Title

Is A Rose by Any Other Image Still a Rose? Disconnecting Dilution’s Similarity Test from Traditional Trademark Concepts

Publication Date

Spring 2008

Document Type

Article

Abstract

Federal dilution doctrine suffers the typical growing pains of an adolescent struggling to determine its identity and boundaries. Congress did not create a federal dilution claim until 1995 and significantly amended in 2006. As currently conceived in the Lanham Act, a federal dilution by blurring claim involves the owner of a famous, [senior] mark bringing suit against the owner of a junior mark, which must be used after the senior mark has achieved fame, but only if the junior mark is sufficiently similar to impair the distinctiveness of the senior mark. The statute identifies several factors that can be used to determine if the junior mark impairs the senior mark, also called blurring, but this list is not exclusive, and determining the relevance of other factors requires understanding the harm purportedly prevented by the dilution doctrine. As courts struggle to articulate the purpose of the dilution by blurring doctrine and apply the new test, current and future trademark owners are left speculating whether their new marks could be subject to a blurring claim. This article describes the evolution of the dilution doctrine, discusses the difficulty courts have had in evaluating the similarity between marks for a dilution claim, identifies the intrinsic purpose for dilution claims and applies the methodology for determining substantial similarity in copyright infringement to dilution claims. Because dilution by blurring depends upon evaluating numerous factors, including similarity of marks, this test can only identify whether a mark is sufficiently dissimilar to the famous mark to avoid a dilution claim. In other words, the proposed test assists trademark owners in understanding when a rose image is sufficiently distinct from another rose image to avoid a dilution claim.

Publication Title

University of Toledo Law Review

Volume

39

Issue

3

Share

COinS