International

Trademark
Association

Fact Sheet: Protecting a Trademark

Trademark Dilution (Intended for a Non-Legal Audience)

Updated: November 9, 2020

1. What is trademark dilution?

Trademark dilution refers to the unauthorized use of and/or application for a trademark that is likely to
weaken the distinctive quality of or harm a famous mark. The question of whether a famous trademark is
diluted is a separate question from whether the mark is infringed, i.e., whether the unauthorized use is likely
to cause consumer confusion (though trademark owners often allege both dilution and infringement
together when enforcing famous trademark rights). Dilution is sometimes divided into multiple types, the
most common being blurring. Other types include tarnishment and, in the EU, free-riding.

Unlike trademark infringement, trademark dilution does not necessarily involve the unauthorized use of a
mark in connection with goods or services that are confusingly similar to those offered in connection with
the famous mark. For example, the unauthorized use of FERRARI as a brand of harmonicas may not be
trademark infringement, but it may be trademark dilution, even though harmonicas and luxury automobiles
are so unrelated that consumers are unlikely to believe Ferrari harmonicas come from the famous
automaker. Trademark dilution protects marks that are so well-known, highly reputable, or famous that
jurisdictions have decided they deserve protection whether or not their unauthorized use is likely to cause
consumer confusion.

To be considered well-known, highly reputable, or famous, a trademark must be recognizable to the general
public, i.e., it must be a “household name.” For example, the following would likely be considered famous
marks in many countries around the world: GOOGLE, COCA-COLA, SONY, NIKE.

2. Which jurisdictions recognize the concept of dilution?

Most countries recognize some form of trademark dilution, although the concept and associated
requirements and penalties vary by jurisdiction. Jurisdictions that expressly recognize trademark dilution
include the United States, the European Union, South Africa, India, and Japan, as well as several Central and
South American countries. Others, such as Canada and Australia, have no explicit dilution law but provide
similar protection under other trademark laws. Canada prohibits unauthorized use that deprecates the
goodwill of a mark, and Australia defines trademark infringement to include the use of well-known
trademarks that is likely to cause consumers to infer a connection between the owner of the mark and
unrelated goods or services.
3. What are the elements of trademark dilution?
Fame—A trademark must be famous to be diluted. In the United States, a mark must be widely recognized
by the general consuming public to be considered famous. In the European Union, a mark must be well-
known, with courts determining just how well-known. In most jurisdictions, courts and trademark offices
decide fame on a case-by-case basis. In some jurisdictions, protection from dilution varies depending on
how famous a mark is. Fame is not static, so mark owners may have to prove fame as of the date of the
dilution claim or as of when the alleged diluter started using the mark. In addition, a favorable finding of
fame may weaken as time passes, such that it will no longer be accepted as evidence of fame in new
disputes.

Likelihood that unauthorized third-party use will weaken or tarnish the distinctiveness of the famous
mark—The unauthorized use must be likely to weaken the ability of the famous mark to identify and
distinguish the famous goods or services or be likely to tarnish the famous mark. The owner of a famous
mark need only show that there is a likelihood of dilution—not actual dilution.

4. What are the forms of dilution?

Blurring—Blurring is the most common type of dilution. It occurs when unauthorized use of a famous mark
weakens or impairs the distinctiveness of the mark. A hypothetical example may be use of GOOGLE as a
mark on toothpaste, such that consumers who previously associated the GOOGLE mark solely with the
tech giant’s products begin to also associate the mark with toothpaste.

Tarnishment—Tarnishment occurs when unauthorized use of a famous mark is offensive or unflattering.

This may include use of a famous mark in connection with subject matter that is critical of or offensive to
the mark owner’s beliefs or reputation or that directly criticizes or attacks the mark owner or its products or
services. A hypothetical example may be use of ADIDAS as a mark on a line of unhealthy food—a product in
conflict with the ADIDAS brand of fitness related products. But tarnishment may be protected free speech
and considered “fair use” of a famous trademark, e.g., use of a mark for the purpose of parodying a famous
mark owner or its products or services.

Free-riding—The EU recognizes a type of dilution called free-riding: unauthorized use of a well-known mark
on unrelated goods or services for the purpose of, or resulting in, a positive association with the well-known
mark owner’s legitimate goods or services. An example of free-riding may be unauthorized use of GUCCI as
a mark for a high-end restaurant.

Additional Resources
Famous and Well-Known Marks
Fact Sheet