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“Blurring” and “tarnishment” are two traditional forms of dilution. "Blurring" typically refers to the "whittling away" of distinctiveness caused by the unauthorized use of a mark on dissimilar products; while "tarnishment" involves an unauthorized use of a mark which links it to products that are of poor quality or which is portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner''s product.
"Blurring" occurs when a well-known mark is used in connection with the goods or services of another.
Although buyers are not confused "as to source, sponsorship, affiliation or connection,"
the fear is that over time they will cease to associate the mark exclusively with the senior user''s goods or services,
thus eroding the ability of the mark to "evoke among prospective purchasers a positive response that is associated exclusively with the goods or services of the trademark owner."
While "tarnishment" occurs when a junior user uses the senior user''s mark or a similar mark in a manner that could hurt the reputation of the senior user''s mark, i.e., it is the use of a trademark in a manner "totally dissonant with the image projected by the mark."
Tarnishment typically involves the use of a famous or distinctive mark on products of shoddy quality,
or the use of the mark in an unwholesome or unsavory context.
However, the FTDA also provides several defenses against a claim of trademark dilution.
The application of the blurring doctrine, compared to tarnishment, is more sophisticated to identify under the state law or federal law, because it rests on a multi-factor test that is not relevant under the language of the FTDA. For instance, it is hard to define the element of “mental association”. There can be no diminishment of the senior mark if the potential customer does not at least "subtly or subliminally" think of the senior mark when viewing the junior mark.
There has been a view expressed by some courts that the element of “confusion” should be introduced into blurring analysis. I would submit that this is unnecessary and blurring analysis should be conducted without the term "confusion" considered. Because there are a clear difference between blurring and confusion. The former focuses on a diminishment of the mark''s function as a unique identifier of goods or services; while the latter focuses on a mistaken belief that the junior user is in some manner connected with the senior user''s goods or services.
“Actual dilution” principle requires the mark owner assumes the burden of showing the dilution has already occurred, rather than dilution that may occur in the future. Bearing this in mind, the Supreme Court in essence made it more difficult for the plaintiffs to win their claims, because in this situation plaintiffs face a much higher hurdle of demonstrating actual dilution. Briefly speaking, much of the difficulty in judging well-known mark infringement cases surrounds the muddled analyses of actual dilution. The Victoria''s Secret case is the classic example in this regard. In response to the uncertainty caused by actual dilution standard , and to clarify other issues under the FTDA, the 2006 Revision Act introduces a stronger fame standard that earlier marks need to meet before they qualify for dilution standard protection, and restates new definitions of blurring and tarnishment. Besides, it also modifies the defenses to dilution. Most importantly, for the first time it introduces a likelihood of dilution standard. To some extent, it decreases the barrier to prove the actual dilution of well-known marks.
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