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NEW TRADEMARK LAW
Both the House and
Senate have passed a new Trademark
Anti-Dilution law and President Bush
reportedly is likely to sign it.
The new law will apply to the
sub-category of trademarks that are
deemed “famous”.
It is a significant
burden to establish that a trademark
has become famous for purpose of
protection against dilution. It
requires more than a showing of
distinctiveness. It must be a mark
that has been heavily advertised or
achieved widespread acceptance
within the minds of the consuming
public. For example, Starbucks has
become a famous mark. Its fame is
not limited to coffee.
Trademark
anti-dilution protects the owner of
a famous mark from uses that dilute
or lessen the mark’s unique and
distinctive character, regardless of
whether or not there is a
“likelihood of confusion”.
(Likelihood of confusion is normally
the essential element that must be
proven in a trademark infringement
case.) Anti-dilution accordingly
protects the mark from the use or
adoption of marks used for
completely unrelated goods or
services.
It has been reported
that the new law arose from the 2003
Supreme Court decision in Mosely
(Victor’s Little Secret) v.
Victoria’s Secret Catalogue case.
The Supreme Court determined that
there must be actual proof of
dilution, i.e., a lessening of the
capacity of the famous mark to
identify and distinguish goods or
services. A likelihood of dilution
was determined to be insufficient to
obtain legal protection.
The new law reverses
the Supreme Court decision. It
expressly permits injunctive relief
against an owner of the non-famous
mark based upon a likelihood of
dilution. The dilution can be by
“blurring” or by “tarnishment” of
the famous mark. Blurring is use of
the mark or similar mark in
unrelated goods or services.
Tarnishment is associating the the
famous mark with an unsavory product
or service.
October
3, 2006
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