The Irrelevance of Trademark Dilution

In 2006, Congress passed the Trademark Dilution Revision Act (TDRA).  This statute overruled the Supreme Court’s 2003 decision in Mosley v. Victoria’s Secret, which interpreted the 1996 Federal Trademark Dilution Act.  Specifically, the TDRA confirmed that: (1) tarnishment was a recognized cause of action under federal law; and (2) that the standard courts should apply in dilution cases was “a likelihood of dilution” rather than “actual dilution.”

What impact has the TDRA had so far?  The answer is none.  Barton Beebe (who in my opinion does the best doctrinal research in IP these days) wrote a piece not that long ago pointing out that there is no case that has found a violation of the TDRA without also finding trademark infringement.   The federal dilution remedy, in practice, is entirely superfluous.  A recent Westlaw search indicates that this is still the case, though I would be interested if anyone knows of a contrary case.

Why is this true?  Several years ago I wrote an article arguing that dilution by blurring was conceptually incoherent and served only as a “safe harbor” that allowed courts to extend trademark protection in situations where technological or economic change had rendered infringement law obsolete. (Dilution by tarnishment is coherent, but it just rarely occurs in a way that is independent from infringement.)  That occurred twice in the last century.  One followed the development of mass-marketing during the early twentieth century and prompted the original dilution proposal.  The second came in the 1990s as a result of ecommerce.  In both cases, infringement eventually caught up with the times or was supplemented by other law (for example, the Anti-Cybersquatting statute). When that happens, dilution goes into hibernation.  We are now in one of those dormant periods.

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