Trade Mark Dilution Statutes

Dilution Statutes: Two Businesses Cannot Use The Same (or Similar) Trademark

Do you own a trademark? If so, then you probably want to stop folks from using yours or a trademark that’s similar to the one you have. Of course, doing this will depend on three factors:

1 – The trademark is used on goods and services within your niche. (The sales on services or goods will have a negative impact on the sale for the other business)
2 – Consumers are likely to get confused by the similar trademarks.
3 – The trademark is being used in the same area of the country or on related goods.

A Look At Trademark Dilution Statutes

Under federal (and even several state) laws, you can go to court to keep your trademark from being utilized by another person…especially if your brandmark is highly recognized and using the mark would increase the other business’ popularity and weaken yours (tarnish). The primary element for this tarnishment to occur is that your trademark is well-known and familiar. These laws that protect trademarks are called dilution statutes.

These statutes can also be applied even if customers can’t confuse the two businesses even with similar trademarks. For example, consumers may not think Microsoft toilet paper is related to the software company Microsoft. However, under the federal dilution law, the Microsoft toilet paper may be ordered to change their name.

Actively Using A Trademark

Any company who claims they own a trademark may not stop other companies from using either the same or similar brandmark unless the company making the claim is actively using that trademark.

According to trademark law, use of a brandmark means putting it to use in the marketplace for persons to recognize particular goods and services. It doesn’t mean the service or product is sold so long as it’s being offered to the public using the “questioned” trademark.

For instance:

David has produced a website that offers his new innovation, which is a humane mousetrap. He has it for sale under his trademark “MiceFree” Should David not sell one of them, he’s still actively using it by placing the trademark on the traps or tags and are ready to be shipped out once a sale is made.

In another scenario: Jade is a probate attorney and offers her services on a website. She uses her mark Probate Queen and it will always be hers to use so long as she’s ready to talk with customers regarding their requests for advice.