The Science of Proving Trademark Dilution

109 Trademark Reporter 955 (2019)

NYU Law and Economics Research Paper No. 19-46

22 Pages Posted: 18 Dec 2019 Last revised: 22 Dec 2019

See all articles by Barton Beebe

Barton Beebe

New York University School of Law

Roy Germano

New York University School of Law

Christopher Jon Sprigman

New York University School of Law; New York University (NYU) - Engelberg Center on Innovation Law & Policy

Joel Steckel

New York University (NYU) - Department of Marketing

Date Written: December 13, 2019

Abstract

In this short commentary, we discuss our recent empirical scholarship on the vexing question of how to prove claims that a trademark has been diluted by “blurring.” We first discuss the current confusion in the federal courts over what qualifies as proof of dilution. We then report the results of two experiments that test different ways that plaintiffs may seek to prove these claims. Our bottom line is clear: the test that has been employed by most federal courts — what we refer to here as the “mere association test” — is an invalid measure of trademark dilution. The important question, which we take up later in this commentary, is how to improve upon that failed approach. We offer a new “association strength test” that can be used to prove — or, to disprove — dilution by blurring. This test offers a valid construct for measuring trademark dilution. Those who are interested in the full details of our research should consult the longer article, Testing for Trademark Dilution in Court and the Lab, 86 U. Chi. L. Rev. 611 (2019), from which this commentary is drawn.

Keywords: trademark, dilution, experiment, IP, intellectual property, law and economics

Suggested Citation

Beebe, Barton and Germano, Roy and Sprigman, Christopher Jon and Steckel, Joel, The Science of Proving Trademark Dilution (December 13, 2019). 109 Trademark Reporter 955 (2019); NYU Law and Economics Research Paper No. 19-46. Available at SSRN: https://ssrn.com/abstract=3503685

Barton Beebe

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012-1099
United States

Roy Germano

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012-1099
United States

Christopher Jon Sprigman (Contact Author)

New York University School of Law ( email )

40 Washington Square South
NY, NY 10012
United States

New York University (NYU) - Engelberg Center on Innovation Law & Policy ( email )

New York, NY
United States

Joel Steckel

New York University (NYU) - Department of Marketing ( email )

Tisch Hall
40 W 4 St.
New York, NY 10012
United States
2129980521 (Phone)

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