Trademark in the U.S. is generally a consumer protection used to associate a mark or term with the originator of a product or service.
Introduction — Traditional Trademark Law
A trademark, or mark, is essentially a name, logo or symbol that distinctively identifies a company as the source of a product or service. Traditionally, Congress has framed the discussion of trademark policy around informing and protecting consumers: by providing limited legal protection for the somewhat exclusive use of a trademark, a company can associate itself with a trademark, one that consumers can rely on to know the origin of a product or service within a certain market. Because consumers can rely on this association that ties a mark and a company together, they can generally rest assured that when they buy or use a product with a given name, they will not be confused about who created it.
This balance of protection between consumers and trademark holders is what makes trademark policy different from copyright and patent policy, which traditionally is seen as limitedly protecting owners of an expression or idea in an effort to promote dissemination to the public.
Trademark Dilution Theory
Trademarks are limited in that they generally must be in use to maintain their protection, and they are applied on a per-market basis. Since the overarching goal of trademark is preventing consumer confusion, one must consider if consumers can differentiate between different, sometimes competing, markets for products and services. Traditionally, trademark law has not necessarily protected a mark in one market over the same mark in another market. This allows multiple companies to use the same mark, like “United,” for different markets of products or services without infringing upon the other’s mark; this is how both United Airlines and United Dry Cleaners can exist, both using the mark “United.”
The theory of dilution changes traditional trademark law by asking if the use of a mark, even in non-competitive markets, causes the mark to lose its association with a singular source or company, regardless of consumer confusion. Dilution drastically shifts the focus of trademark policy from consumer protection to trademark holder protection, making it more akin to copyright or patent protection. Regardless, dilution was introduced into U.S. law in 1996, under the Federal Trademark Dilution Act (FTDA).
In 1998, Victoria’s Secret Catalog, a women’s lingerie catalog, used the FTDA to sue Victor’s Little Secret, a store that sold a “wide variety of items, including men’s and women’s lingerie, adult videos, sex toys and ‘adult novelties,’” claiming a dilution of famous marks. The case, known as Moseley v. Victoria Secret Catalogue, was appealed all the way to the U.S. Supreme Court, where Public Knowledge, EFF, and Adbusters asked the Court in their amici curiae brief to interpret the FTDA narrowly, in order to slow the “relentless creep of trademark law.” The brief argued that, “Trademark law maintains the balance between consumers and trademark holders by affording the latter only limited control over the use of protected marks.” Respect for this balance is what limits the rights that trademark holders enjoy and distinguishes intellectual property rights from real property rights. The brief went on to stress to the Court that if it interpreted the FTDA broadly it would injure this balance by “effectively expanding trademark protection to afford a semblance of monopoly” in famous trademarks. If the Court had found that the FTDA mandated that any mark likely to cause dilution of a famous mark should be enjoined, the rights that famous mark holders enjoy would lose their limitations and grow that much closer to a right in real property.
Fortunately, The Court chose to interpret the FTDA narrowly. The Court held that in order to prevent another’s use of a mark under the FTDA, a trademark holder must show that actual dilution has occurred. The Court also suggested that because the FTDA only referred to “dilution of the distinctive quality of a trade name or trademark,” and did not refer to “injury to business reputation,” trademark holders should only succeed in dilution claims that demonstrate actual blurring rather than tarnishment. While this holding did not eliminate all of the damage done by the enactment of the FTDA, it represented a limitation of the rights of famous mark holders that maintained at least a semblance of a distinction between the rights of intellectual property rights holders and the rights of real property owners.
The Trademark Dilution Revision Act of 2005
“The Trademark Dilution Revision Act of 2005,” or H.R. 683 was introduced by Representative Lamar Smith, Chairman of the Subcommittee on Courts, the Internet, and Intellectual Property of the House Judiciary Committee in early February, 2005. The bill received a hearing in March and was amended by Representative Howard Berman when it was marked up in Subcommittee. Public Knowledge is concerned that the issues addressed at the hearing were not sufficiently addressed, and the bill could negatively impact free speech, small business commercial speech, and repurpose traditional trademark law to protect business interests over instead of consumers.
Dilution was originally codified in order to prevent the use of marks like DUPONT shoes, BUICK aspirin, and KODAK pianos. However, a mark does not to be identical to a famous mark to be enjoined. A mark need only be “similar.” Thus, it is quite possible that courts will enjoin KADEK pianos, BIECK aspirin and DOPUNT shoes as well.
Although this is also the case under the current statute, H.R. 683 allows famous mark holders to succeed by showing only “a likelihood of dilution” and thus makes injunctions and litigation generally much more likely. Existing small businesses and potential future businesses will be severely limited when choosing how to market their products and refer to themselves.
The bill made it much easier for trademark holders to receive court injunctions against another whose use of a mark is:
likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
Public Knowledge worked with Public Citizen, ACLU, and the EFF to write an exclusions provision to allow for fair and non-commercial uses. However, The weak dilution standard still persists, and because of where the exclusions were placed in the bill, a bigger question of whether the exclusions of fair use, et al, will apply to the whole of trademark law.
