Likelihood of Destruction - Restructuring the Trademark Dilution by Blurring Factors in the Trademark Dilution Revision Act of 2006

Marquette Intellectual Property Law Review Volume 18 | Issue 2 Article 4 Likelihood of Destruction - Restructuring the Trademark Dilution by Blurring Factors in the Trademark Dilution Revision Act of 2006 Derek A. Hawkins Follow this and additional works at: http://scholarship.law.marquette.edu/iplr Part of the Intellectual Property Commons Repository Citation Derek A. Hawkins, Likelihood of Destruction - Restructuring the Trademark Dilution by Blurring Factors in the Trademark Dilution Revision Act of 2006, 18 Marq. Intellectual Property L. Rev. 409 (2014). Available at: http://scholarship.law.marquette.edu/iplr/vol18/iss2/4 This Comment is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized administrator of Marquette Law Scholarly Commons. For more information, please contact . HAWKINS FINAL (DO NOT DELETE) 6/23/2014 1:42 PM COMMENTS Likelihood of Destruction—Restructuring the Trademark Dilution by Blurring Factors in the Trademark Dilution Revision Act of 2006 “Destroying is a necessary function in life. Everything has its season, and all things eventually lose their effectiveness and die.” — Margaret J. Wheatley* I. INTRODUCTION ................................................................................. 413 II. THE LAW, AND ITS ORIGINAL APPLICATION ................................... 414 III. BLURRING FACTORS IN ACTION ..................................................... 416 IV. PROPOSAL FOR CHANGE ................................................................ 423 A. Removal of the Fame Factor ................................................ 425 B. Irrelevance of Intent ............................................................. 426 C. Quantifying the Effects of Consumer Perception—Creation of the Basis to Measure Likelihood of Dilution by Blurring, and Measuring Effects on Brand Equity ................................... 427 V. CONCLUSION ................................................................................... 429 * Margaret J. Wheatley and Geoff Crinean, Solving, not Attacking, Complex Problems: A FiveState Approach Based on an Ancient Practice MARGARET J. WHEATLEY, http://www.margaretwheatley.com/articles/solvingnotattacking.html (last visited Jan. 8, 2013). HAWKINS FINAL (DO NOT DELETE) 410 6/23/2014 1:42 PM MARQ. INTELL. PROP. L. REV. [Vol. 18:2 HAWKINS FINAL (DO NOT DELETE) 2014] 6/23/2014 1:42 PM LIKELIHOOD OF DESTRUCTION 411 DEREK A. HAWKINS Derek A. Hawkins is from East Brunswick, NJ and received his Juris Doctorate from Marquette University Law School in 2013. His studies focused on civil litigation involving trademarks and contracts. He received his Bachelor’s degree in Business Administration & Management from Messiah College in Mechanicsburg PA in 2010. He studied international business at City University of Seattle in Athens, Greece. Derek also studied international economics and business transactions and transnational litigation in Justus Liebig Universitat – Giessen in Giessen, Germany. While attending Marquette Law, Derek took seminars on patent registration at the European Patent Office in Berlin. He was captain and competitor of the mock trial team representing Marquette University in the Thurgood Marshall Mock Trial Competition in 2012 and 2013, is a member of Phi Alpha Delta International Law Fraternity (Lafollette Chapter) and the National Black Law Student Association. Derek was a staff editor for Marquette Intellectual Property Law Review, responsible for reviewing and editing submissions provided to the law review for publication. Derek’s professional experience consists of working independently as a legal consultant in the New York Metro area for private individuals and law firms aiding in litigation strategizing, legal research, and contract drafting. He worked for Rausch, Sturm, Israel, Enerson & Hornik, LLC and interned with the Milwaukee County District Attorney’s Office. Prior to law school Derek worked for Lehman Brothers Inc. prior to 2008 and as an intern with the Legal Aid Society of New York as an investigative intern in the criminal defense division. In his spare time, Derek enjoys fitness, music, playing sports and watching movies. HAWKINS FINAL (DO NOT DELETE) 412 6/23/2014 1:42 PM MARQ. INTELL. PROP. L. REV. [Vol. 18:2 HAWKINS FINAL (DO NOT DELETE) 2014] 6/23/2014 1:42 PM LIKELIHOOD OF DESTRUCTION 413 I. INTRODUCTION We have been swindled—all of us—students, professors, and practicing attorneys alike. We have been deceived into accepting what is currently the Trademark Dilution Revision Act of 2006 (hereinafter “TDRA”), and its multifactor test to measure trademark dilution by blurring, as the equitable and sensible anti-dilution law to police dilution of trademarks by blurring in the United States. With unquestioned acquiescence, courts have analyzed dilution by blurring claims without gauging the effectiveness of the TDRA. Part of this is, indeed, because federal anti-dilution law is relatively young and is still evolving.1 Furthermore, only a few courts have interpreted the TDRA since its enactment. However, within the pool of courts that have delved into the unnavigated waters of this amended anti-dilution law, there exists a myriad of applications, explanations, and interpretations.2 The TDRA multifactor blurring test enumerated in § 1125(c), the codification of the revised TDRA statute, is non-exclusive. However, from a practical standpoint, the blurring factors serve as a guideline that courts will consider first before looking to an extrinsic test unapproved by Congress. This is at least the assumption without further guidance on how to proceed with a dilution by blurring analysis. The TDRA and its blurring factors came to be through numerous case decisions; however, since its enactment, there has yet to be an effective challenge to the TDRA blurring factors for their effectiveness, utility, or relevance. In enacting the TDRA, Federal anti-dilution law morphed in two significant ways: “(i) a likelihood of dilution, rather than actual dilution, is now required to establish dilution by blurring . . . [and] (ii) courts may apply six factors to determine whether a mark is likely to cause dilution by blurring.”3 It has been six years since the enactment of the TDRA; the time has come to examine the TDRA and its multifactor blurring test in order to gauge its efficacy in analyzing dilution by blurring claims. First, this comment will explain the origin of modern-day application of the TDRA and its blurring factors. Next, this comment will critically examine the application of the six factors in several key cases over the last six years to ascertain if they are, in fact, effective in achieving Congress’ overarching purpose of policing trademark dilution by blurring. Finally, this comment will conclude with a proposal to implement (...truncated)