As explained here, trademarks serve to capture the essence of a company’s products in a phrase, logo, symbol, or some other identifying mark that embodies the product. A trademark holder can prevent a third party from using in commerce a reproduction, counterfeit, copy, or colorable imitation of their registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on in connection with a product or service’s use that is likely to cause confusion, mistake, or that tends to deceive. Stated a little more simply, a trademark holder can prevent a third party from making a reproduction, counterfeit, copy, or colorable imitation of a registered mark.
In our fast-moving economy, competitors will often try to gain an edge by attempting to borrow some of the synergy created by your trademarks. Most competitors will be savvy enough not to actually use a verbatim copy of your trademark for their own use, but they will seek to utilize the trademark by borrowing some of the trademark’s noteworthy attributes.
One of my earlier posts explained how a crucial element of a trademark infringement action is the likelihood of confusion that arises from a competitor’s use of a mark that is similar to yours. In contrast to a traditional trademark infringement action, however, an anti-dilution action allows the holder of a strong trademark or servicemark to prevent another’s use of a similar or identical mark even when no likelihood of confusion exists due to the vastly different types of products or services offered by the competing companies. In that situation, another’s use of a similar mark will dilute your mark, thus entitling you to seek legal and equitable relief.
Trademark dilution actions come in two forms: tarnishment and blurring. In my next post, I’ll examine a well-known federal case from Virginia in which an established international brand challenged a start-up for allegedly infringing about the international brand’s intellectual property and goodwill.
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Robert E. Byrne, Jr., the author of this article, is an attorney with the Charlottesville, Virginia law firm of MartinWren, P.C. Bob practices throughout Central Virginia in commercial and business litigation with an emphasis on intellectual property litigation, including and trademark infringement litigation. In addition, Bob devotes a substantial amount of his practice to advising emerging growth companies.
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