Trademark dilution is an important concept that every trademark searcher must pay attention to. Trademark dilution in the legal context occurs when a mark or a portion of a mark exists in a crowded field. The United States Court of Appeals for the Federal Circuit has held that evidence of extensive registration and use of a term by others for similar goods can be powerful evidence of the term’s weakness. If the evidence establishes that the consuming public is exposed to widespread third-party use of similar marks for similar goods, it is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.
There is a lot to unpack in what evidence will establish dilution or a crowded field. First, the other marks must be used in connection with related goods or services. Too often trademark searchers mistakenly believe that they need to focus on the marks only. If the goods or services associated with those marks are not related to your goods or services, then those marks to not demonstrate dilution.
Second, while the registration question is easy to determine (i.e., the mark is either registered or it’s not), the use question can be more difficult. All use is not equal, it must be put in context because the objective at the heart of every trademark issue is consumer protection. So the examination of every factor is designed to determine if consumers are likely to be harmed. Moreover, a federal trademark issue must assess what is likely to happen to consumers nationwide, not within a specific geographic area.
With that background, back to the evidence to establish dilution. Limited use of a mark for related goods does not establish dilution. A good example is the restaurant industry and the thousands of single location restaurants. Just because a handful of single location restaurants sharing the same or similar name co-exist in the United States does not mean that the name is diluted. The key is whether the use demonstrates that an appreciable number of consumers are likely to encounter the use of the marks that support the dilution finding.
Why does this matter? It matters because dilution impacts how you assess the similarity of the marks factor. If a mark is weak, then its scope of rights is narrow, which may open the door for differences in the marks to be sufficient to avoid a likelihood of confusion.
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