Understanding Trademark Tarnishment

Understanding Trademark Tarnishment

by Crystal Everson, J.D., November 2019

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).

Understanding Trademark Tarnishment

Trademark Tarnishment vs. Trademark Blurring

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.

Elements of a Trademark Tarnishment Claim

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:

    • Distinctiveness and uniqueness of the mark
    • How long the mark has been used
    • Amount and extent of advertising for the mark
    • Where the mark has been used
    • How recognizable the mark is in the area that it is used
    • How the product bearing the mark was distributed and marketed
    • Whether third parties have used the mark or similar marks
    • Whether the mark was registered

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:

    • Similarity between the mark and the famous mark
    • Uniqueness of the famous mark
    • Whether the famous mark is being used and maintained
    • Whether the famous mark is recognizable
    • Intent of the defendant when using the famous mark
    • Whether there is any relationship between the famous mark and the defendant

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:

  • Under the fair use doctrine
  • In the course of news reporting
  • For a non-commercial purpose

Legal Consequences of Trademark Tarnishment

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.