The use of a name or symbol to identify your goods or services can be a good way to market your business in a memorable way. When the right name or image is found, a business may choose to trademark its name or symbol to ensure that no other businesses or individuals can use the same imagery to market their own goods. However, the fact that a symbol is trademarked does not always keep other people from infringing on it, innocently or knowingly, and there are other laws and rules that seek to further protect trademark holders.
One way in which a business or person can misuse a person’s trademarked name or logo is through trademark dilution. Trademark dilution is the use of a famous trademark in connection with unrelated goods and services in a way that blurs or tarnishes the trademark. Unlike trademark infringement, the use does not have to cause confusion to consumers as to the origin of the goods or services offered, and the user of the trademark does not have to be a competitor of the owner of the trademark for dilution to occur.
Dilution through blurring is the use of a famous trademark in relation to goods that the trademark is not known for, for example the use of the trademark “Pepsi” to advertise bean bags. Dilution through tarnishment is more likely to cause a trademark holder concern as it is the use of the trademark to advertise goods or services that are distasteful or damaging to the famous mark, for example, an adult store using the name “Nutella”. The Trademark Dilution Revision Act does contain several exceptions to a dilution claim, including the use of a trademarked name for journalistic or new commentary purposes, fair use, and non-commercial purposes.
For a claim to be brought against another business for diluting a trademark, the trademark must be famous. Courts look at various factors in determining if a trademark is sufficiently famous for a dilution claim, including:
- The duration, extent, and geographic reach of advertising and publicity of the trademark,
- The amount, volume, and geographic extent of sales of goods or services offered under the mark,
- The extent of actual recognition of the mark, and
- When the trademark was registered.
If a court does not find your trademark, your claim of dilution cannot proceed, however, if another person is still using your trademark without permission, you can sue for trademark infringement to stop the unauthorized use.
A trademark owner whose trademark is being used in any unauthorized manner should seek to enforce their rights by seeking an injunction and other available remedies. The unauthorized use of a trademark can cause the loss of business revenue as well as damage the business name depending on the use. Additionally, failure to protect a trademark can lead to losing its protection.
Let Us Assist You
If you are a small business seeking to protect your company’s valuable intellectual property through copyright, trademark or trade secrets, contact an experienced business attorney in North Miami, at the Charlip Law Group, L.C. for professional assistance with your case.