Learn what trademark tarnishment actually is, how to avoid it and the steps that you should take if your trademark has been tarnished.
What would you like to protect?
updated November 21, 2023 · 3min read
Trademark tarnishment is when someone uses a famous mark in commerce and, in doing so, harms the reputation of the well-known mark. The harm can be something as simple as a mere association with something unsavory. For example, if an alcohol and spirits company used the Gerber Baby trademark in its marketing, it would not necessarily confuse Gerber consumers. However, the association with alcohol and spirits could portray the Gerber Baby mark in an unseemly light, according to its brand values. In this example, Gerber would be able to take legal action under the Federal Trademark Dilution Act (FTDA).
The FTDA of 1995 protects famous trademarks from being used commercially in such a way that dilutes their uniqueness or harms their reputation. Trademark-dilution laws protect trademark owners from any person or brand that weakens or harms their famous mark. There are two types of dilution: tarnishment and blurring.
A trademark is tarnished when there is an association between a famous mark and another mark, and the association harms the reputation of the famous mark. Often, a negative association involves alcohol, criminal activity, sex, or drugs.
Trademark blurring results when another brand, often with an inferior product, uses a famous mark. In doing so, the public's perception of the distinctiveness and uniqueness of the famous brand is reduced or impaired.
The general elements of building a successful claim under trademark dilution laws can be summed up in four parts:
1. The FTDA only protects famous marks. To determine whether a given mark is famous, courts will look at the following factors:
2. Proof that the defendant is commercially using the famous mark in interstate commerce3. The mark became famous before the defendant started using the mark. 4. The use of the famous mark has caused dilution. To determine whether a given mark has been diluted, courts will look at the following factors:
A court will not find in favor of a plaintiff in a trademark-dilution lawsuit, either for tarnishment or blurring, if the famous mark was used:
The FTDA prevents both the actual dilution of and the possibility of the dilution of a famous mark. If a trademark-dilution lawsuit is successful, the plaintiff is entitled to injunctive relief. This means that the court will order the defendant to stop using the famous mark.
It is not common for a court to award damages in a trademark-dilution case unless the dilution was intentional. If the defendant deliberately used the famous mark to gain market share for its own product or to harm the reputation of the famous mark, then the penalties could be severe.
Ultimately, avoiding trademark tarnishment is your responsibility. Even with a registered trademark, it is up to you to monitor your trademark. The law will only be able to protect you if you catch the misuse. As soon as you become aware that someone else is using your trademark, you must act immediately and consult an attorney.
by Crystal Everson, J.D.
Crystal Everson was admitted to the state bar of New York and has since retired from the practice of law. She holds a...
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