To successfully bring a trademark dilution claim, certain elements must be proven by the claimant. Trademark dilution refers to the unauthorized use of a famous trademark that causes harm to its distinctiveness or reputation. A dilution claim aims to prevent others from using a similar mark in a way that lessens the uniqueness of the original mark.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced firms in trademark litigation. We have designed and critiqued hundreds of consumer research studies across various industries for cases in federal court, state court, the TTAB, the NAD, arbitration hearings, and other specialty venues.
To establish a trademark dilution claim, the claimant must demonstrate that their mark is famous and distinctive, that the defendant’s use of a similar mark creates a likelihood of dilution, and that there is actual harm or likelihood of harm to the distinctiveness or reputation of the famous mark.
Is the Mark Famous and Distinctive?
The first element that must be proven in a trademark dilution claim is that the mark in question is famous and distinctive. A mark is considered famous if the general public widely recognizes it and has acquired significant goodwill and reputation. Distinctiveness refers to the uniqueness and originality of the mark, setting it apart from other marks in the same industry. The claimant must provide evidence, such as sales figures, advertising expenses, and market research data, to prove that their mark meets these criteria.
Is There a Likelihood of Dilution?
The second element that must be established is that the defendant’s use of a similar mark creates a likelihood of dilution. This means that the defendant’s use of the mark will likely impair the famous mark’s distinctiveness or reputation. Factors that may be considered include the similarity between the marks, the degree of similarity between the goods or services offered, and the extent to which the defendant’s mark is likely to evoke or call to mind the famous mark. The claimant must demonstrate that there is a reasonable likelihood of confusion or association between the two marks.
Has the Famous Mark Been Harmed?
Lastly, the claimant must show that there is actual harm or likelihood of harm to the distinctiveness or reputation of the famous mark. This can be demonstrated through evidence of actual consumer confusion, damage to business reputation, or loss of sales or customers. The claimant may also present proof of any negative impact on the value or image of their mark due to the defendant’s use.
Expertise and Analysis
Keegan & Donato Consulting possesses specialized knowledge and experience in trademark law. We can conduct comprehensive research and analysis to identify the strength of your case. Our expertise can help determine the best course of action and provide guidance throughout the litigation process.
Final Thoughts
What must be proven for a trademark dilution claim to succeed involves whether there is a likelihood of dilution caused by the defendant’s use of a similar mark and whether there is actual harm or likelihood of harm to the distinctiveness or reputation of the famous mark. If you face trademark dilution, Keegan & Donato Consulting can provide the consumer surveys you need to prove your case. Get in touch with us today at (914) 967-9421 to learn more about our wide range of affordable services.