Monday, September 23, 2013

Recommended Reading: Jerre B. Swann, "The Evolution of Dilution in the United States from 1927 to 2013"

In this enlightening article, "The Evolution of Dilution in the United States from 1927 to 2013," Jerre B. Swann traces the history of dilution law in the United States from the Frank Schechter era to today's TDRA. He observes that Schecter's framework for dilution protection was "(a) besieged by Harvard school economics; (b) undercut by overreaching enactments at the state level; and (c) substantially obviated by expanded concepts of consumer confusion." [As we have seen in many TTAB decisions, very strong marks (i.e., those "famous" for Section 2(d) purposes) are given broad protection under a likelihood-of-confusion analysis, and the issue of dilution is never reached by the Board.]

Jerre B. Swann

As trademarks and markets changed during the last century, trademark law changed as well: "(a) in the 1960s, trademarks began to evolve into modern day-brands; (b) the evaluation of the evolution was radically altered by Chicago school economics; and (c) in the latter decades of the twentieth century, brands entered the current Age of Information (and clutter)."

Dilution concepts in the 1920s were thus perceived as necessary to prevent third-party appropriation of trademark quality signals for non-competing goods; by the 1960s, at the midpoint of its history, dilution was largely displaced as a remedy by an expanded confusion factors analysis; but, as of the twenty-first century, dilution is again in vogue to protect a limited number of brands with vastly greater informational/experiential content that is economically essential to consumers in a “crowded” market. Schechter participated only in dilution’s initial decade, but his insistence on a re-analysis of trademark functions set the pattern for its re-emergence, and dilution’s history confirms Schechter’s organic view of trademark law.

Mr. Swann urges that the primary purpose of dilution law today is "to protect the informational 'clarity'" of well-known or celebrated trademarks. "[B]rand clarity is a consumer good," and the attacks on dilution law as protecting marks, not consumers, are off the mark.

He believes that the "guidelines" incorporated into the TDRA "will facilitate predictability and ameliorate the expense of dilution protection."

If they operate as intended, the guidelines incorporated in the TDRA will, in tandem with emerging fair use concepts, protect the often competitively enhancing uses of famous brands in their purely informational sense. Those eventualities, of course, are not yet assured, and particularly in the age of the Internet, the function of trademarks—the nature of the information they convey and the total value they provide to consumers—may shift again. Still now, as when Schechter penned “Rational Basis” in 1927, “[t]here is no part of the law that is more plastic than unfair competition."

TTABlog note: I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2013 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 103 TMR 721 (2013).

Text Copyright John L. Welch 2013.


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