What Evidence Supports Trademark Dilution Claims?
The trademark law world surrounding trademark dilution is rooted in both federal and state laws, including the Lanham Act.
As we explore what evidence supports trademark dilution claims in California, it is crucial to understand that these cases often hinge on the ability to prove that a trademark's uniqueness or reputation has been harmed by the use of a similar or identical mark by another entity.
Trademark dilution is distinct from traditional trademark infringement. In typical trademark infringement cases, the focus is on whether a consumer might be confused by two marks that appear similar or identical.
However, in trademark law dilution cases, confusion is not necessary to make a claim. Instead, the concern is that the famous mark’s distinctiveness or reputation is being weakened, which can occur even if there is no likelihood of consumer confusion.
At The Orantes Law Firm, we understand the importance of protecting a brand's identity and reputation. Trademark dilution claims, which fall under the realm of trademark law, seek to preserve the distinctiveness and value of famous marks from uses that could diminish their strength or tarnish their image.
In this article, we will delve into the types of evidence that can help support a trademark dilution claim under California law, providing businesses with a clearer understanding of what needs to be proven in order to protect their valuable intellectual property.
Trademark Dilution 101
Trademark dilution occurs when a famous trademark loses its ability to serve as a unique identifier of the source of goods or services, even if there is no confusion in the marketplace. It can happen in two main forms:
Dilution by Blurring: This form of dilution happens when the distinctiveness of a famous mark is weakened because of the use of a similar mark.
For example, if a lesser-known company starts using a mark similar to Coca-Cola's logo for unrelated products, it could dilute the distinctiveness of Coca-Cola’s trademark by causing it to lose its singular association with the beverage.
Dilution by Tarnishment: This occurs when a famous mark is used in a way that negatively impacts its reputation. If, for instance, a company uses a famous mark in connection with a product or service that is offensive or disparaging, it could tarnish the mark’s reputation and cause harm to its value.
The primary concern of dilution is not whether the public is confused about the origin of the goods or services, but whether the use of a similar mark could impair the uniqueness or strength of the original trademark.
Under both California law and federal law, famous marks are granted protection from dilution in order to preserve their commercial value and prevent unfair practices.
The Lanham Act and California Law on Trademark Dilution
Under the Lanham Act, which is the trademark law governing trademarks, dilution claims are generally governed by the Trademark Dilution Revision Act (TDRA) of 2006. The Act allows the owners of famous trademarks to sue for dilution, even in the absence of confusion among consumers.
However, for a trademark to be considered famous and eligible for protection against dilution, it must meet specific criteria, such as having widespread recognition and significant commercial success.
In California, the state law provides additional protection for trademark owners who feel their marks are being diluted. The California Business and Professions Code § 14247 outlines the state’s approach to dilution and offers remedies for plaintiffs whose famous trademarks are at risk of being diluted by unauthorized use.
Key Elements of a Trademark Dilution Claim
To successfully bring a trademark dilution claim in California, a plaintiff must establish several key elements. These elements serve as the foundation for any evidence presented to support the dilution claim. In general, a plaintiff must demonstrate:
Famousness of the mark: A famous trademark is one that has achieved widespread recognition and is known by a broad segment of the public. To make a dilution claim, the plaintiff must show that their mark qualifies as famous under both state and federal law.
Defendant’s use of the mark is likely to cause dilution: The plaintiff must prove that the defendant’s use of a similar or identical mark is likely to cause dilution of the famous mark’s distinctiveness or reputation.
Commercial use: The alleged infringing use of the mark must be in commerce, meaning that it is used in connection with goods or services offered to the public.
No need for confusion: Unlike traditional trademark infringement claims, the plaintiff does not need to prove consumer confusion. Instead, the focus is solely on whether the use of the junior mark could potentially dilute the famous mark’s distinctiveness or harm its reputation.
Types of Evidence Supporting Trademark Dilution Claims
While each case will have its unique aspects, there are common types of evidence that help support a trademark dilution claim under trademark law. These types of evidence focus on proving both the fame of the mark and the likelihood of dilution. Below, we will outline the key categories of evidence that are critical in building a strong dilution claim.
Evidence of Fame
To succeed in a trademark dilution claim, the plaintiff must establish that their mark is famous. Fame is a crucial element, as only famous marks are eligible for protection against dilution. The following types of evidence can help demonstrate the fame of a mark:
Advertising and promotion: One of the most important forms of evidence is showing how extensively the mark has been advertised and promoted. Evidence of large-scale advertising campaigns, substantial media presence, and high consumer awareness can help establish the mark’s fame.
This includes national and international marketing efforts, especially those that target a broad range of consumers.
Sales and market share: Demonstrating the commercial success of the trademark is also key. Evidence of high sales volume, significant market share, and widespread consumer use of the product or service associated with the trademark helps establish fame.
This can include revenue reports, industry rankings, and data showing the popularity of the goods or services bearing the mark.
Consumer recognition: Evidence that the public recognizes the trademark as unique and associated with a particular source is another essential aspect of proving fame.
Surveys, market research, and consumer testimony that show a broad recognition of the trademark in the market are useful in supporting this claim.
Length of use: A trademark that has been in use for a long time may have acquired fame simply through its prolonged existence and sustained commercial success. Evidence of continuous and consistent use in commerce, over many years, strengthens the argument that the mark has achieved fame.
Evidence of Likelihood of Dilution
Once the trademark law plaintiff has established that their mark is famous, the next step is proving that the defendant’s use of a similar mark is likely to dilute the famous mark. This can be done through various forms of evidence, including:
Similarity of the Marks: One of the primary factors in determining dilution is the similarity between the marks.
The plaintiff must show that the junior mark is similar enough to the famous mark that it could cause blurring or tarnishment. This could involve a side-by-side comparison of the marks and expert testimony on how the marks may be perceived by the average consumer.
Defendant’s Intent: If the defendant intentionally used the mark in a manner likely to dilute the famous mark, this could provide strong evidence of dilution.
For example, if the defendant deliberately chose a similar mark to benefit from the famous mark’s recognition or goodwill, this could support the plaintiff’s claim.
The Nature of the Goods or Services: Even if the marks are similar, dilution may be less likely if the goods or services associated with the marks are entirely different.
However, if the defendant’s use of the mark is in connection with goods or services that are harmful or offensive, it could lead to the tarnishment of the famous mark’s reputation.
Degree of Distinctiveness: The stronger and more distinctive the famous mark, the more likely it is that dilution will occur. Evidence showing that the mark has achieved high levels of distinctiveness or recognition in its market segment can be used to support a dilution claim.
Evidence of Actual Dilution or Harm
Although not always necessary, trademark law evidence that actual dilution or harm has occurred can be compelling. This can include instances where the famous mark has experienced a decline in distinctiveness, customer confusion, or damage to its reputation due to the defendant’s use of a similar mark.
The First Steps
At The Orantes Law Firm, we understand the challenges of pursuing a trademark law dilution claim. We’re proud to serve Los Angeles, Woodland Hills, and Orange County, California. Call today.