The Trademark Use Requirement in Dilution Cases

The trademark use doctrine plays a critical role in ensuring that trademarklaw serves its proper purpose of encouraging market exchange and loweringconsumer search costs. As we have explained in detail elsewhere, thedoctrine ensures that trademarks do not become a weapon used to suppressspeech or to interfere with rather than promote the efficient operation ofthe marketplace.Those goals are even more important in the context of trademark dilution.Unlike a normal cause of action for trademark infringement, trademarkdilution gives broader rights to a few famous mark owners to prevent evennon-confusing uses in order to protect the uniqueness of their marksagainst blurring and tarnishment. But because trademark dilution can existeven when goods do not compete, and even absent any likelihood ofconfusion, it is even more critical that the universe of actions that cangive rise to dilution be cabined by a clear and effective trademark usedoctrine.The Lanham Act has had a trademark use limitation on dilution since thefirst dilution legislation was enacted in 1996, but recent amendments havechanged the language and scope of that limitation, leading to someconfusion about what is and is not protected. In this article, we parse thelanguage and legislative history of the 2006 Trademark Dilution RevisionAct and explain why the trademark use requirement in the new statute notonly survives but is more robust than before.