Dilution of a trademark occurs when a third party’s unauthorized use of a famous mark results in tarnishment of its reputation or weakening its distinctiveness. Keegan & Donato Consulting can help you substantiate a claim of dilution.
Keegan & Donato Consulting works on behalf of both plaintiffs and defendants to provide research, analysis, affidavits, declarations and expert reports as needed in support of trademark infringement and trade-dress litigation, and has collaborated extensively on cases involving marketing, business and financial issues.
About Dilution and Tarnishment
Trademark dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
Prior to enactment of the Federal Trademark Dilution Act (FTDA) (15 U.S. Code, Section 1125(c)) in 1996, there was no federal law to prohibit trademark dilution. A U.S. Supreme Court decision, however, decided that owners of famous marks had to provide evidence of actual economic injury in order to prevail.
In 2006, Congress enacted the Trademark Dilution Revision Act (TDRA) to overturn the FTDA decision and amended Section 43(c) of the Lanham Act to define “Dilution by Blurring” and “Dilution by Tarnishment,” and clarify what makes a mark “famous.” The TDRA also provided additional remedies for penalizing an infringing party that is found to have willfully intended to trade on the recognition of or damage the reputation of the famous mark.
Dilution by Tarnishment occurs when an infringing mark damages the reputation of a famous mark by using it in connection with goods or services of poor quality or of an unsavory nature that is likely to reflect adversely upon the trademark owner’s product, such as when selling sex-related products or in the context of drugs or crime.
For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942 (N.D. Ill. 2002), the plaintiff, manufacturer of Velveeta® brand cheese products and owner of the trademark since 1923, sued defendant Stuart Helm, who called himself “King VelVeeda,” a nickname he used on his adult-oriented website which also depicted drug use and paraphernalia, for trademark infringement and dilution.
The court found that the defendant had used the name “VelVeeda” in commerce and that the two similar marks would cause consumers to associate Velveeta® with the defendant’s offensive product, thereby tarnishing the Velveeta® mark and damaging its reputation. A preliminary injunction was entered in favor of the plaintiff.
If you are still debating the value of hiring qualified survey experts in support of your case, consider Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 569-70 – Dist. Court S.D. New York (2007), in which the court excluded the evidence and testimony of all three of the plaintiff’s likelihood of confusion and dilution survey experts and two of the defendant’s three experts on the basis that the surveys were unreliable, plagued by significant methodological flaws, and that “any probative value was substantially outweighed by the danger of unfair prejudice and misleading the jury.”
Surveys that gauge trademark dilution by tarnishment can help ascertain whether an alleged infringement is having a real-world impact on consumers, and Keegan & Donato Consulting can help. Contact us at (914) 967-9421 to learn more.