The TDRA promised that brand owners whose famous marks have been diluted would not have to meet the almost impossible burden of proof that was being required under the old statute. But the doctrine of dilution—which has raised strong opinions since it was proposed by Frank Schechter in the 1920s—has recently come “under severe attack” by academics and has caused confusion in the courts, according to panelists at yesterday’s session, The Great Dilution Debate.
Professor Barton Beebe of the NYU School of Law said that he’s unclear why dilution protection is necessary. He asked whether dilution “gives you anything you cannot get from a confusion [claim]?” Beebe analyzed 277 opinions issued between October 2006 and October 2011 that involved a dilution claim and found that one in five of the opinions cited the pre-2006 Federal Trademark Dilution Act.
“One in five apparently had no idea there was a new law,” said Beebe. Other opinions quoted from both the old and new laws. “This is disturbing,” Beebe added, suggesting that separate anti-blurring and anti-tarnishment laws might be more effective. “The mysterious overarching concept of dilution is continuing to cause confusion.”
Steven Weinberg of Holmes Weinberg disagreed with Beebe. “I think the TDRA is a good thing. What we’ve done with it is not nearly as good,” said Weinberg. He said that part of the problem is that the trademark bar cannot get its story straight as far as what it wants from dilution protection. “We have to figure out what we’re trying to achieve.”
