Trademark dilution is a scenario where a potential infringer offers dissimilar services compared to the trademark owner. In this scenario, a trademark owner is concerned consumers will assume the dissimilar service originates from the trademark owner. Dilution claims will only work for famous trademarks. At least it is very unusual for a non-famous trademark to enable a successful dilution claim.
In order for a trademark dilution claim to succeed a plaintiff must prove the allegedly infringing use will create a likelihood of confusion in consumers that the new product is offered by the owner of the original trademark. This will be highly unlikely if the trademark is not well-known. However for famous trademarks it is very likely as consumers will recognize the name.
Jurisdictions will differ exactly how strong a trademark must be to triumph in a dilution claim. Requirements range from being distinctive to famous to unique. Good examples of famous trademarks would be Coca-Cola, Microsoft, or Burger King as they are instantly recognizable. Trademarks which are unique names, such as Google, are viewed to be stronger than a surname, such as McDonalds. In the United States a baseline of national awareness was established by the Trademark Dilution Revision Act of 2006 (In this respect McDonalds is extremely well-known nationally so its surname status is not as important).
Like the standard for likelihood of confusion in traditional trademark infringement cases, actual dilution of a trademark does not have to occur. A plaintiff has to prove dilution of the trademark is likely. The two marks at issue do not need to be identical, or even substantially similar. Recent cases, one involving Starbucks and the other Levi Strauss, established this precedent. Like any other lawsuit, it is important for a potential plaintiff to discuss his or her options with an attorney.
If you want to initiate a lawsuit for trademark dilution or are being sued for trademark dilution, you can contact Stone Law at 732-444-6303 or leave us a message on our website.