A strong trademark is likely to keep your product from being confused with another, but it can still cause harm to your brand if someone else uses your trademark to sell something unrelated to your product or service. You may be on the lookout for others who may be infringing on your trademark but, it also may not be such a good idea to give someone a pass if they seem to be “borrowing” your trademark for an unrelated product or service.
What’s trademark dilution?
Trivializing and diminishing the power of a trademark is known as trademark dilution.
For example, say you own a pizza shop in a regional tourist destination and sell a product called a “Namor sandwich,” a hot sub made with freshly baked pizza dough. It’s so unique and popular that you successfully trademark the sandwich name. Then a local ice cream shop starts selling a Neapolitan ice cream sandwich and calls it “the Namor.” Even though no local in the area would confuse one for the other, the ice cream shop is borrowing the real Namor sandwich’s success to garner attention for its own product. This trivializes the “Namor sandwich” trademark because it blurs its distinctiveness. People who visit from out of town hoping to try the famous “Namor sandwich” don’t know whether to go to your pizza shop or the ice cream parlor.
The difference between trademark tarnishment and blurring
There are two kinds of trademark dilution: tarnishment and blurring. The above example with the Namor sandwich is trademark blurring. Blurring is the use of another’s trademark for an unrelated product that causes consumers to become confused as to what product or service the trademark applies.
Tarnishment is a little different. This happens when a trademark is used to sell a product or service that may be illicit, usually sex-, drug-, or crime-related, but also relates to using another’s trademark to sell a much more inferior product. For example, using Barbie’s trademark pink and the Barbie font for a pornographic website is an example of tarnishment. Even if the reasonable consumer wouldn’t think that the toy manufacturer has a pornographic website, the association still tarnishes the brand.
What about parody?
Federal law will not protect a brand or company from being made fun of. Parody is a fair use of someone’s trademark for comedy and social commentary. Parody can mimic, but not completely copy, trademarked elements, and must do so without intention to fool consumers into thinking that the parody is the same as the parodied.
A watch service or setting up and monitoring Google Alerts can assist with policing your trademark from dilution or tarnishment.
Still unsure? Ask a trademark attorney.
Our trademark lawyers can help you determine whether your trademark is being diluted or tarnished, and what action to take. Our trademark lawyers can also help you put an end to, or resolve, dilution to keep your trademark fresh and special. If you need assistance, contact our office at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
Law Office of Jason H. Rosenblum, PLLC © 2017 All rights reserved.