NEW TRADEMARK LAW

Both the House and Senate have passed a new Trademark Anti-Dilution law and President Bush reportedly is likely to sign it. The new law will apply to the sub-category of trademarks that are deemed “famous”.

It is a significant burden to establish that a trademark has become famous for purpose of protection against dilution. It requires more than a showing of distinctiveness. It must be a mark that has been heavily advertised or achieved widespread acceptance within the minds of the consuming public. For example, Starbucks has become a famous mark. Its fame is not limited to coffee.

Trademark anti-dilution protects the owner of a famous mark from uses that dilute or lessen the mark’s unique and distinctive character, regardless of whether or not there is a “likelihood of confusion”. (Likelihood of confusion is normally the essential element that must be proven in a trademark infringement case.) Anti-dilution accordingly protects the mark from the use or adoption of marks used for completely unrelated goods or services.

It has been reported that the new law arose from the 2003 Supreme Court decision in Mosely (Victor’s Little Secret) v. Victoria’s Secret Catalogue case. The Supreme Court determined that there must be actual proof of dilution, i.e., a lessening of the capacity of the famous mark to identify and distinguish goods or services. A likelihood of dilution was determined to be insufficient to obtain legal protection.

The new law reverses the Supreme Court decision. It expressly permits injunctive relief against an owner of the non-famous mark based upon a likelihood of dilution. The dilution can be by “blurring” or by “tarnishment” of the famous mark. Blurring is use of the mark or similar mark in unrelated goods or services. Tarnishment is associating the the famous mark with an unsavory product or service.