Dilution of famous marks


Robert Kenney and Katie Peden

US Congress enacted the TDRA in 2006 following the US Supreme Court’s 2003 decision in Moseley v V Secret Catalogue, Inc, which held that the FTDA required “a showing of actual dilution, rather than a likelihood of dilution”.

The TDRA (Trademark Dilution Revision Act) provided for relief based on use of a mark that is “likely to cause dilution”, but it also made extensive rewrites to the repealed FTDA (Federal Trademark Dilution Act) that required clarification by the courts.

A primary issue of statutory interpretation that has arisen under the TDRA has been the degree of similarity between marks that is required for a finding of dilution. The US Court of Appeals for the Ninth and Second Circuits have recently found agreement on this issue. In February, the Ninth Circuit’s decision in Levi Strauss & Co. v Abercrombie & Fitch Trading Co brought it in line with the Second Circuit’s 2009 decision in Starbucks Corp. v Wolfe’s Borough Coffee, Inc.

In Levi Strauss, the Ninth Circuit confronted the issue of whether the ‘identical or nearly identical’ requirement established by case law under the FTDA survived under the TDRA. At trial, the jury was asked whether the two marks were identical or nearly identical as part of its advisory rulings on factual issues related to the dilution claim.

dilution, well-known marks