remedies for trademark dilution

Remedies for federal dilution act violations Issues of practice and procedure Dilution as a basis to oppose or cancel a registration Dilution and the anticybersquatting statute International dilution law Isbn 9781617463938 Instance Label Trademark dilution : federal, state and international law Title Trademark dilution Title remainder There may also be trademark cases involving claims of trademark dilution or disparagement, if a mark is considered "famous." Liability & Potential Damages In order to prevail on an infringement claim under the Lanham Act, the plaintiff must show your use of the trademark, its use in commerce, the likelihood of confusion in the marketplace . 360-l is New York's anti-dilution law (see below Anti-Dilution Laws), and remedies for trademark infringement are set out in Section 360-m. (N.Y. Gen. & Prof. Code, 14247.) But because trademark dilution can exist even when goods do not compete, and The concept of trademark dilution : the origins and sources of dilution law . Under the Lanham Act, the principal remedies for trademark infringement include injunctive, affirmative, and monetary relief, which provides both immediate and long-term remedies designed to stop the infringement and provide equitable relief. Trademark dilution occurs when a third party uses a mark or trade name in commerce that is sufficiently similar to a famous mark such that it harms consumer perception of the famous mark. Section 1117 (a) clearly states that plaintiffs may be entitled to the defendant's profits for "a violation under section 1125 (a)" for trademark infringement, compared to "a willful violation under section 1125 (c)" for trademark dilution. 1125(c)). Under . A trademark is a symbol, logo, design, word, or phrase that represents a brand. (iii) The Lanham Act allows for special damages in cases related to trademark counterfeiting. dilution, and where the dilution is will-ful, new monetary remedies will apply. In most cases, the only remedy available under the Dilution Act is an . In early 1996, Congress enacted the Federal Trademark Dilution Act (FTDA) to provide nationwide injunctive relief for diluting uses of nationally famous trademarks. Despite the fact that trademark dilution was referenced in a Supreme Court decision in 2005, the IP Code does not provision for it. If such a situation arises, interrogations are carried out by the examiner upon the trademark registration. The Federal Trademark Dilution Act (the "FTDA") was enacted in 1995 to provide remedies for trademark dilution, that is, "the lessening of the capacity of a famous [trade]mark to identify and distinguish goods or services." In the years following 1995, however, the interpretation and application of the FTDA differed from court to court . 9 A "trade secret" means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations . Daily penalties not exceeding $6,000 for continued violations. dilution (trademark) Definition The use of a mark or trade name in commerce sufficiently similar to a famous mark that by association it reduces, or is likely to reduce, the public's perception that the famous mark signifies something unique, singular or particular. Federal Trademark Dilution Act. . A trademark dilution claim is a wholly separate claim from a trademark infringement claim. REMEDIES FOR DILUTION OF FAMOUS MARKS. Unlike a normal cause of action for trademark infringement, trademark dilution gives broader rights to a few famous mark owners to prevent even non-confusing uses in order to protect the uniqueness of their marks against blurring and tarnishment. T/F: Trademark dilution laws protect "distinctive" or "famous" trademarks (such as Rolls Royce, McDonald's, and Apple) from certain unauthorized uses even when the use is on noncompeting goods or is unlikely to confuse. The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. (Cal. 50,000/- and which can be increased to Rs. Remedies for trademarks that have been diluted, either by means of blurring or tarnishment, typically only offer injunctions against the plaintiff. TIMING OF TRADEMARK This is not required in a trademark dilution claim. The revised statute also redefines the concept of trademark "dilution" and provides a cause of action for dilution of famous marks that might not be protected by the federal statute. To prove trademark infringement, a plaintiff must prove that the unauthorized mark is "confusingly similar.". Civil remedies comprise injunctive reliefs which can either be interlocutory, temporary, ad interim, or even permanent and perpetual injunctions. Trademark dilution: provides a legal remedy to the owner of a famous trademark that allows the holder to sue for injunctive relief where the uniqueness of the mark is lessened through the action . Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Both civil and criminal remedies are available in case of trademark infringement. 1295 against trademark dilution will bring uniformity and consistency to the protection of famous marks . Even though a consumer may not likely be confused . Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court. First, in order to stop non-confusing use of a mark, the senior mark must be famous - really famous. According to the USPTO, "a trademark owner may claim trademark 'dilution,' asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by 'blurring' the mark's distinctiveness or . The only remedy available in a trademark dilution claim is injunction. Law 360-l and 360-m.) STATUTORY EXEMPTIONS OR DEFENSES The New York registration statute does not provide any specific exemptions from or defenses to infringement claims. Under the Federal Trademark Dilution Act of 1995, the term dilution means For example, a strong, distinctive famous trademark such as KODAK could be diluted if an unauthorized party marketed an unrelated and noncompeting product such as KODAK mayonnaise. Remedies for trademark infringement may include lost profits, damages and attorney fees. dilution. An unregistered trademark or common law trademark is an enforceable mark created by a business or individual to signify or distinguish a product or service. Essentially, injunctive relief simply means that the court will tell the offending party to immediately stop using the . The remedies uttered by the court to the Trademark infringer in case of criminal proceedings are as follows: With imprisonment for a period which must not be less than six months and can be extended to three years; With a penalty that should not be less than Rs. The statutory damages can be as little as $500 or as significant as $100,000 for every counterfeit good sold. A party may file both an . Defenses to, exclusions from, and remedies in dilution claims State law remedies for dilution The Federal Trademark Dilution Act and the Trademark Dilution Revision Act : introduction and legislative history The elements of a dilution claim under federal law The trademark bar, concerned that an actual dilution standard might render the new federal dilution action ineffective, pressed Congress for change. The remedy for Trademark Dilution is a lawsuit, however the owner of a famous Trademark cannot obtain monetary damages for Trademark Dilution unless it can be proved that the other party willfully intended to dilute the famous Trademark or otherwise trade on the Trademark's famous reputation. To prevent confusion, if a Trademark fails to pass . In addition to infringement, the IP Code allows remedies for additional injuries to . Note that in a dilution case, if there was no bad faith on the part of the defendant, damages are strictly limited to an injunction. . Section 29(4) is a remedy that exists in addition to breach action. It also outlines available remedies, including injunctive relief and monetary damages, principal defenses, and related Lanham Act and state claims. It went into effect on January 16, 1996. In brief, trademark infringement is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. important is the distinction that, although section 1117 (a) requires "a willful violation" (a phrase added by congress in a 1999 amendment) for a plaintiff to receive any of the listed remedies for a violation of section 1125 (c) (trademark dilution), section 1117 (a) does not use "willful" in reference to violations of section 1125 (a) . Even if your trademark isn't federally registered, the following remedies still exist: Issuance of injunctions. If the trademark owner is able to prove infringement, available remedies may include the following: a court order (injunction) that the defendant stop using the accused mark; In 2006, Congress enacted the Trademark Dilution Revision Act (TDRA) to overturn the FTDA decision and amended Section 43(c) of the Lanham Act to define "Dilution by Blurring" and "Dilution by Tarnishment," and clarify what makes a mark "famous." . The court in Intermatic, Inc. v. Toeppen, discussed the history of the dilution doctrine. Study Resources. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. Conclusion Further, these claims are not either/or legal actions. However, even this remedial distinction is misguided. . The newly revised statute within the Lanham Act provides a federal remedy for dilution. A federal dilution statute is necessary because famous marks ordinarily are used on a nationwide basis and dilution protection is currently only available on a patch-quilt system of protection. To confuse the people, an unauthorised user makes similar marks of the famous trademarks. It addresses infringement claims for federally registered marks under Section 32, infringement claims for unregistered marks under Section 43 (a), and dilution claims under Section 43 (c). It provides statutory damages in addition to the actual damages, attorney's fees, treble damages, and ill-gotten profits. Trademark Dilution: Defenses and Remedies This lesson reviews the various defenses to and remedies for dilution available under federal and state law. 4 Considering that "the Lanham Act speaks often and expressly about mental states," the Court found the . Pub. However, if the defendant "willfully" intended to trade on the owner's reputation or to cause dilution of the famous mark, the owner of the mark may also be entitled to other remedies, including the defendant's profits, damages, attorneys' fees, and . It can be used either to learn the material for the first time, or to review material already learned in class. The other available remedy is an infringement action. Trademark dilution provides a legal remedy to the owner of a famous trademark from MIE 305 at North Carolina State University. There are several defenses to a trademark infringement or dilution claim. The federal remedy provided in H.R. More often, the court will award a successful plaintiff an injunction against any further infringement or dilution, as well as . Defenses to Dilution Claims To bring suit, a plaintiff must have standing and must file a complaint accompanied by the required . The Federal Trademark Dilution Act (FTDA) became law in 1995. This act has been largely supplanted by the Trademark Dilution Revision Act of 2006 (TDRA), signed into law on . Additional remedies may still be found under state and common law dilution and unfair competition laws. 163 (1982). . The . The only meaningful difference has to do with remedy. The penalty for trademark infringement as per Section 108 of the Trademark Act is up to four years' imprisonment and/or a fine not exceeding THB 400,000. . Compensation based on actual damages. The remedies which are available under the palate of administration are provided below: By opposing a mark that is similar to the original mark, which can be carried out under Sections 9 (1) or 11 of the Trade Marks Act, 1999. Fair use, such as comparative commercial advertising or promotion, is also a common defense. If you win a trademark infringement lawsuit, the following remedies may be available: Prevention of the defendant from using the trademark Recovery of the defendant's profits that resulted from the infringement 104-98 (text)) is a United States federal law which protects famous trademarks from uses that dilute their distinctiveness, even in the absence of any likelihood of confusion or competition. Catalogue, Inc., 537 U.S. 418, 432-33 (2003). Dilution - that is, the blurring of the distinctive capacity of a mark - can be addressed through a preventive action such as opposition, whereby the trademark owner objects to registration of a mark that, if registered, would dilute its own earlier mark. It is legally different from a registered trademark granted by statute. The California dilution statute differs from the Lanham Act in that while the California statute requires only that a mark be famous only in California or part of California, the Lanham Act requires that the mark be famous throughout the United States (Cal. Damages for trademark infringement or dilution routinely consist of injunctions to immediately stop an infringer from using the mark and eliminate the continued infringement or dilution of goods or services. Specifically, the Remedies for Trademark Infringement Claims Monetary damages, including the defendant's profits, damages, and the costs of the action are available for trademark infringement, but they are not always awarded. The remedy most commonly granted for trademark infringement is an _____ to prevent further infringement. (1976) provides civil remedies for trademark infringement; 1125 provides similar remedies for false designation of origin, false description or misrepresentation. Philip Summa,A New Test for Trademark Dilution - Why North Carolina Should Adopt Section 12 of the Model State Trademark Bill, 5 Campbell L. Rev. Federal Trademark Dilution Act The Federal Trademark Dilution Act (FTDA) became law in 1995 and was revised in 2006. The new statute amends the Lanham Act to provide a federal remedy for dilution. (a) REMEDIES- Section 43 of the Trademark Act of 1946 ( 15 U.S.C. . Injunctive Relief 2. . In 1995, Congress added a federal cause of action for trademark dilution, codified at 15 USC 1125(c). Bus. (SeeFederal Trademark Dilution Act, 15 U.S.C. Lanham Act. . Typically, the only relief available for trademark dilution is injunctive relief. If the defendant is found to have "willfully intended to trade on the recognition of the famous mark," or "willfully intended to harm the reputation of the famous mark," and, in addition, the owner of the famous mark can receive as a remedy the defendant's profits, any damages suffered, and the costs of litigation. In these situations the First Amendment right to free speech outweighs the rights of the trademark owner. There are two different types of remedies available in trademark dilution cases. The TDRA also provided additional remedies for penalizing an infringing party that . For more information about trademark dilution, see CRS Report RL33393, Protecting Famous, Distinctive Marks: The Trademark Dilution Revision Act of 2006, by Brian T. Yeh. 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