The Federal Trademark Dilution Act of 1995 gives the owner of a famous mark the right to stop another person’s use of a mark or trade name that dilutes, or weakens, the distinctive quality of the famous mark. To establish a claim for trademark dilution, you must show (1) you own a “famous” mark and (2) the other person’s use has or will cause dilution.
Establishing anti-dilution protection goes beyond simply trademarking a name. The trademark owner must prove the trademarked name qualifies as “famous.” Congress envisioned that marks would qualify as “famous” only if they carried a substantial degree of fame, such as marks that are household words throughout the U.S. The mark’s owner must show his or her mark has become the principal meaning of the word.
Famous Trademarks
In an effort to assist the courts in considering whether a mark is “famous,” the Act provides a non-exclusive list of eight factors that may be considered:
- the mark’s inherent or acquired distinctiveness
- the duration and extent of use of the mark in connection with the goods of services with which the mark is used
- the duration and extent of advertising and publicity of the mark
- the geographical extent of the trading area in which the mark is used
- the channels of trade for the goods or services with which the mark is used
- the degree of recognition of the mark in the trading areas and channels of trade used by the mark's owner and the person against whom the injunction is sought
- the nature and extent of use of the same or similar marks by third parties
- whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
This, however, does not mean your trademark must be famous to be protected. Federal trademark dilution is just one form of protection. Once your trademarked name is on the federal register, you receive many benefits, regardless of whether or not your mark is famous.
Learn more about the benefits of trademark registration.