Monday, November 13, 2006

Recommended Reading: Prof. Barton Beebe on the Trademark Dilution Revision Act

A TTABlog hat tip to Professor Eric Goldman and his Technology & Marketing Law Blog for providing this link to a thought-provoking article by Professor Barton Beebe, entitled "A Defense of the New Federal Trademark Antidilution Law," 16 Fordham Intell. Prop. Media & Ent. L.J. 1143 (2006). Professor Beebe is an Assistant Professor of Law at Benjamin N. Cardozo School of Law, Yeshiva University, in New York City.

Professor Beebe argues that the TDRA "represents a sensible and progressive reform of American federal antidilution protection." Read properly, the TDRA "significantly limits both the subject matter and scope" of Section 43(c).

In his view, much confusion over dilution law stems from the attempt to tie antidilution statutes to Frank Schechter's original dilution concept. Schecter's radical proposal was aimed at protecting a mark's "uniqueness" and "selling power," whereas antidilution statutes are more narrowly focused. Dilution law continues to perplex the courts because antidilution plaintiffs press for broad Schecter-type coverage, relying merely on the similarity of the marks, while the statutes require proof of blurring in the marketplace.

Professor Beebe discusses the origins of the TDRA and provides insightful comments on the its most important provisions, including its adoption of a likelihood of dilution standard, recognition that marks with acquired distinctiveness qualify, rejection of "niche fame," reconfiguration of the "fame" factors, express inclusion of dilution by tarnishment, provision of a list of blurring factors, and expansion of the exclusions for conduct that is not actionable as dilution.

The Professor's conclusion aptly reflects the thrust of his article:

"Schecter's original theory of trademark dilution and antidilution protection was indeed 'radical.' Fortunately, the TDRA does not implement anything like his original theory. Indeed, much confusion could be avoided in the case law and commentary by steering clear of the muddled term 'dilution' altogether. What the Act provides is two very specific forms of trademark protection: anti-blurring protection and anti-tarnishment protection. Plaintiffs will nevertheless urge courts to interpret the Act as an implementation of Schechter's original theory and to find the term 'dilution' a receptacle for all imaginable harms to their marks. Courts must resist this compulsion and they have no better basis for doing so than the specific language of the Act itself."

TTABlog note: Eric Goldman's blog is the best source of information regarding recent developments in "key word" and other Internet-related cases.

Text Copyright John L. Welch 2006.


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