an injunction is a court order that compels the offending party to refrain from any further conduct that would dilute the protected trademark.
In some limited cases, financial compensation may be available for trademark dilution. As a general rule, the plaintiff needs to prove “willful dilution” on the part of the defendant(s) in order to be entitled to recover monetary damages.
Consult with a Brand Protection Lawyer in Southeastern Florida
At Perkins Law, our Florida brand protection attorney is a solutions-driven advocate for clients. If you have any specific questions or concerns about trademark dilution claims, we are here to protect your IP rights and commercial interests. Call us now or connect with us online to set up your fully confidential case review. We help companies establish and protect their brand throughout South Florida, including in Palm Beach County, Broward County, and Miami-Dade County.