This is provocative:
“Back in 2007, we held a major academic symposium on the trademark dilution doctrine at SCU. My main goal was to see if two dozen leading trademark academics could find some justification—ANY justification—for the trademark dilution doctrine. We struck out, of course. The trademark dilution doctrine is an elegant intellectual exercise with intuitive appeal, but it has the fatal flaw that absolutely no social science supports that intuition.”
From a recent post in Eric Goldman’s Technology & Marketing Blog.
I’m not a social scientist. But from the perspective of a practitioner, prohibiting the use of a trademark that is likely to cause dilution by blurring or dilution by tarnishment makes sense. If a third-party’s use is likely to cause my brand harm — even if the use isn’t likely to cause confusion — why should such use be allowed to stand? I suppose the response is that use that isn’t likely to cause confusion for practical purposes isn’t likely to impair the distinctiveness of a famous trademark. But should a famous mark then be open for all to use as a reference point or punch line in selling their own products? That doesn’t strike me as right. Should I be able to grab the consumer’s attention when opening a car dealership by naming it MICROSOFT USED CARS, just because consumers wouldn’t likely think the software company had suddenly gotten into the business of selling used cars? I think it’s wrong to conclude, as the Fourth Circuit did, that LOUIS VUITTON is a sufficiently strong brand that its owner can take Haute Diggity Dog, LLC’s jokey use of CHEWY VUITON in connection with dog chew toys without running afoul of the anti-dilution statute. Every famous trademark by definition is sufficiently strong to take a joke. But to my mind, that doesn’t mean it should have to.