Trademark Dilution

Features and Considerations:

• Dilution can be divided into blurring (where the mark loses its unique association with its products) and tarnishment (where the mark’s reputation is harmed by unsavory associations).
• Not all jurisdictions recognize tarnishment as a part of dilution law.
• The trademark must be famous and recognizable by the general public.
• The unauthorized use must likely weaken or tarnish the distinctiveness of the famous mark.
• The extent of fame and recognition of the trademark can influence dilution claims, with more widely recognized brands enjoying broader protection.

Examples:

1. Using “Kodak” for a line of shoes, diluting its strong association with photography (Blurring).
2. Associating “Adidas” with unhealthy food products, damaging its fitness-related brand reputation (Tarnishment).
3. Xerox Corporation has actively fought against the dilution of its brand name, which became generically used to refer to any photocopying activity, regardless of the machine’s brand. Xerox has engaged in campaigns to educate the public that “Xerox” is a protected brand name and not a verb synonymous with photocopying, to prevent the dilution of its trademark.
4. Kleenex: Similar to Xerox, Kleenex has become a term commonly used to refer to any tissue, regardless of the brand. The Kimberly-Clark Corporation, the owner of the Kleenex brand, has undertaken efforts to remind consumers that Kleenex is a trademarked brand name to prevent the brand from becoming generic and losing its trademark protection.

Why This Matters:

Trademark dilution undermines the value and trust of established brands, impacting their market position and consumer perception, hence it is vital to protect the distinctiveness and prestige of famous marks.

Call to Action:

1. Trademark Monitoring: Regularly monitor the market for potential infringing uses of your trademark to protect against dilution.
2. Legal Consultation: Seek advice from IP professionals to understand the scope of your trademark’s protection against dilution and the best strategies for enforcement.
3. Trademark Registration: Ensure your trademarks are registered, emphasizing the need for protection in key markets where your brand has significant recognition.
4. Public Education: Educate the public and your business partners about the value of your trademark and the importance of maintaining its integrity against dilution.

External Resources:

• Trademark dilution: https://en.wikipedia.org/wiki/Trademark_dilution
• Trademark Dilution Law: https://www.justia.com/intellectual-property/trademarks/trademark-dilution/
• International Trademark Association trademark dilution: https://www.inta.org/

Advanced Topics:

• Legal frameworks and variations of trademark dilution laws across different jurisdictions.
• Strategies for proving fame and dilution in court.
• Case studies of landmark trademark dilution cases.
• Understand how dilution protection varies across jurisdictions and the challenges of enforcing dilution claims internationally.
• Examine the impact of social media and the internet on trademark dilution and the evolving strategies for protection.
• The role of consumer surveys and other statistical evidence in proving or defending against trademark dilution claims.