The past decade has seen a steady decline in accusations of federal trademark dilution, a trend that experts attribute to both tougher restrictions and diminishing returns.
Much of the dip can be linked to the gradual impact of the Trademark Dilution Revision Act of 2006, which raised the bar for what constitutes a sufficiently "famous" trademark to support a dilution claim.
Under the old dilution statute, courts would sometimes extend protection to trademarks that were “famous in context,” such as being well known only in a particular region, for example. However the newer law specifically defines "fame" more strictly as being "widely recognized by the general consuming public of the U.S.”
Lawyers have come to realize that many trademarks aren't eligible for a dilution claim. Under these tighter standards, bringing on a dilution claim for a trademark that clearly isn't "famous" is likely a waste of time and money. It also carries the risk of judicial blowback.
"The tougher fame requirements have been diminishing baseless claims of 'famous' marks, but they are still pled too frequently," said William Atkins, an Intellectual Property partner at Pillsbury.
"An owner of a mark often has an understandable bias as to the fame of the mark," Atkins said. "[But] the more challenging it is to prove that fame, the more one should avoid adding that dilution claim."
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