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Proving a Trademark Has Been Diluted: Theories or Facts?

36 Pages Posted: 27 Feb 2009  

J. Thomas McCarthy

University of San Francisco School of Law

Date Written: 2004

Abstract

Before and after the 2003 Supreme Court decision in Victoria's Secret, too many courts have assumed that an accused non-confusing trademark that closely resembles a famous mark would be likely to result in blurring and damage to the senior user's famous mark. The author opines that the main lesson of the Victoria's Secret case is that courts, in deciding claims for violation of the federal Anti-Dilution Act, should not rest their decision upon assumptions but should require evidence to prove the critical elements of a claim of dilution of a trademark. The author splits the anti-dilution prohibition into three elements required for a statutory violation for blurring: (1) multiple uses will likely occur such that they may cumulatively cause damage to the famous mark; (2) the accused mark is likely, to the ordinary consumer, to call to mind the famous mark; and (3) blurring will likely cause damage to ("dilute") the strength of the famous mark. The author argues that courts should demand a firm evidentiary basis to find that the three elements will in all probability occur.

Keywords: Victoria's Secret, confusion, confusing, non-confusing, trademark, famous mark, Anti-Dilution Act

Suggested Citation

McCarthy, J. Thomas, Proving a Trademark Has Been Diluted: Theories or Facts? (2004). Houston Law Review, Vol. 41, 2004. Available at SSRN: https://ssrn.com/abstract=1350067

J. Thomas McCarthy (Contact Author)

University of San Francisco School of Law

2130 Fulton Street
San Francisco, CA 94117
United States

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