IP Topics
By
Howard J. Shire and
Michelle Mancino Marsh
- October 2004
After the Supreme Court.s decision in Moseley v. V SecretCatalogue, Inc.,1 some critics of the decision predicted that claimsunder the Federal Trademark Dilution Act (FTDA) were injeopardy.2 The Supreme Court.s decision resolved one criticalissue, namely, that proof of .actual dilution. rather than a.likelihood of dilution. is necessary to sustain a claim under theFTDA, but that proof of actual economic injury is not required.However, at least two other questions were raised, butunanswered, by the Supreme Court, namely: (1) how does alitigant prove .actual dilution,. and what types of proof arenecessary; and (2) does the FTDA cover a claim of .tarnishment. ofa mark, in addition to .blurring. of a mark?The first question proved to be the one most post-Moseleycourts and litigants grappled with the hardest. Federal courts allover the country were scratching their collective heads over how tointerpret the Supreme Court.s decision. Did Moseley ultimately killthe FTDA claim? The answer is no, at least not yet, but it didsignificantly challenge the owners of famous marks to provedilution and it frustrated judges who were deciding their claims.This article will review the dilution landscape after Moseleyand will discuss how federal courts have handled FTDA claims inthe absence of clear guidance from the Supreme Court on theevidentiary burden necessary to prove .actual dilution.. Afterreviewing the noteworthy federal court decisions on dilution sinceMarch of 2003, we will draw conclusions from these rulings andpredict the future for dilution claims under the FTDA.