Trademark Dilution

Famous Trade Names and Trademarks are protectable under federal law (through opposition or cancellation procedures) whether registered or not under the Federal Trademark Dilution Act (FTDA) ‘‘Trademark Amendments Act of 1999’’.SEC. 2. Dilution as a Grounds for Opposition and Cancellation.

The test for trademark dilution, as modified by Moseley, requires the trademark owner to show (a) that its mark is famous; (b) that the junior user has made commercial use of the famous mark; (c) that the junior user began using the mark after it had became famous; and (d) that such use caused actual dilution. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 873-74 (9th Cir.1999) (citing Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir.1998));  Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003), 123 S.Ct. 1115.

Well-known Marks


Article 6bis of the Paris Convention for the Protection of Industrial Property (1967) requires member countries to afford certain protections to well-known marks, regardless of whether they are registered.  Specifically, member countries must refuse or cancel the registration, and prohibit the use, of a well-known mark when applied for or used by an unauthorized party for identical or similar goods, when its use or registration would likely cause confusion.  Article 16.2 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) extends Paris Convention Article 6bis to services and provides that members shall take into account that a mark is well-known to a relevant sector of the public (not the entire country) as well as promotion of the mark (not just use).  Article 16.3 of TRIPS extends Art. 6bis protection to well-known marks when used on unrelated goods or services in cases where the well-known mark is registered, if such use indicates a connection to the owner and the well-known mark owner would likely be damaged.

The United States implements these standards by protecting registered as well as unregistered well-known marks, of both domestic and foreign origin, from use and/or registration by unauthorized parties through the operation of Lanham Act §43(a), §43(c), §44(b) and §44(h) and under the Lanham Act §2(a) and 2(d). (15 U.S.C., §1125(a), §1125(c), §1126(b) and (h), and §1052(a) and (d)).  U.S. federal law protects a mark against infringement or registration by another party’s similar mark for goods or services that are the same, similar, related or even unrelated if there is a likelihood of confusion, whether or not the senior mark is registered.

The owner of a well-known mark may bring an action in U.S. federal court for trademark infringement under Section 43(a) of the Lanham Act.  A U.S. federal court will make a determination as to likelihood of confusion in deciding infringement.  U.S. case law outlines a variety of non-exclusive and non-exhaustive factors that can be used in the analysis.  These factors include, but are not limited to, the similarity of the marks, the relatedness or proximity of the goods and/or services, the strength of the plaintiff's mark including the level of commercial recognition, marketing channels used including the similarity or dissimilarity between the consumers of the parties' goods and/or services, the degree of care likely to be exercised by purchasers in selecting goods and/or services, the defendant's intent in selecting its mark, the evidence of actual confusion, the likelihood of expansion in product lines, etc.  In this analysis, while no one factor is determinative, a strong or well-known mark will receive broader protection than a weaker mark.  A mark does not need to be registered to receive protection.

The United States Patent and Trademark Office (USPTO) essentially uses these same factors in deciding whether to protect a well-known mark.   There is no separate analysis apart from likelihood of confusion or deceptiveness, as to whether a mark is well-known or not.  The USPTO will refuse registration of, or a third party may seek to oppose or cancel, a mark that conflicts with registered or unregistered well-known marks, foreign or domestic, that meet the test under Lanham Act §2(a) and (d).  Section 2(d) of the Lanham Act provides that a mark will be refused registration if it is likely to be confused with a prior registered mark or a prior mark in use in commerce and not abandoned.  Section 2(a) of the Lanham Act provides that a mark will be refused registration, inter alia , if it is deceptive or falsely suggests a connection to persons, institutions, beliefs or national symbols. It is not necessary for a mark to be registered to obtain protection under Section 2(a) or 2(d), but the mark must point uniquely to a source (known or unknown) such that consumers would be deceived if the goods or services of the applicant did not emanate from that source.  While the USPTO does not make a specific determination in examination as to whether a mark is well-known, it evaluates the strength of the mark in determining the scope of protection to afford a previously registered or unregistered mark against a pending application.

In addition to these grounds, in certain cases the owner of a well-known mark that rises to the level of being “famous” may bring an action against another use of the mark in U.S. federal courts or may seek to oppose or cancel another’s application or registration for the mark on the grounds of dilution.  Dilution is the lessening of the capacity of a famous mark to uniquely distinguish its goods, either by tarnishing (weakening through unsavory associations) or blurring (an association arising from the similarity between a mark and a famous mark) its capacity to distinguish.  However, dilution may only be applied in cases where a party’s well-known mark is “famous,” such that it is widely known among the U.S. consuming public.  

Case examples of Famous Marks


Case Reference

ACOUSTIC WAVE mark famous based on seventeen years of use, annual sales over $50 million, annual advertising in excess of $5 million, and extensive media coverage.

Bose Corp., 63 USPO2d at 1308

NINA RICCI famous for perfume, clothing and accessories based on $200 million in sales, over $37 million in advertising, and over 27 years of use.

Nina Ricci, S.A.R.L. v. E.T.F.

Enters., Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1902 (Fed. Cir.


HUGGIES famous for diapers based on over $300 million in sales over nine years and $15 million in advertising in a single year.

Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985)

SPICE ISLANDS for teas, spices and seasonings famous based on use for 40 years, $25 million annual sales for spices, $12 million sales for tea between 1959 and 1981, and “several million” in advertising.

Specialty Brands Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984)

GIANT FOOD famous for supermarket services and food products based on sales over $1 billion in one year, “considerable amounts of money” in advertising, and 45 years use.

Giant Food. Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 392-93 (Fed. Cir. 1983)

MR. PEANUT famous for nuts and nut products based upon $350 million in sales, $10 million in advertising, and over 10 years of use.

Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504, 506 (CCPA 1962)

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See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.



If you are starting a new business, getting a federally registered trademark can help you off to a fast start if the trademark is chosen well and the trademark application is done correctly. Try a form service or an answer off a blog if you have time and money to gamble. If you want to Plan for a Successful Trademark rather than hold your breath and hope for a year or so, call us at 1-651-500-7590  . We have registered marks with no office actions and registered them in 7 months. We have fixed applications for marks that have been zoomed and refused. We have helped save a first registration that was not planned well and helped plan for new marks in the family that don’t need an emergency Response to Office Action (ROA) to be saved. Gambling can be hazardous to business and all trademark application documents are public record.

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