Trademark law protects the mark owner’s reputation attached to the mark and the associated goods. Dilution is a claim against another person who uses a similar mark and injures the reputation of the mark owner’s trademark. Blurring and tarnishment are two types of a dilution cause of action. A claim of blurring is used to prevent the erosion of a mark’s selling power by eradicating the consumer’s automatic association of the mark on the goods with the source (i.e. mark owner). Tarnishment is usually created by advertising or marketing efforts that impair the consumer’s favorable images of the mark.
Federal dilution law protects marks from unauthorized uses that are likely to lessen the mark’s distinctiveness and harm its reputation. The federal statute requires that there is actual dilution, which means the consumers actually think differently or negatively about the mark. Additionally, under federal law, only marks that are famous will be protected from dilution. However over half of the state’s dilution statutes protect marks against blurring and tarnishment and showing likelihood of confusion as to the source is unnecessary. However, most states do not require that the mark be famous.
Fair use is a defense to a dilution claim. It is when a famous mark is used without indicating a source or origin for one’s own products and services and it must negate the likelihood of confusion. Descriptive use is when the mark is being used to describe the characteristics of a product or service (i.e. a mark “microcolor” was used to describe the make-up’s features). Nominative fair use is when the mark was used to describe or refer to a mark owner’s products. This may occur when third party reasonably believes it is necessary to use the mark to identify the product, but the third party cannot suggest sponsorship or endorsement by the trademark holder. For example, if a newspaper is using a hotline to conduct a survey about who is the sexiest member of New Kids on the Block.
Noncommercial fair use is when the third party uses the mark to identify and describe the mark and their use is not primarily intended to gain a profit. In sum, a third party may have a defense against a trademark owner’s dilution claim for any fair use of a famous mark by another that is not used as designation of the source of the third party’s own goods or services. This includes descriptive and nominative fair use, ads or promotions to compare goods or services, for identification, parodying, criticizing or commenting purposes and any noncommercial use.