No. It is not necessary to prove likelihood of confusion to prevail on a trademark dilution claim. The harm caused by dilution is loss of distinctiveness or damage to reputation, not consumer confusion.
Is it necessary to prove likeilihood of confusion to succeed on a dilution claim? Read More »
Dilution by blurring occurs when the distinctiveness of a mark is reduced. This can occur when a person uses a famous mark to market different, unrelated goods or services. Example: Using ROLEX as a trademark for restaurant services.
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Trademark dilution is the weakening of the distinctiveness of a trademark.
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Courts consider a variety of factors to determine whether a likelihood of confusion exists. Similarity of the marks and the similarity or relatedness of the goods or services are the most important factors. Courts also look at things like the similarity of marketing channels, the strength (distinctiveness) of the original mark, intent to deceive, actual
How do courts assess the likilihood of confusion? Read More »
Yes. The USPTO can cancel a registration for a particular class or classes of goods or services while leaving the registration intact for another class or classes of goods or services. The Trademark Modernization Act allows the USPTO to expunge or reexamine specific classes of claimed use that lack evidence of actual and continuing use
It is possible to lose trademark rights by failing to enforce them. Failure to enforce trademark rights does not automatically invalidate the trademark. but allowing infringing uses can dilute the distinctiveness of a trademark or lead to it becoming generic. To remain viable as a trademark, it must operate to distinguish a product or service
Will I lose my trademark if I don’t enforce it? Read More »
Yes. The maxim, “Use it or lose it ” applies to trademark law. Trademark rights continue only so long as all five criteria for the existence of a valid trademark continue to be met. Those criteria are: (1) a word, symbol or other thing; (2) use in commerce; (3) functions as an identifier of the
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A fanciful mark is a made-up word, design, etc. EXXON is an example. It is a word that has no meaning and serves no purpose in language other than as the name of a business and the source of the products the business sells. Fanciful marks are inherently distinctive.
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An arbitrary mark is an actual word or thing, but one that bears no logical relationship to the product or service to which it relates. APPLE as a trademark for computers is an example. Arbitrary marks are inherently distinctive.
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A suggestive trademark is like a descriptive mark in that it describes a quality or feature of the product or service. The difference is that it does not do it directly. It requires an additional step in the thinking process to make the connection. JAGUAR as a brand identifier for a motor vehicle is an
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