Implementing a Registration System for Famous Trademarks

Abstract

To address the problem of determining what marks are famous under the Federal Trademark Dilution Act, the uneven application of fame standards by courts under the Act and the resulting difficulty in trademark screening, this article proposes the creation of a system for registering famous marks, namely a Fame Register. Unless a mark is registered on the Fame Register, the senior mark owner would not be entitled to bring a claim under the FTDA. There would be several benefits. First, it would create a single, uniform system to determine whether dilution law may protect a senior mark. Second, a Fame Register would create a searchable database of the limited number of marks that are eligible for protection under the FTDA. Third, a Fame Register would afford the owners of famous marks greater certainty about the scope of their protection; particularly if, as proposed below, registration constitutes prima facie evidence of fame in litigation.

Keywords: trademark, dilution, fame, famous mark, infringement, FTDA