U.S. Trademark Dilution Act Likely To Be Reinvigorated

Originally published in Trademark World, October 2006

In 2003, the United States Supreme Court's decision in Moseley v. V. Secret Catalogue, Inc. (Trademark World February 2003 and May 2003) left trademark owners concerned about their ability to adequately protect their famous marks against dilutive uses. Now the trademark community can look forward to the likely passage of the Trademark Dilution Revision Act (the Act), which reinvigorates the Act in favour of owners of famous marks.

The Act relieves them of the difficult task of proving actual dilution, for it explicitly entitles the owner of a famous mark to injunctive relief if dilution of its mark is likely, regardless of any actual or likely confusion, of competition, or of actual economic injury. It gives the court the flexibility to consider all relevant aspects when determining