Trademark infringement v. dilution: Know the difference

On Behalf of | Mar 15, 2021 | intellectual property & trade secrets

There is no way to overstate the importance of a company’s trademark. California business owners know just how critical they are in the business world, which is why they monitor the use of their trademark so closely. That way, they can protect their brand and business proactively against threats to their trademark.

However, when a company’s trademark becomes famous and well-known, such as Nike, Coca-Cola, Apple or even Google, they might face a high risk of infringement, and possibly a higher risk of trademark dilution.

What is the difference?

Trademark infringement and dilution are different, even though they frequently occur in the same situations and legal claims. But business owners must understand the differences between the two claims. For example:

  • Trademark infringement: As we have discussed in past blog posts, this is the unauthorized use of a company’s trademark by a third party. This misuse creates confusion for consumers.
  • Trademark dilution: On the other hand, this is the use of a famous trademark that causes the original mark to lose elements of its unique identity or damages the trademark’s worth and brand.

Courts will consider several factors to determine if the trademark is famous enough to suffer dilution, such as the overall brand recognition as well as the registration information.

The biggest issue with dilution? Parodies

A diluted trademark is often a parody of the original trademark. Since it is one of the most common reasons for trademark dilution, it is also one of the most common defenses.

For example, one of the most recent cases involved the famous whiskey brand, Jack Daniels. The parent company of the other party, VIP Products, created a dog toy called “Bad Spaniels,” which held the same shape and design as the Jack Daniels bottle. Despite humorous intentions, Jack Daniels filed a trademark dilution suit.

Even though there is no likelihood of confusion, Jack Daniels’ claim insinuates that their business and products could suffer damage through the mockery of their trademark. Yet, the culture and focus on free speech that surrounds parodies makes these claims particularly challenging.

Regardless of whether businesses face a trademark infringement or dilution threat, they must ensure they understand the details of federal and California trademark laws before they move forward. It is also helpful in these cases to consult with an experienced business attorney, so business owners can protect their rights to their trademarks.