Written by a team of international experts, marshalled by one of the world’s foremost trademark lawyers, Trademark Dilution and Free Riding is the leading comparative work on trademark dilution. This book is a must-have resource for trademark professionals worldwide, and will also stand as a valuable reference point for intellectual property scholars.
In the decade following passage of a federal right of anti-dilution, the biggest question in trademark law was how to prove dilution. This is a clear sign of something. Can no smart attorney, judge, or social scientist figure out what dilution is in order to prove it? Dilution has proven to be a "dauntingly elusive concept" for the courts. Even in the Supreme Court, nearly all of the questions from the Justices In oral argument in Moseley v. V. Secret Catalog were seeking to simply understand what dilution is. Unless they simply know it when they see it, other courts either do not get dilution, or else they just do not like it. Some courts that have ruled in dilution cases have read additional restrictions into the act. What these courts are doing can be characterized as "judicial nullification." These courts seem to be uncomfortable with the apparent breadth of the new right and are seeking to reign it in with additional limitations. The Supreme Court in the V. Secret case also evidenced some distaste for dilution, but admirably tried to wrestle it down nonetheless. The Court ultimately failed to define dilution and acknowledged this by holding that whatever dilution is, at least you have to prove it. Trademark owners advocated for a likelihood of dilution standard rather than an actual dilution standard because of the difficulty in proving dilution. The Supreme Court could not provide guidance because it could not conceptualize the harm that it thought should be proven. The trademark bar takes it on faith that dilution exists and would like it to be presumed in certain circimstances. The main problem with dilution law is that it provides a remedy without a supportable theorization of the harm. The debate about actual versus likely dilution revealed a radical truth: dilution is a remedy in search of a harm. It is not a strong sense of harm that is motivating the push for dilution protection. Instead, it a strong reaction to a perceived sense of the bad faith on the part of defendants. When defending dilution, proponents frequently state that defendants in dilution cases can only have bad faith intentions to use these famous marks. Dilution protection is therefore desired not so much to protect famous trademark owners' property, but instead to protect against others' free rides.If dilution is really about preventing the unfair advantage that results from the non-confusing use of a famous mark, then this really is unfair competition legislation. But an unfair competition right without strict boundaries could easily become a right in gross for the trademark owner.
Trademark dilution needs to be rethought to ensure that it enhances social welfare. Blurring should only be considered harmful when it increases consumer search costs. The fact that a trademark calls to mind two different products should not itself be considered actionable. Blurring only causes real harm when it interferes with consumers' ability to remember brand attributes. The Coase Theorem suggests that anti-dilution statutes will not block beneficial, non-competing uses of a mark, because, if transactions costs are low and the use is socially beneficial, the trademark owner will license the use. Unfortunately, the "naked licensing" rule, which forbids unsupervised licenses, adds unnecessary transactions costs and blocks potentially beneficial uses. Some commentators think free riding is or should be the essence of dilution. If free riding causes no harm - no consumer confusion, no blurring, and no tarnishment - then it is socially beneficial and should be allowed.
What remedy does a car manufacturer have to prevent the use of its trade mark for cosmetics, confectionery, office furniture, or any one of a number of dissimilar uses? Except in cases of public deception, the answer was none until the doctrine of trade mark dilution was first introduced into English law and into much of Europe with the advent of the Trade Marks Act 1994 and the EC Trade Marks Directive. This doctrine, `misunderstood, misconstrued, and misapplied' since it was introduced into American law nearly 70 years ago, exists to prevent one trader taking unfair advantage of the name or mark, usually well established, of one business and using it for the exploitation of goods in areas in which the well-known trader is not presently active. This controversial and complex area of law is now of very considerable interest to lawyers, trade mark and patent agents and their business clients throughout the European Union where specific anti-dilution provisions have been widely introduced. Its appearance is timely given the uncertainty about the relevant provisions of the Trade Marks Act 1994 and there can be no doubt that practitioners in the field will be eager to buy and read this book.
The world has changed materially since the foundation of traditional trademark laws, according to which the purpose of a trademark was to serve as a differentiating source indicator, preventing source confusion in the marketplace. Traditionally, trademarks protected the public from likelihood of confusion, assisted in consumer decisions and reduced search costs. The need to award a special scope of protection to famous trademarks from use on non-competing goods was first discussed in Kodak in 1898, holding that the use of the word Kodak for a bicycle company does not mislead consumers but takes unfair advantage of reputation. However, the most significant point in the evolution of dilution, in its early stages, was the case of Odol decided in 1924, which was the first to acknowledge the need to protect the advertising power of trademarks from being diluted, even in the absence of a likelihood of confusion. This book will provide that dilution is a 'sui generis' brand remedy applicable to reputed trademarks in accordance to their aggregated inherent and acquired strength. The book will address the non-harmonised nature of dilution, which reflects a problem in an age of borderless trade and cyber commerce and emphasises the need to answer the question: To what extent should reputed trademarks be protected by dilution beyond the traditional trademark protection from likelihood of confusion? The book includes a proposal for an operative legal framework based on conclusions and distinctions derived from the comparison of dilution, as adopted and interpreted in different areas of the world, comparative case studies and comparison with neighbouring legal rights, such as Tort Law, Unfair Competition, Moral Rights, Equitable Rights, Publicity Rights and Unlawful Enrichment.
The confusion that has accompanied the effort to graft a dilution remedy onto federal trademark law has sown deep uncertainty about the remedy's proper scope and purpose. This confusion is an outgrowth of the peculiar history of dilution theory in the development of trademark law, and the resulting tension between uniqueness-based theories of dilution and theories based on free-riding concerns. This article takes the position that the current conceptual framework for trademark liability is misguided. By focusing its analysis on consumer beliefs about the relationship between a mark and a manufacturer, current trademark doctrine is ignoring a far more persuasive justification for the imposition of liability: debiasing. This article argues that trademark liability is best understood as a legal regime designed to harness the efficiencies of boundedly rational consumer decision-making, while minimizing the effects of resulting biases and errors. An overview of trademark cases reveals that while courts purport to analyze consumer beliefs about the mark/maker nexus, they in fact rely on a limited set of proxy measurements that have little to do with those beliefs. Instead, the proxy factors appear to represent features of the marketplace with strong potential to trigger cognitive phenomena that can generate bias and error. Understanding these phenomena and using them as a guide to set the boundaries of liability provides a more coherent and persuasive justification for the trademark regime than current competing rationales, and offers a potential solution to the long-standing debate between free-riding and uniqueness theories of dilution that would harmonize those theories with infringement policy.
The Trademark Guide: A Friendly Handbook for Protecting and Profiting from Trademarks is an invaluable reference tool for both businesses and individuals looking to master the law and glean the best strategies for benefitting from trademarks. Clear-cut and completely up-to-date, this comprehensive guide covers what can and cannot be protected, duration and scope of protection, notice and registration, how to avoid and evaluate infringement, and how trademarks are used and abused in the marketplace.
