Differences Between Trademark Infringement and Trademark Dilution

The legal concepts of infringement and dilution are both designed to help protect viable trademarks. However, they have different standards and apply to different types of marks. Trademark infringement requires a showing of a likelihood of confusion relative to identified goods and services sold into commerce under an asserted trademark. On the other hand, trademark dilution does not require a showing of a likelihood of confusion. However, unlike trademark infringement, dilution may only be asserted against famous marks. As a result of these differences, infringement, and dilution are not interchangeable when protecting your brand. This means that if the requisite standard for one legal concept cannot be satisfied, it cannot be swapped out or combined with the other to satisfy the requisite standard. The characteristics of trademark infringement and dilution are discussed below, as well as critical differences between their standards.

Trademark Infringement

Trademark infringement is the unauthorized use of a trademark on or in connection with goods and services in a manner that is likely to confuse as to the source of those goods and services.

To establish a trademark infringement, claim in a registered mark or an unregistered mark, the plaintiff must establish:

• ownership of a valid and legally protectable mark;

• rights in the mark are senior to the defendants' rights and

• The defendant's mark is likely to cause consumers to be confused about the source or sponsorship of the goods or services offered under the parties' marks. 

The likelihood of confusion element is the central focus of any trademark infringement claim. A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark.

Factors relevant to a determination of a likelihood of confusion include:

• The strength of the trademark owner's mark;

• The degree of similarity between the trademark owner's mark and the allegedly infringing mark;

• Evidence of actual consumer confusion;

• The marketing channels used;

• The type of goods involved and the degree of care likely to be exercised by the purchaser;

• The alleged infringer's intent in selecting the mark;

• Other facts showing that the consuming public is likely to expect the trademark owner to manufacture a product in the alleged infringer's market or is likely to expand into that market.

An alleged infringer may assert the defenses of fair use and collateral use. Fair use allows commentary or criticism that incidentally involves using a trademark so long as such use is for a purpose other than that of a standard trademark. Collateral use allows the party to identify a trademarked item that is a component of a larger product or project.

Trademark Dilution

Trademark dilution refers to the unauthorized use or application in commerce of a mark that is sufficiently similar to a famous trademark in a manner likely to weaken the distinctive quality or harm the famous trademark. For example, an appliance company may dilute the Apple trademark by putting the Apple logo on household appliances sold to consumers, confusing the consumers as to whether Apple has begun manufacturing and selling these appliances.

Unlike trademark infringement, dilution is not based on a likelihood of confusion. As such, dilution does not involve an unauthorized use of a mark in connection with goods and services that are confusingly similar to those offered in connection with the famous mark. The primary concern is the potential harm to the famous mark's reputation or distinctiveness.

In the United States, the Federal Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c), creates a federal cause of action to protect famous marks from dilution. The FTDA defines two forms of dilution: blurring and tarnishment.

Dilution by blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark (See 15 U.S.C. § 1125(c)(2)(B)). In determining whether a mark is likely to cause dilution by blurring, the following factors may be considered:

• The degree of similarity between the mark and the famous mark.

• The degree of inherent or acquired distinctiveness of the famous mark.

• The extent to which the owner of the famous mark is engaged in substantially exclusive use of the mark.

• The degree of recognition of the famous mark.

• Whether the user of the mark intended to create an association with the famous mark.

• Any actual association between the mark and the famous mark.

Dilution by tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark (See 15 U.S.C. § 1125(c)(2)(C)). This often happens when a similar mark is associated with inferior goods or services that the famous trademark owner believes are inappropriate for association with the famous mark.

A mark is considered famous if the general consuming public of the United States widely recognizes it. In determining whether a mark possesses the requisite degree of recognition, the following factors may be considered:

• The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

• The amount, volume, and geographic extent of sales of goods or services offered under the mark.

• The extent of actual recognition of the mark.

Specific uses of a famous trademark are not actionable as dilution. These excluded uses are:

• Fair use includes (i) advertising or promotion that permits consumers to compare goods or services and (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the famous mark owner's goods or services.

• All forms of news reporting and news commentary.

• Any noncommercial use of a mark.

Therefore, the owner of a famous mark is entitled to an injunction against another person who uses a mark or trade name that is likely to cause dilution of the famous mark, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.

Critical Differences Between Infringement and Dilution

Trademark infringement and dilution operate under different legal frameworks and serve different purposes in protecting a brand. A few key differences are the following:

• Likelihood of Confusion: Trademark infringement is based on a likelihood of confusion among consumers for identified goods and services. In contrast, trademark dilution can occur without confusion or direct competition between the goods and services provided under the marks.

• Famous Marks: Trademark infringement applies to all marks that serve as source identifiers. In contrast, trademark dilution applies only to "famous marks."

• Legal Remedies: Trademark infringement remedies may include injunctive relief and monetary damages. The remedy for trademark dilution is primarily injunctive relief, although monetary damages may be available for willful activities.

• Goods and Services: Trademark infringement generally involves similar or related goods and services. In contrast, dilution can occur across industries for unrelated goods and services.

• Defenses: Trademark infringement and dilution claims may be defended based on free speech and fair competition claims. In addition, trademark dilution claims may be defended based on fair use, including parody and commentary claims.

How TCP Law Can Help

A TCP Law trademark attorney can help you evaluate trademark infringement and dilution issues.

For assistance with assessing the infringement or dilution of a registered or unregistered mark or with any trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.