The Internet Encyclopedia (Volume 3)

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INFRINGEMENT ANDDILUTION 451

protect unregistered trademarks under some combina-

tion of state statute and common law. For the sake of

brevity, this section does not detail trademark protections

in all 50 states.

In most states, the common law recognizes ownership

of a trademark. Ownership under common law is most

often established by demonstrating when the mark was

first used in commerce, but unlike federal law, common

law protections extend only to those areas or markets in

which the mark is actually used. In contrast, federal reg-

istration of a trademark gives a basis under federal law

for a suit for infringement, in addition to any common

law claims that might be available. Although it is possi-

ble to protect one’s rights using only common law or state

statutory protections, the benefits that flow from federal

registration make it highly desirable.

INFRINGEMENT AND DILUTION

There are two main rights that trademark owners will as-

sert:infringementanddilution.Infringement of a trade-

mark usually involves the use of the mark in a way that

is so similar to the owner’s usage that the average pur-

chaser will likely be deceived, will mistake the infring-

ing goods for the original, or will likely experience confu-

sion. Dilution is a lessening of the value of a trademark

caused by an unauthorized use of the mark, regardless

of whether any actual confusion, deception, or mistake

occurred.

Infringement

Under the Lanham Act, the standard for determining

whether a mark is infringing is whether there is a “likeli-

hood of confusion” over the mark in a particular usage

context. More specifically, infringement comes when a

consumer is likely to be confused over the source, spon-

sorship, or approval of the goods bearing the mark.

In deciding whether consumers are likely to be con-

fused, courts have previously looked at a number of fac-

tors, including the following:

Similarity between the two marks (such as any visual,

phonetic, or contextual similarities),


Similarity of the goods or services being offered,


Proximity of the goods in a typical retail setting,


Strength of the plaintiff’s mark as exemplified by how

well known the mark is to the public at large,


Evidence of any actual confusion by consumers,


Evidence of the defendant’s intent in using the mark,


Likely level of care employed by consumer in the pur-

chase of that type of product, and


Likely growth or expansion of the product lines.

Of these eight factors, the first two are arguably the

most important. For example, using an identical mark on

an identical product is a clear case of infringement, such

as a company other than Ford manufacturing a midsized

automobile and calling it a Taurus. Similarly, calling the

vehicle a Taurius would run into problems. (This use of

similarly spelled names is of particular concern in the

Internet domain name context, which will be discussed

in a later section.)

Mere similarity is not always determinative of infringe-

ment. For example, it is possible to find Delta Faucets

just a few aisles away from Delta power tools at your lo-

cal home improvement store. Although made by differ-

ent companies, the similarity in trademark does not con-

stitute infringement because consumers are not likely to

mistake a belt sander for a shower head.

Dilution

To clarify further the distinction between normal trade-

mark infringement and dilution, in 1995 Congress

amended the Lanham Act by passing the Federal Trade-

mark Dilution Act (FTDA). This legislation expanded pro-

tections granted to famous and distinctive trademarks un-

der the Lanham Act. Unlike infringement, dilution does

not require evidence of a likelihood of confusion. In-

stead, the plaintiff must demonstrate that their mark is

“famous,” that it is being used in commerce by another

party, and that the use causes the dilution of the “distinc-

tive quality” of the mark.

The FTDA says that in determining whether a mark is

“famous,” a court may look at factors including the length

of time a mark has been used, how widely and in what ge-

ographic areas it as been advertised, how recognizable the

mark is to the public, and other factors. Highly distinctive,

long-used, and well-known marks, such as Coca-Cola or

Kodak, are examples of famous marks. Once a plaintiff

establishes the fame of a mark, the owner can seek an in-

junction against further use of the mark in a manner that

dilutes the distinctive qualities of that mark.

There are two types of dilution of a mark:blurringand

tarnishment.

Blurring

Blurring is the weakening of a mark through its iden-

tification with dissimilar goods. For example, market-

ing Kleenex brand refrigerators would not likely confuse

someone looking for bathroom tissue and cause them to

purchase a refrigerator accidentally; however, the use of

the trademark would dilute the mark’s distinctiveness as

representing personal care paper products.

Tarnishment

Tarnishment is the use of a mark in an unflattering light,

through associating it with either inferior or distasteful

products. For example, in the caseToys ‘R’ Us v. Akkaoui,

(1996), the toy retailer brought a successful tarnishment

claim against a pornographic Web site “adultsrus.com.”

Other Trademark Claims

Although dilution claims and infringement claims based

on likelihood of confusion are the two most common

trademark-related causes of action, there are a number of

other bases for bringing suits. Many states have enacted

unfair competition laws that prohibit a range of activi-

ties known aspassing off, contributory passing off, reverse

passing off,andmisappropriation.