Trademark Dilution

An Explanation of Dilution and its Relevance

When most business owners think of trademark disputes, they think of trademark infringement, which is the result of a similar trademark being used on similar goods or services. However, under U.S. trademark law, well-known brands are also protected against "trademark dilution". Famous marks cannot be used in connection with any goods or services without violating the federal Trademark Dilution Act. Unlike infringement, dilution does not require actual or likely confusion, competition between parties, or even actual economic injury. Instead, it protects against uses of a famous trademark that could weaken its distinctive quality or harm its owner’s reputation. We discuss herein how trademark dilution differs from infringement, and why understanding it matters for business owners.

What Is Trademark Dilution?

Trademark dilution is a legal concept that protects famous trademarks from unauthorized uses that, over time, could weaken their ability to serve as unique identifiers of their owner’s goods or services. Unlike traditional trademark infringement, which requires proof of a likelihood of confusion among consumers, dilution focuses on preserving the distinctive quality and reputation of a famous mark even when there is no confusion, competition, or actual economic injury.

Federal Trademark Dilution Act

Under the Federal Trademark Dilution Act of 1995, and later its amendment in the Trademark Dilution Revision Act (TDRA) of 2006, the law prohibits the use of a mark or trade name that is sufficiently similar to a famous trademark if such use is likely to blur its distinctiveness or tarnish its reputation. This protection applies regardless of whether the junior user is competing with the famous mark’s owner or whether the use causes actual or likely confusion.

Federal law recognizes two types of trademark dilution: dilution by blurring and dilution by tarnishment.

Dilution by Blurring

Dilution by blurring occurs when the use of a mark that is similar to a famous trademark weakens the strength of the famous mark’s association with its specific goods or services. Importantly, this type of dilution does not depend on a likelihood of confusion among consumers. Instead, the harm lies in the gradual erosion of the famous mark’s uniqueness as a source identifier.

For example, if a small business launched “Google Plumbing” or “Rolex Coffee,” even if consumers are not confused into thinking these companies are affiliated with Google or Rolex, the mere association of these marks with unrelated goods and services could diminish their distinctiveness. Over time, consumers may no longer instantly associate the famous mark with its original source, undermining its commercial impact.

Under 15 U.S.C. § 1125(c)(2)(B), the Trademark Dilution Revision Act defines blurring as “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Courts evaluating blurring look at factors like the degree of similarity, the level of recognition of the famous mark, and whether the use of the mark by the defendant is likely to create mental associations that impair the famous mark’s ability to stand out.

Courts look for actual association between the junior and senior marks to assess blurring. However, research suggests that mere association may not always impair the famous mark’s distinctiveness.

Dilution by Tarnishment

Dilution by tarnishment happens when the use of a mark similar to a famous trademark creates an undesirable association that harms the famous mark’s reputation. Unlike traditional trademark infringement, tarnishment does not require proof of a likelihood of confusion or competition between the parties. Instead, it focuses on whether the defendant’s use casts the famous mark in an unwholesome or negative light.

For instance, using a luxury brand name like “Chanel” in connection with low-quality or unsavory products, such as adult entertainment or shoddy merchandise, can damage the brand’s carefully cultivated image. Courts have noted that tarnishment often occurs when a famous trademark is linked to products of inferior quality or placed in offensive contexts.

Under 15 U.S.C. § 1125(c)(2)(C), tarnishment is defined as “an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Courts consider whether the defendant’s use of the mark creates is likely to create negative connotations that erode the famous mark’s goodwill and standing in the marketplace.

How Dilution Differs from Infringement

Unlike trademark infringement, which focuses on actual or likely confusion among consumers, dilution applies even when there is no confusion or competition.

Trademark dilution and trademark infringement are distinct legal concepts with important differences for business owners to understand. In a traditional infringement case, the central issue is whether the defendant’s use of a mark creates actual or likely confusion among consumers as to the source of goods or services. In contrast, dilution does not require confusion, competition, or even actual harm. The focus is instead on whether the defendant’s use diminishes the uniqueness or tarnishes the reputation of the plaintiff’s mark, particularly when the mark is famous. Only famous marks that are widely recognized by the general consuming public, such as Coca-Cola or Google, qualify for this heightened protection. This distinction allows owners of famous marks to challenge uses that may gradually erode their brand’s strength, even outside their market.

The Legal Basis for Dilution Claims

Under 15 U.S.C. § 1125(c) of the Trademark Dilution Revision Act (TDRA), the owner of a famous mark can bring a dilution claim when certain criteria are met:

• The mark is distinctive and widely recognized (famous): To qualify for dilution protection, the plaintiff’s mark must possess a high degree of distinctiveness, either inherently or through acquired distinctiveness from long and substantially exclusive use. It must also be widely recognized by the general consuming public across the United States, not just within a niche market or geographic area.
• The defendant uses a similar mark in commerce: The claim requires that the defendant engage in the use of a trademark or trade name that is sufficiently similar to the famous mark and that such use occurs “in commerce” within the meaning of the Lanham Act. In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009), the Second Circuit evaluated the Starbucks corporation’s dilution by blurring claim under the TDRA. The court carefully examined the statutory factors, including the similarity of the marks. It noted that “Charbucks” and “Starbucks” shared some phonetic resemblance but differed visually and contextually, reducing the likelihood of blurring. Ultimately, the court upheld the district court's holding that Wolfe’s Borough’s use of “Charbucks” did not impair the distinctiveness of Starbucks’ famous mark.
• The use creates an association between the famous mark and the allegedly diluting mark: There must be evidence that consumers make a mental connection between the defendant’s mark and the plaintiff’s famous mark demonstrating "actual dilution", even if there is no likelihood of confusion about the source of plaintiff's goods or services. In Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), the Supreme Court held that under the Federal Trademark Dilution Act (FTDA), a plaintiff must prove actual dilution of their famous mark’s distinctiveness, not merely a likelihood of dilution. This stringent standard made it harder for trademark owners to succeed in dilution claims, as they had to demonstrate measurable harm to the mark’s ability to identify their goods or services.  The TDRA lowered the standard to “likelihood of dilution” to address the overly stringent standard of Moseley.

Importantly, the statute permits claims “regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.”

What Makes a Mark “Famous”?

Not every trademark qualifies. To be considered famous, courts look at factors such as:

• The duration, extent, and geographic extent of advertising and actual recognition by consumers.
• The amount and geographic extent of sales.
• Whether the mark possesses acquired distinctiveness through substantially exclusive use.

Examples of famous trademarks include Coca-Cola, Google, and Nike.

Defenses to Dilution Claims

The Trademark Dilution Revision Act (TDRA) provides several important defenses that can shield a defendant from liability in a dilution action. These defenses recognize the need to balance the rights of famous trademark owners with the public’s rights to free expression and fair competition.

• Trademark Fair Use: This includes using a famous mark in comparative advertising to identify the trademark owner’s products, nominative fair use, and descriptive fair use.  Nominative fair use may include such things as parody, satire, or commentary where the use does not serve as a trademark. Descriptive fair use occurs where the accused party does not use the mark in a trademark sense, e.g., using the famous mark to demonstrate the product category (e.g., "Genesis is a luxury brand  like those you know, such as Mercedes, BMW, and Lexus").
• Non-commercial use: Protection applies to uses of a famous mark in non-commercial contexts, such as artistic works, editorial commentary, or political speech, which are safeguarded under the First Amendment.
• News reporting and commentary: Using a famous mark in reporting or commentary about matters of public concern is not considered actionable dilution.

These defenses limit the scope of dilution law and help preserve free speech.

Remedies for Trademark Dilution

A federal cause of action for trademark dilution gives owners of famous marks several powerful remedies under the Trademark Dilution Revision Act (TDRA).

• Injunctive relief: The primary remedy is a court order prohibiting the defendant’s continued use and further dilution of the famous mark. This relief is available even without proof of actual damages, allowing trademark owners to stop dilution before further harm occurs.
• Monetary damages: If the plaintiff proves that the defendant’s dilution was willful, additional remedies are available. These can include recovery of the defendant’s profits, the plaintiff’s actual damages caused by the dilution, and, in exceptional cases, an award of attorneys fees.

These remedies are designed to preserve a famous mark’s distinctiveness and to deter unauthorized uses that may weaken its strength in the marketplace.

Federal Trademark Registration

A federal trademark registration provides significant advantages for trademark owners pursuing dilution claims. Registration with the Trademark Office secures nationwide federal protection, making it easier for the owner of the mark to enforce rights against unauthorized uses that may blur or tarnish their brand. While federal protection under the TDRA is available even to unregistered famous marks, registration strengthens a plaintiff’s position by serving as prima facie evidence of ownership and distinctiveness. When courts are determining whether a mark qualifies as “famous” for dilution purposes, they often consider whether the mark is federally registered as part of the analysis, along with factors like advertising reach and market recognition.

Criticism of the Dilution Law

Many scholars argue that dilution law gives trademark owners rights in gross, effectively allowing them to control the use of words or phrases far beyond their original market without requiring proof of actual economic injury. This level of protection has been compared to granting near-monopoly rights over language itself. Critics note it may suppress free speech, especially where non-commercial use is at issue, e.g., in cases involving parody, commentary, or other non-commercial use. Critics also argue that this broad scope facilitates unfair competition by the trademark owner and can stifle the market by preventing smaller businesses from using descriptive or evocative terms.

International Perspectives on Dilution

Many countries offer similar protection for famous trademarks. However, requirements for proving dilution and the scope of protection vary widely. Business owners with global brands should understand the geographic extent of dilution protection in different jurisdictions.

Conclusion
Trademark dilution is a bit of a niche area of trademark law. However, it is often raised in trademark disputes and should be understood by parties and attorneys alike. If you have a potential trademark dilution issue or other intellectual property law matter, contact our office for a free consultation.

© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.