Has someone else used your company’s trademarks in a way that harms your brand? If so, you may have grounds to file a lawsuit alleging trademark dilution. Here’s what you need to know about the process.
Understanding Trademark Dilution
Trademark dilution occurs when other parties’ unauthorized use of a trademark weakens the trademark’s distinctiveness or public reputation. Trademark dilution can harm a mark’s distinctiveness when repeated uses blur the distinction between the mark and the company that owns the mark and the goods or services offered by the company. Famous examples of the blurring of a trademark’s distinctiveness include Xerox, whose company name became the byword for its goods/services, namely photocopying machines – the act of photocopying a document became popularly known as “Xeroxing.” Trademark dilution can also occur when parties attach a trademark to goods or services unrelated to those offered by the mark’s owner.
A trademark can also suffer dilution when unauthorized parties use the mark in such a way as to tarnish the mark owner’s reputation with consumers. For example, suppose companies sell counterfeit or “gray market” goods or services under another party’s trademark or make offensive statements on social media with accounts using another’s trademark. In that case, those actions can damage the trademark owner’s reputation among consumers.
Elements of a Trademark Dilution Claim
A trademark owner must establish several elements to succeed in a trademark dilution claim. First, the owner must prove that their trademark has become widely recognized by the public. Widely recognizable trademarks would include those owned by Fortune 500 companies. Second, the owner must prove that the defendant(s) have used an offending/diluting mark in commerce. Unlike a trademark infringement claim, a mark owner does not need to prove that the diluting mark caused consumer confusion regarding the source of goods or services. Instead, a trademark dilution claim only requires an owner to prove that the use harmed their brand’s distinctiveness or reputation among the public.
Defenses Against Trademark Dilution Claims
Parties accused of trademark dilution may assert various legal defenses to lawsuits, including:
- No dilutive effect or reputation harm: A defendant in a trademark dilution case may present evidence that their use has not harmed the mark’s distinctiveness or the brand’s reputation among consumers. For example, a defendant may show that the general public has not seen the defendant’s use of the mark or does not view it negatively affecting the brand.
- Fair use: Defendants may argue that they engaged in fair use of a trademark, which means either using the mark in a non-commercial context (e.g., news reporting, commentary, criticism, or parody) or using a mark that ordinarily has a descriptive use in that context (for example, using the term “Apple” to describe a fruit or flavor rather than electronic devices).
- First Amendment use: A defendant may avoid liability for trademark dilution by arguing that they used the mark in an artistic or expressive endeavor, such as “name-checking” a brand name in a song.
Remedies You May Pursue in a Trademark Dilution Claim
In a trademark dilution claim, you may have the opportunity to pursue legal and financial relief that includes:
- Forfeiture and destruction of goods: A court may order an offending party to remove and destroy counterfeit goods bearing another party’s trademark or remove illegitimately acquired genuine (“gray market”) goods from the market.
- Injunctive relief: Courts may issue injunctions barring offending parties from continuing to use a trademark; violating the court’s order may lead to civil contempt and financial penalties.
- Monetary damages: In intentional trademark dilution cases, the mark owner may pursue compensation for established financial losses.
Contact a Commercial Litigation Lawyer
When other parties’ use of your trademarks has damaged the distinctiveness or reputation of your brand, assert your rights and seek relief with the help of Levy Goldenberg LLP. Contact us today for an initial consultation with a commercial litigation attorney to discuss your legal options for pursuing legal action to protect your company’s brand.