Differences Between Trademark Infringement and Trademark Dilution

Trademarks — which are the use of words, symbols, logos, or phrases to identify a particular manufacturer or seller’s product — were solely the province of the states until 1870, when the U.S. Congress passed a nationwide trademark law. That law was almost immediately struck down by the Supreme Court based on the commerce clause of the U.S. Constitution.

Congress kept at it with new versions of nationwide trademark protection in 1884 and 1905, but it wasn’t until 1946 and the Lanham Act that the U.S. Patent and Trademark Office (USPTO) was created to complete the process.

To this day, states still maintain copyright laws that reside alongside and are sometimes at odds with federal protections.

What if you believe that your enterprise’s trademark has been violated? What are your rights, and how do you exercise them?

If you are in the San Francisco area, or nearby in San Jose, Santa Clara, Oakland, or San Mateo, you should immediately contact the Law Offices of David H. Schwartz, INC. Business litigation attorney David Schwartz has 45 years of experience in defending trademarks, trade secrets, and fighting unfair competition.

Use of Trademarks

The first thing to know is that the earliest user of a trademark is the one who retains the right to use that trademark for his product. Two types of trademarks exist — common law and registered.  A common law trademark often will be accompanied by the symbol. A trademark registered with the USPTO can use the ® symbol. Both are protected by law whether or not the symbol is used.

In order for a mark to serve as a trademark, it must go beyond being generic and become arbitrary or fanciful (e.g., Apple computers), suggestive (e.g., Coppertone), or descriptive (e.g., Holiday Inn). Generic terms, in other words, cannot become trademarks without acquiring a secondary meaning.

Common law trademarks are initially limited to the area in which you market your product. If you sell Big Mike Lager only in the Northeast, brewers in other parts of the country are entitled to use the same mark.

Registering with the USPTO, however, enables you to assert nationwide rights, providing someone else is not already using the same mark in a particular geographic area, where they would retain that right. Here you can see how easy it can be for regional disputes to arise. Registered marks also become “incontestable” after five years with the above limitation.

For infringement to occur on your trademark, a competing trademark must cause a “likelihood of confusion.” Registration allows a registered party to bring an infringement suit in federal court and potentially recover damages, attorneys’ fees, and other remedies.

Infringement vs. Dilution

Unlike infringement, the likelihood of confusion is not the legal standard when it comes to trademark dilution. Dilution lawsuits can be brought under both state and federal law, depending on the type of trademark. Federal law requires that the trademark be “famous,” and that the use of another trademark will cause either “blurring” or “tarnishing” of the older mark.

Blurring means that the original trademark is losing its distinctiveness by the appearance of a new mark that offers goods or services different from the older mark. Tarnishing means the original mark is losing value by being associated with inferior products, or even with seedier products. Toys ‘R’ Us won a famous lawsuit against a pornographic studio that used its mark in one of its video productions.

Congress amended the Lanham Act in 1996 to include trademark dilution, but confusion ensued. It then passed the Trademark Dilution Revision Act (TDRA) in 2006 in an attempt to end conflicting interpretations of blurring and tarnishing by courts nationwide.

Remedies under federal law for trademark dilution are generally limited to injunctive relief – an order stopping the use of the diluting mark. However, if the plaintiff can show that the defendant willfully sought to trade “on the owner's reputation or to cause dilution of the mark," then the same level of monetary and other damages under infringement violations becomes available.

In many cases, state trademark dilution law existed before the federal statute was amended to include dilution, but federal law prohibits states from applying their standards to federally registered trademarks. States do not require trademarks to be famous, but they also generally do not include a provision for monetary damages.

Rely On a Skilled Trademark Attorney for Help

The costs in a trademark dispute, both economic and reputational, can be costly to the owner of the mark. You must defend your trademark vigorously, whether it’s being infringed upon or diluted through blurring or tarnishing.

Business litigation attorney David Schwartz has been defending businesses and their trademarks for nearly half a century. If you’re in or around the San Francisco Bay and adjoining areas, contact the Law Offices of David H. Schwartz, INC today to begin the trademark protection process, whether it involves negotiation, mediation, legal action, or all three.


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