The Trademark Use Requirement in Dilution Cases

Santa Clara Comp. & High Tech. Law Journal, Vol. 24, p. 541, 2008

Stanford Public Law Working Paper No. 1033165

17 Pages Posted: 2 Dec 2007 Last revised: 6 Feb 2011

Stacey L. Dogan

Boston University - School of Law

Mark A. Lemley

Stanford Law School

Date Written: February 2, 2011

Abstract

The trademark use doctrine plays a critical role in ensuring that trademark law serves its proper purpose of encouraging market exchange and lowering consumer search costs. As we have explained in detail elsewhere, the doctrine ensures that trademarks do not become a weapon used to suppress speech or to interfere with rather than promote the efficient operation of the marketplace.

Those goals are even more important in the context of trademark dilution. Unlike a normal cause of action for trademark infringement, trademark dilution gives broader rights to a few famous mark owners to prevent even non-confusing uses in order to protect the uniqueness of their marks against blurring and tarnishment. But because trademark dilution can exist even when goods do not compete, and even absent any likelihood of confusion, it is even more critical that the universe of actions that can give rise to dilution be cabined by a clear and effective trademark use doctrine.

The Lanham Act has had a trademark use limitation on dilution since the first dilution legislation was enacted in 1996, but recent amendments have changed the language and scope of that limitation, leading to some confusion about what is and is not protected. In this article, we parse the language and legislative history of the 2006 Trademark Dilution Revision Act and explain why the trademark use requirement in the new statute not only survives but is more robust than before.

Suggested Citation

Dogan, Stacey L. and Lemley, Mark A., The Trademark Use Requirement in Dilution Cases (February 2, 2011). Santa Clara Comp. & High Tech. Law Journal, Vol. 24, p. 541, 2008; Stanford Public Law Working Paper No. 1033165. Available at SSRN: https://ssrn.com/abstract=1033165

Stacey L. Dogan

Boston University - School of Law ( email )

765 Commonwealth Avenue
Boston, MA 02215
United States

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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