Trademarks, once issued, must be protected. Even if a trademark is copied in an illegal manner, it can lead to long-lasting damage to the strength of the brand. This is exactly why the Federal Trademark Dilution Act (FTDA) has been put in place. It was established in the effort to protect famous brands from the "piggybacking" off third parties when they try to illegally use their trademark.
This act was welcomed by many and largely seen as overdue. However, it is not perfect. It has been criticized largely because it requires that the person taking action must prove that the third party not only used their trademark illegally, but also that through this act, they also caused dilution. This can be very difficult to prove, and dilution can come in the form of damage that can't be measured.
Notable FTDA cases
The FTDA has been reconstructed over the years by the supreme court based on real events. One such notable event was with the famous lingerie brand Victoria's Secret. In a small town in Kentucky, a small family business was created: an intimate lingerie store. They named the store "Victor's Secret". Victoria's Secret sent a cease and desist letter to the company, and they responded by changing the name to Victor's Little Secret. However, Victoria's Secret was not satisfied, filing a suit because they believed that the third party was infringing on their trademark and tarnishing their brand. The supreme court eventually ruled that the trademark owner must prove dilution.
The FTDA is an act that can often be difficult to take action upon because of the burden of proof. But with careful research of the law, you can ensure proper trademark protection.
The author's opinions expressed in this article are strictly his/her own and should not be attributed to any others, including other attorneys at Klein DeNatale Goldner or the law firm as a whole.