10Oct2006
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Trademark Dilution Revision Act Becomes Law

The Trademark Dilution Revision Act of 2006 (the “Revision Act”) was signed into law on October 6, 2006. The amendments significantly change the Federal Dilution Act, including in the following respects:

The Revision Act returns the statute to its original interpretation, namely that a likelihood of dilution suffices, rather than either the actual dilution standard required by the U.S. Supreme Court’s ruling in Moseley v. Secret Catalogue, Inc., 537 U.S. 418 (2003), or an “actual economic injury” standard as espoused by other appellate courts.
The Revision Act permits owners of marks which are distinctive, either “inherently or through acquired distinctiveness,” to assert a claim. As such, the Revision Act reverses case law in those circuits which had applied the Dilution Act only to inherently distinctive marks.
Only marks which are famous to the “general consuming public” are protectable. Niche market fame is no longer acceptable. The Revision Act also elaborates upon some of the relevant factors in determining whether there is sufficient recognition of a mark, which now include the plaintiff’s “amount, volume and geographic extent of sales.”
The Revision Act specifically recognizes two types of dilution, by blurring and by tarnishment, and sets forth some of the relevant factors to be used by courts in evaluating dilution. In deciding whether there has been “blurring,” courts may analyze the similarity between the marks, the degree of distinctiveness, whether the famous mark is exclusive in its use, the degree of recognition, whether there was intent to create the association, and any evidence of actual association. Dilution by tarnishment is described as that which arises from a similarity of the marks that “harms the reputation” of the famous mark.
The Revision Act refines the definition of “fair use” to include “nominative or descriptive fair use,” such as use of a mark which identifies, parodies, or comments upon the famous mark.
In the case of unregistered trade dress, the Revision Act places the burden of proof on the party asserting dilution to prove that the trade dress as a whole is not functional and is famous, and that the fame does not result from the presence of a mark.
The Revision Act allows for monetary remedies if the mark at issue is used after the enactment date of the Revision Act and there is a showing of willfulness.