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Why trademark dilution cases can be challenging

On Behalf of | Apr 24, 2023 | Trademarks

Many intellectual property (IP) violations, such as trademark infringement, don’t involve someone outright stealing a company’s IP and passing it off as their own. A common type of trademark infringement, for example, is when a trademark is “diluted.”

There are two types of trademark dilution recognized under U.S. law. One, which is called “tarnishment” involves someone taking something that’s similar to a trademarked item and using it in a way that tarnishes the actual item and its company or creator in a way that harms them. 

For example, say that a gun manufacturer put an image of a character that looked very similar to a Disney character on its firearms. That could be considered a trademark tarnishment. Trademark tarnishment often also involves what’s called “blurring.”

What is trademark blurring?

Trademark dilution by blurring occurs when someone creates an image or other item that’s similar enough to something trademarked to confuse people – namely customers. In a trademark dilution case, the plaintiff needs to show that the defendant’s actions harmed them by doing one or more of the following:

  • Causing them to lose business (and money) to the defendant
  • Harming their reputation and business by providing an inferior product or service for which people mistakenly blamed the plaintiff
  • Making their own product or service (and their brand) less unique and, as a result, worth less

As noted, the question of whether a trademark is truly being diluted and whether a company has been harmed can be subjective. A company can show financial losses, but it can be harder to tie them to a specific act of trademark dilution. That hasn’t stopped the behemoth Apple, Inc. from threatening or pursuing litigation over the use of apples and even other fruit by small businesses and even individual artists whose products or services aren’t related to any of Apple’s business ventures. 

Whichever side of a trademark dilution case you’re on, it’s wise to have sound legal guidance to protect your business and make the strongest possible case.