Question

Search the government website I gave y0u in our first slides (govinfo.gov) for a U.S. court opinion document regarding trademark issues relating to technology/cyber issues (computers, cell phones, internet, etc.). Tell me in a couple of paragraphs what’s going on, according to what’s in the document.

Answer 1

The document is named as TRADEMARK DILUTION REVISION ACT OF 2005. The foundation of trademark law is that certain words, images, and logos convey meaningful information to the public, including the source, quality, and good will of a product or service. Unfortunately, there are those in both commercial and non-commercial settings who would seize upon the popularity of a trademark for their own purposes and at the expense of their rightful owner and the public.

Enactment of this bill is a necessary need because it will eliminate confusion on key dilution issues that have increased litigation and resulted in uncertainty among the regional circuits.Subject to the principles of equity, the owner of a famous, distinctive mark is entitled to an injunction against any person who commences use in commerce as a source designation of that person’s goods or services, a mark that is likely to cause dilution by blurring or tarnishment.

A mark may only be famous if it is widely recognized by the general consuming public in the United States as a source designation of the goods or services of the mark’s owner. In determining whether a mark is famous, a court is permitted to consider all relevant factors, in addition to prescribed conditions set forth in the print, including the duration, extent, and geographic reach of advertising and publicity of the mark.

Anti-dilution of trademark legislation is required. The goal of that is to protect only the most famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it. Dilution is a concern when an unauthorized use of a famous mark reduces the public’s perception that the mark signifies something unique, singular, or particular. Anti-dilution laws, therefore, are really about protecting a property right, the actual trademark.

bout things to protect a property right. This is very different than the treatment of copyrights or patents, where we do so only for a limited period of time for the purpose of promoting innovation and creativity. In the case of anti-dilution laws, there is a potential to create a right in perpetuity for the trademark which may merely result in protecting the owner’s economic interest. It was, therefore, initially intended for dilution to be used sparingly as an extraordinary remedy, one that required a significant showing of fame. However, now it seems as though dilution is used frequently as an alternative pleading in trademark litigation.

The bill suggests that the solution is to amend the standard from actual to likelihood of dilution. INTA believes that the existing statutory defenses to a dilution claim and the safeguards offered by the first amendment have generally protected defendants from overly broad application of the statute. However, it is an exceptionally muddy and difficult area of law with a lot of inconsistency and uncertainty. The evaluation has revealed the following:

1. A Problematic Standard for Proving Dilution
2. Division On What Constitutes a Famous Mark
3. A Split on Whether to Protect Famous Marks with Acquired Distinctiveness
4. A Question on Whether Tarnishment Is Covered Under the FTDA