Xuan-Thao Nguyen, A Circus Among the Circuits: Would the Truly Famous and Diluted Performer Please Stand Up? The Federal Trademark Dilution Act and Its Challenges, 1 Chi.-Kent J. Intell. Prop. 158 (2000), https://digitalcommons.law.uw.edu/faculty-articles/901
Sometimes, nothing is more painful than the truth. Congress passed the celebrated Federal Trademark Dilution Act of 1995 (“the Act” or the “Dilution Act”) with great hope that it would create a uniform anti-dilution law, end forum shopping, and encourage trademark owners to build brand equity with more ease. Congress was overwhelmingly in favor the Act, and thus passed it with little debate, leaving behind a sparse congressional record. In its haste to pass the Act, Congress failed to address whether the Act extends to product design marks; whether the Act requires proof of actual economic harm, or if likelihood of dilution is an acceptable standard; how fame and dilution should be measured; and the degree of fame or dilution required under the Act.
Trademark owners now have to bear the cost of congressional failure. For the time being, trademark owners are facing conflicting interpretations of the Dilution Act coming from the First, Fourth, Eighth and Ninth Circuits. The other circuit courts, expectedly, will soon follow suit when they have their chance to address the Act. Each of the circuit courts that has had the opportunity to address the Act has its own idea about dilution and fame, the meaning of dilution, how to establish fame, and how to prove dilution. With the conflicting rulings from these circuits, there is a circus among the circuits. Each performer at the circus is carrying its own act leaving trademark owners a federal anti-dilution system that is almost as chaotic as the original patchwork system of more than twenty-five state statutes. Trademark owners will continue to shop for a forum that has the best anti-dilution protection where the owners do not have to satisfy, among others, the stringent requirement of actual economic harm to the famous mark.
In Part I, this Article will expose the congressional failure. Part I also provides an analysis for each of the issues left out by Congress. These issues include: (a) the problems with providing a patent-like protection to product design marks under the Act; (b) the problems with proof of actual dilution versus likelihood of dilution; (c) the problems with “famous;” and (d) the problems with undefined terms in the Act, such as “willful intent.” Part II analyzes, compares, and contrasts the dizzying circus acts of the First, Fourth, Eighth and Ninth Circuit performers. Part III explains the reasons the fun at the circus is over and offers various ways to orchestrate a new act for the benefits of trademark owners, the courts and the public. Part IV concludes that if a uniform interpretation of the Act is not soon formulated by the circuit courts, more chaos will occur, and perhaps it is time to hear from the ringmasters--the Supreme Court or Congress.