How Can I Protect My Trademark From Dilution?

Brand development and recognition are crucial components of any successful business. For many business owners, building a recognizable brand involves creating visually appealing logos, insignias, or other images that current and prospective customers can associate with you and your products. These images can legally be linked to your brand by securing trademark protections afforded by the federal government.

Sometimes, however, another individual or company will create a logo or image that is similar enough to yours that create customer confusion regarding the two brands. Legal action may be necessary to clear up the potential confusion, and such action sometimes takes the form of a trademark infringement claim. A successful infringement claim requires you to prove that potential consumers were confused by the other company’s mark—a bar that can be extremely difficult to reach. A trademark dilution claim, however, may be another option if the uniqueness of your protected trademark has been compromised.

Proving Trademark Dilution

The Trademark Dilution Revision Act (TDRA) governs these types of claims. The law, which was passed by congress in 2006, expanded the protections afforded to trademark holders by previous legislative measures including the Trademark Act of 1946 and the Federal Trademark Dilution Act. To bring a successful trademark dilution claim, your company must be able to prove each of the following four elements:

• Your business must have a famous and distinctive mark that qualifies for general trademark protections.
• That trademark must currently be being used to promote a commercial purpose.
• The trademark must have already been in existence prior to the first use of the allegedly diluting mark.
• You must be able establish that the diluting mark caused actual damage to your brand.

What Remedies Are Available?

There are two different types of remedies available in trademark dilution cases. Under the TDRA, you could seek:

• Injunctive relief: This is the most common remedy for trademark dilution cases and can be sought in every case. Essentially, injunctive relief simply means that the court will tell the offending party to immediately stop using the diluting mark. This will stop any further damage from being done to your brand.
• Compensation: In trademark dilution cases, financial compensation is usually reserved for cases in which the offending party’s actions were particularly egregious or the damages to a company’s brand were especially large. For example, if another company unintentionally used a diluting mark, and then stopped when instructed by the court, it is unlikely that financial compensation will be ordered. However, in cases where a diluting mark was used intentionally or was used after the court directed the party to stop, financial compensation may be available.

A Hoffman Estates Trademark Lawyer Can Help

If you believe that another company is using a logo or wordmark that is similar to one of your protected trademarks, it is important to seek the guidance of our experienced Naperville business law attorneys. Call the Gierach Law Firm at 630-228-9413 and put our knowledge and skill to work for your company today.

Sources:

Trademark Dilution Revision Act of 2006

International Trademark Association