Dilution's (Still) Uncertain Future

Dilution looked to be a potent weapon when Congress introduced it as § 43(c) of the Lanham Act in 1995. Indeed, some observers feared that it would be too potent (and in some contexts, such as cybersquatting, it successfully augmented traditional causes of action). But a series of court decisions, culminating in the Supreme Court’s 2003 Moseley v. V Secret Catalogue opinion, weakened dilution protection so profoundly that what remained wasn’t of much consequence. Congress has recently sought to breathe new life into dilution law, enacting the Trademark Dilution Revision Act of 2006 (“TDRA”). Some might see this as a legislative resuscitation of § 43(c), but it’s not quite accurate to characterize the TDRA in such categorical terms. On the one hand, the TDRA adopts a likelihood of dilution standard, abrogating the holding of V Secret. In addition, the TDRA expressly endorses tarnishment and blurring as forms of dilution, clarifies that dilution protection is available for marks that have acquired distinctiveness, eliminates “commercial” use as an element of the prima facie claim, and acknowledges, albeit in a back-handed manner, that dilution protection is available for trade dress. On the other hand, the TDRA also tightens the fame prerequisite, shuts the door to new forms of dilution, and arguably makes the use requirement stricter in other respects, all moves that may make dilution actions harder to sustain.