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The TDRA Turns Two: But Are Trademark Owners Better Off?

By Michael A. Bucci and Lex Paulson

When the Federal Trademark Dilution Act (“FTDA”) was enacted in 1996, it was expected to provide much-needed uniformity and consistency to the protection of famous marks, not to fundamentally change the traditional standard for proving trademark dilution. Under the traditional standard, as adopted in many states, a trademark owner could protect against another's use of the same or similar mark even on noncompeting goods if it could show that such use was likely to blur (or weaken) the distinctive significance of the senior user's mark.

The U.S. Supreme Court, however, saw things differently. In its 2003 decision in Moseley v. V. Secret Catalogue, 537 U.S. 418 (2003), the Court found that the FTDA's language required a showing of “actual dilution,” not “likelihood of dilution.” The Court offered little guidance on how to prove an actual lessening of a mark's distinctive significance, but a few things seemed certain: First, consumer surveys increasingly would be necessary and, more generally, it had just become considerably more difficult to prove a federal dilution claim.

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