15.30 TRADEMARK DILUTION

(15 U.S.C. § 1125(c))

Comment

In 1995, Congress passed the Federal Trademark Dilution Act ("FTDA"), which remained in effect until 2006, when Congress passed the Trademark Dilution Revision Act of 2006 ("TDRA"). The TDRA significantly modified the FTDA, including overturning Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that a plaintiff must prove actual dilution under the FTDA. Among other things, the TDRA established a "likelihood of dilution" standard (providing relief for "likely" dilution), eliminated the definition of "dilution," added definitions of "dilution by tarnishment" and "dilution by blurring," and modified the "fair use" exclusion. See generally Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1165-71 (9th Cir. 2011). Thus, case law that pre-dates the TDRA generally should not be relied on in a dilution case.

There can be no dilution by tarnishment if a mark is used in a "noncommercial" fashion. A use is "noncommercial if it does more than propose a commercial transaction," even if the mark is used to sell a product. VIP Porudcts v. Jack Daniel's Properties, Inc., 953 F.3d 1170, 1176 (9th Cir. 2020). If a mark has been determined to be expressive under the First Amendment, any claim for dilution by tarnishment is foreclosed. See id.

In Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859, 869-71 (9th Cir. 2020), the Ninth Circuit provided an extensive discussion of the concept of trade dress dilution.

Revised Sept. 2020