CHAPTER 9 - § 9.04

• Jurisdiction: United States

§ 9.04 EXEMPLARY "LIKELIHOOD OF DILUTION" CASES

As noted above, only famous trade dress may form the basis for a dilution claim. Unlike with likelihood of confusion, the owner of famous trade dress may prevent others from using that trade dress even if there is no competition between companies.¹⁴⁸ This cause of action is available primarily to protect the considerable goodwill developed by the owner of a famous mark.¹⁴⁹

There are two types of dilution: dilution by blurring and dilution by tarnishment.¹⁵⁰ "Dilution by blurring" actions are said to prevent the "whittling away" of the distinctiveness and famousness of a trademark.¹⁵¹ Hypothetical examples of dilution are "DuPont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth."¹⁵² "Dilution by tarnishment" actions prevent a famous mark's goodwill from being associated with things harmful to its reputation.¹⁵³

A famous mark is one that is "widely recognized by the general consuming public . . . as a designation of source of the goods or services of the mark's owner."¹⁵⁴ Factors used to determine famousness include "the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties; the amount, volume, and geographic extent of sales of goods or services offered under the mark; the extent of actual recognition of the mark."¹⁵⁵

Much like in the "likelihood of confusion" context, dilution actions evaluate the similarity of the trade dress along with other factors, including fame.¹⁵⁶ Differences between trade dress are weighed less heavily than similarities.¹⁵⁷ Importantly, actions for dilution are not available for instances of fair use with advertising for comparison, parody, news reporting, and non-commercial use.¹⁵⁸

A district court in Utah found a likelihood of dilution for Hummer's trade dress where (1) the trade dress was both famous and distinctive; (2) the amounts spent on advertising and the overall income resulting from licensing of the trade dress to others (for toys, golf carts, etc.) were substantial; and (3) the allegedly infringing product strongly resembled the Hummer due to features such as "sharp corners . . . roofs [that] are flat and look somewhat compressed . . . windows [that] are split and have windshield wipers attached to the top of the window, and . . . prominent latches on the front hood."¹⁵⁹ Below is one of the Hummer trade dress registrations involved in this...