Re: Trademark dilution

On 3/11/98, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>

[discussion thread on the policy arguments justifying dilution laws]
>
> I think the problem is a little broader than that. Some dilution cases
> can indeed be characterized in the way Tyler suggests. But there is
> potential for harm even in the total absence of confusion, because a
> mark that stands alone is necessarily stronger than one that coexists
> with a number of other marks. It is that latter harm that dilution
> addresses, I think.

This highlights what I see as a major problem with the Federal Trademark Dilution Act.

Yes, it seems lots of people agree that a "mark that stands alone" (namely a unique, generally coined mark) ought to be able to be protected against loss of uniqueness. An oil company that calls itself "Exxon", and that thus did not attempt to appropriate a dictionary word and deny use of the dictionary word in commerce in pereptuity, ought to be able to keep others from using its unique, coined word.

But the FTDA does not only give its sweeping powers to holders of unique, coined marks. It offers its threat of strong remedies to *anyone* who *thinks* that his or her trademark is "famous", and since there is no definition of "famous" in the Act, it is difficult to imagine getting such a case dismissed except at prodigious expense. Many of the highest-visibility cases in which the FTDA has been asserted are cases in which the mark was non-unique and non-coined.

As an example: Hasbro asserting the FTDA against Clue Computing, Inc. because of its trademark in "Clue", a board game for children.

Prince Sporting Goods (a maker of tennis rackets and the like) asserting the FTDA against Prince PLC, a provider of computer software training services.

Neither "Clue" nor "Prince" is a "mark that stands alone", yet the FTDA offers such plaintiffs the sort of remedies that are probably justifiable only for a "mark that stands alone".

Carl Oppedahl
<carl[_at_]oppedahl.com> Received on Thu Mar 12 1998 - 15:31:00 GMT