Recommended Reading: Scot Duvall on the The Trademark Dilution Revision Act of 2006
Scot Duvall has provided his enlightening commentary on the TDRA in an article in the latest issue of The Trademark Reporter, entitled "The Trademark Dilution Revision Act of 2006: Balanced Protection for Famous Brands." (download pdf here). Scot represented Petitioner Moseley in the landmark Moseley v. V Secret Catalogue, Inc. case and served on, inter alia, the INTA's Drafting Committee for Revisions to FTDA. Who better to explain the TDRA and its workings?
According to Mr. Duvall, the TDRA "clarifies the importance of dilution law as an essential part of federal trademark law, and brings much needed balance and clarity to the Lanham's Acts treatment of this oft-maligned area of the law."
The Moseley decision's holding that the FTDA required that a dilution claimant prove actual dilution, was a significant catalyst for the trademark bar's effort to revamp the federal dilution statute. The TDRA relaxes the standard of proof to require only a likelihood of dilution, but this relaxation "is offset by an important narrowing of what qualifies as a 'famous mark.'" For a mark to be famous under the TDRA, it must enjoy "broad recognition by the general consuming public." So called "niche fame," either in a particular geographic area or a particular industry, will not suffice.
The TDRA also provides for two types of dilution: dilution by blurring and dilution by tarnishment. For dilution by blurring, the statute lists six relevant but non-exclusive factors that are to be considered. The tarnishment provisions do not reference any specific factors; "existing case law interpreting [state] statutes should serve as a guide for applying this provision of the TDRA."
The TDRA also expands upon the exclusions from dilution liability, and for the first time in federal dilution law sets forth a complete defense from liability for any "fair use" of a famous mark, provided that the use is not as a "designation of source." Expressly included within "fair use" are nominative fair use and descriptive fair use.
No facet of the TDRA escapes the author's eye, not even the "unique priority issues" that arise when a famous mark owner seeks to cancel a registration on the Supplemental Register.
Scot Duvall's article is one of those that you will want to keep in your desk drawer. The next time you are considering a dilution claim, whether in the courts or at the TTAB, this article will provide an excellent refesher course.
TTABlog note: Another thank you to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2007 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 97 TMR 1252 (November-December 2007).