Trademark dilution law: A cross-disciplinary examination of dilution and brand equity scholarship

Federal trademark law affords distinctive and famous trademarks protection from "dilution," which is the whittling away of a trademark's uniqueness and consequently its selling power. Trademark dilution jurisprudence, as explicated in case law, is unclear with respect to what injury is to be prevented by dilution law, how such injury is operationalize, and how best to balance the interests at stake in a dilution action. With these deficiencies in perspective, this dissertation begins with the question whether a framework for identifying and measuring trademark dilution can be culled from the body of brand equity research. Brand equity, which is generally regarded as the extra or added value embodied in the product's trademark beyond the value of the product unmarked, is akin to the selling power or commercial magnetism of a famous trademark. As such, brand equity research or theory should provide a framework for courts to use in identifying and measuring the economic effects of trademark dilution. Any framework so adduced should also balance the trademark holder's interest in protecting brand equity against the public's interest in being able to use the famous trademark for expressive, parodic, or artistic uses.; Within the brand equity research two main approaches for evaluating brand equity dilution have emerged, yet both are inadequate for measuring trademark dilution. While it is the province of the law-makers to articulate the proper evidence required to prove the dilution injury and adequately balance the competing First Amendment interests, brand equity researchers should work synergistically with the law to find instances of trademark dilution. The conclusion of this dissertation discusses several approaches for amending the Federal Trademark Dilution Act. These approaches include (1) withdrawal of all dilution protection and preemption of state dilution statutes, (2) reviving a general federal unfair competition law, or (3) limiting trademark dilution protection exclusively to coined and highly distinctive word marks. Advantages and disadvantages of these different approaches are also discussed. Ultimately the question is whether dilution is a harm worth preventing. In essence the answer turns on whether society receives a great enough benefit to justify the institutional and societal costs of affording trademark dilution protection.