The Differences Between Trademark
Infringement & Dilution
July 9, 2022
The importance of a trademark for a business cannot be overstated. That is why business owners keep a close eye on instances of trademark infringement and dilution. Understanding the differences between trademark infringement and dilution and being able to recognize potential threats to your brand are critical for protecting your business and its continuous growth.
As a trademark attorney who has been defending individuals and businesses for decades whose marks have been infringed upon or diluted, I can help you understand how to take action against the violations. At the Law Office of Julie Scott LLC, I serve clients throughout the state of Missouri, including but not limited to Kansas City, Springfield, Rolla, and Columbia.
What Is Trademark Infringement?
In the eyes of the law, trademark infringement occurs when someone uses a protected trademark or service mark without the authorization of the owner and in a way that would likely cause confusion among consumers between the original and another product or service.
When trademark infringement occurs, the owner of the mark may have grounds to sue the infringing party to (a) prevent further use of the trademark and avoid confusion among consumers and (b) collect monetary damages.
The likelihood of “confusion” is the standard used in trademark infringement cases. A court will determine whether the defendant’s mark is similar enough to the plaintiff’s original mark. If infringement is likely to cause confusion to the general public, it can reduce the value of the trademark owner’s brand, resulting in a loss of profit and other monetary losses.
Some examples of trademark infringement include selling counterfeit or infringing products and using a similar logo, name of the product, and/or packaging.
What Is Trademark Dilution?
As a company grows and becomes more famous, it can become a victim of trademark infringement and also trademark dilution. “Trademark dilution” is a legal term that refers to a third party using a trademark or trade name that is very similar to a famous trademark, causing the blurring or tarnishment of the famous mark. As a result, the perception of the famous trademark in the eyes of the consumer can be impaired.
The blurring of the trademark occurs when the mark’s distinctiveness is impaired as a result of the existence of a similar mark. Tarnishment, on the other hand, is when the unauthorized use of a trademark damages the reputation of the original brand because of the lesser quality of the new mark.
Since trademark dilution applies only to famous marks, courts have to consider whether a mark is “famous” when determining whether the trademark owner is entitled to protection. Typically, courts examine the following factors to determine whether the mark is famous:
The geographic area in which the trademark has been used;
How long the trademark has existed;
The extent of the trademark’s use;
The advertising and publicity of the mark;
The distinctiveness and recognition of the trademark;
The mark’s channels of trade;
Whether it was registered at a federal level; and
The use of the trademark by third parties.
In trademark dilution cases, the trademark owner does not have to prove a possibility of competition. The only requirement to take legal action against the third party is to show a possibility of harm to the trademark owner’s famous brand.
How Do They Differ?
Now that you know what constitutes trademark infringement and dilution, you may still not fully understand the difference between the two:
Likelihood of confusion. One of the most prominent differences between trademark infringement and dilution is that the latter does not require the plaintiff to prove a likelihood of confusion. In other words, dilution may occur even if consumers were not misled by the infringing party.
Competition. Trademark owners suing for dilution do not have to prove that the goods in question compete. By contrast, showing competition is required when filing a trademark infringement claim.
Famous. While trademark infringement claims can be brought by an individual or business to protect any mark, only famous marks are protected against dilution.
Despite the differences between trademark infringement and dilution, these two actions both arise because a third party is using a similar trademark as another individual or business. Often, both trademark infringement and dilution occur in the same situations. It is vital to understand your legal remedies if you believe that someone is infringing upon or diluting your trademark. Consult with a knowledgeable trademarks attorney to discuss your particular case and find out about your options.
Let a Trademarks Attorney Help
If you are dealing with a trademark violation that is hurting your business, let me help you. As a trademarks attorney with an office in Kansas City, Missouri, I help clients throughout Missouri protect their intellectual property rights. Whether your trademark has been infringed upon or diluted, my law firm, the Law Office of Julie Scott LLC, can help you take legal action and protect your brand. Get a free consultation to discuss your unique case.