What Makes Trademark Dilution Different Than Infringement?

Trademark law distinguishes between two different types of violations. Infringement occurs when one business uses a logo, slogan or other type trademark that is registered by a marketplace competitor, potentially causing confusion among the public. For example, if a maker of computers or cell phones besides Apple used a multicolored apple on their product or packaging, that would constitute infringement. 

Conversely, trademark dilution does not necessarily trigger that type of confusion among consumers, but can tarnish the reputation of the rights holder. Under the law, dilution can occur only if the trademark is famous. If a local dog-walking service uses the same multicolored apple in its advertising, it wouldn’t make someone mistakenly purchase a device from an Apple competitor, but it could harm the technology company’s brand. 

The federal Trademark Dilution Revision Act of 2006 says that courts can consider the “duration, extent and geographic reach of advertising and publicity of the mark” as well as the amount and geographic reach of sales and the “extent of actual recognition of the mark.” A party that dilutes a trademark makes that famous mark less distinct, lessening its uniqueness and value.

The most common type of trademark dilution is called “blurring.” That occurs when another party creates a logo or image that is similar enough to the trademarked original for consumers to mistake it for that original. Financial harm could be demonstrated by a loss of sales, though can be a challenge to quantify. If the diluted or blurred product is inferior, it can also cause harm to that original. 

When a diluted trademark is used for a product or service that is antithetical to what the original represents, that is called “tarnishment.” A company like Disney might have a tarnishment claim if a manufacturer of liquor or cigarettes uses Disney’s distinctive logo typeface in the advertising or sale of its products. 

In dilution claims, a key defense might be that the allegedly diluted brand is not famous enough to support this type of action. However, regardless of the prominence of a given brand, businesses can still allege trademark infringement if the marks and products are similar enough to cause consumer confusion among competitors.  

At the Law Offices of Donald W. Hudspeth P.C. in Phoenix, we provide insightful legal representation for parties on both sides of trademark disputes here in Maricopa County and throughout Arizona. To schedule a consultation, please call 866-696-2033 or contact us online.