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You may find that consumers know your name and recognize your famous logo, but a competitor’s logo could be confused with yours, or a company in another industry is using your trademarked name. Alternatively, you might have just received a cease-and-desist letter claiming your company slogan is diminishing and harming an established company’s trademark. These are examples of trademark dilution for the unique features a business uses to identify its goods and services, and it may require the counsel of a skilled trademark attorney.
A trademark can be a name like Disney, a logo like Nike’s swoosh, a sound like MGM’s roaring lion, a color like Tiffany blue, or a slogan like M&Ms’ “melts in your mouth, not in your hand.” Trademarks can also be a combination of these elements. If you believe another company is diminishing your brand, or you have been told your company is harming another, contact a Boca Raton trademark dilution lawyer to understand and resolve the issue.
When a person or business uses a famous trademark in a way that weakens or harms it, dilution can occur by either blurring or tarnishment. To prevail in an infringement case based on dilution, a trademark owner must show their mark is famous and has been blurred, tarnished, or both, by another person or entity using it or a similar mark. Famous trademarks are those that are widely recognized by the public.
The court determines “fame” by considering if the mark is registered under 15 United States Code. § 1125, and the geographic extent, length of time, and how often the mark is used for publicity or advertising on the goods and services it represents. Judges will also ponder how much they believe the public recognizes the trademark as associated with the company’s product or service. If the court agrees that the mark is notable enough, an action can proceed to whether there was trademark dilution by blurring or tarnishment, which is an area where a Boca Raton attorney could assist.
Tarnishment occurs when a culprit employs the same or similar trademark, which will cause harm to the more famous one. It may be used to show the owner in a poor light or to market poor quality products by fooling consumers into thinking they are the higher quality products sold under the famous trademark. Couture brands like Chanel and Louis Vuitton, for example, have had to diligently protect their handbags against tarnishment from cheap knockoffs.
Logos and other marks must be distinctive to earn a trademark from the U.S. Patent and Trademark Office (USPTO). Consumers come to know the quality of a product by its unique mark and those who use a similar or identical mark that diminishes the uniqueness of the famous mark are engaging in blurring. When considering a case of blurring, the court looks at:
Companies with famous trademarks subject to blurring, as well as consumers who purchase goods or services they believe are coming from the famous company, are both hurt by dilution. A Boca Raton trademark dilution attorney could discuss any intellectual property issue with a business that has been targeted by dilution or tarnishment.
Many companies sue for trademark dilution and infringement at the same time. Your mark must be famous to proceed with a dilution action, while infringement does not require that element. Dilution does not require that consumers be confused by like trademarks, only that the famous mark suffers because of it.
Intellectual property law is complicated and requires an advocate who practices in federal court. You may be risking your business, the validity of your trademarks, and your good reputation if you do not address these problems when you suspect them. Call us now and speak with a Boca Raton trademark dilution lawyer.
