Trademark Dilution Vs. Infringement: What You Need to Know

Legally reviewed by Thomas Lemler - founder of Lemler IP

Building a successful brand takes time. Unfortunately, as a brand becomes more successful, the likelihood that another party may attempt to capitalize on that success often increases as well. If you own a business and believe another company is using a mark that is too close to yours, you may be wondering whether you’re a victim of trademark dilution or infringement, and whether you have options to protect your valuable intellectual property. Read on and reach out to Lemler IP to speak with a dedicated Washington, D.C. trademark lawyer to learn more about trademark dilution and infringement, and how an attorney can help secure your IP. Here are some of the questions you may have:

What Is Trademark Infringement?

Simply put, trademark infringement occurs when another party uses a trademark in a way that is likely to cause confusion among consumers. In other words, if customers may reasonably believe that another company’s goods or services are connected to your business when they are not, there is a chance that trademark infringement has occurred. When determining whether trademark infringement exists, courts will generally look at several factors, including the following:

• The similarity between the trademarks
• The similarity of the goods or services being offered
• The strength and recognition of the original trademark
• Whether there is evidence of actual consumer confusion
• The marketing methods used by both businesses
• Whether the alleged infringer intentionally copied the mark

What Is Trademark Dilution?

Trademark dilution is somewhat different from trademark infringement because it does not require proof that consumers are confused. In fact, a consumer may fully understand that two businesses are unrelated and dilution may still exist.

Generally speaking, trademark dilution occurs when the use of a famous trademark weakens that trademark’s distinctiveness or harms its reputation. Trademark law recognizes that certain marks become so well known that they deserve additional protection beyond traditional infringement claims.

Note: Under federal law, the standard for “fame” is exceptionally high. The brand must be widely recognized by the general consuming public of the United States, for example, think household names like Coca-Cola, Nike, or Google. Local or niche fame is generally not enough to support a dilution claim.

There are two primary forms of trademark dilution:

Dilution by Blurring

Dilution by blurring occurs when a famous trademark loses some of its uniqueness because it becomes associated with other products or services. Some examples of this may include:

• A famous brand name being used for an unrelated business (such as someone opening a “Rolex Deli” or “Nike Dental Clinic,” which weakens the distinctiveness of the original brands)
• A widely recognized trademark appearing on completely different products
• A well-known company name being adopted by an unrelated organization

This type of use can weaken the public’s association between the famous mark and the original company.

Dilution by Tarnishment

Dilution by tarnishment occurs when a famous trademark becomes connected with products, services, or conduct that may damage its reputation. Some examples of this can include:

• Associating a famous trademark with offensive material (such as printing a wholesome, family-friendly cartoon character on adult novelty items or illegal drug paraphernalia)
• Using a well-known mark in connection with low-quality goods
• Linking a respected brand to activities that create negative public perceptions

Unlike infringement claims, which focus on confusion, dilution claims focus on protecting the value, strength, and reputation of famous trademarks.

How Can Businesses Protect Their Trademarks?

Fortunately, there are several steps businesses can take to protect their intellectual property rights before problems start. Some of the most important steps business owners can take are as follows:

• Registering trademarks whenever appropriate
• Monitoring the marketplace for unauthorized uses
• Maintaining consistent branding practices
• Keeping records of potential violations
• Responding promptly to trademark concerns
• Speaking with an intellectual property attorney

If you have any additional questions about trademark dilution or infringement, or you’d like to get in touch with an attorney who can help protect your brand, please don’t hesitate to contact Lemler IP today.