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Unpublished Paper
Is Congress Dilution-al: Problems with the Trademark Dilution Revision Act of 2006
ExpressO (2008)
  • jason flower, Ohio Northern University
Abstract

In 2006, Congress passed the Trademark Dilution Revision Act (“TDRA”), with the intent to more precisely define what constitutes dilution and who may bring a dilution claim, and to specifically overrule Moseley v. Victoria’s Secret Catalogue, Inc. The now infamous decision set the bar for a dilution claim at showing actual dilution rather than a likelihood of dilution, much to the chagrin of the owners of famous trademarks. The TDRA has not been interpreted with the ease Congress intended, and the problems concerning dilution have not subsided. My argument is twofold. First, the standard for likelihood of confusion currently offers the same protection for famous trademarks as dilution laws, based on recent case law analysis. Second, in order to deal with the lack of clarity between the two laws the more appropriate standard should revert to a requirement of actual confusion. Furthermore, Congress failed to address the inherent contradiction of reserving dilution by blurring claims to famous marks – if they are so well known how could they ever be diluted by less well-known trademarks? The recent case law has shown that plaintiffs are capable of proving actual dilution, and that the TDRA has further restricted consumer choice in deciding which marks deserve protection based on their goodwill. Congress also intended that the TDRA would limit the number of cases brought under the dilution statute, but the number of decisions show the exact opposite result. A final area of concern addressed is the potential First amendment issues introduced by the TDRA. Competition is potentially stifled by limiting criticism from competitors who would risk a dilution charge by exercising their freedom of speech. All these problems point to a failure on the part of the Legislature to remedy the problems that dilution presents in the field of trademark law.

Keywords
  • Trademark law,
  • dilution,
  • likelihood of confusion,
  • First amendment
Disciplines
Publication Date
May 27, 2008
Citation Information
jason flower. "Is Congress Dilution-al: Problems with the Trademark Dilution Revision Act of 2006" ExpressO (2008)
Available at: http://works.bepress.com/jason_flower/1/