Bloomberg BNA has published the Second Edition of Trademark Dilution: Federal, State, and International Law, Second Edition, to help practitioners sort through the controversy and confusion surrounding and following the Trademark Dilution Revision Act (TDRA) of 2006, the ways in which the Act sets the standard for analyzing federal dilution claims, and the complications that may arise under state law.
The Second Edition has been revamped and expanded. It offers complete coverage of federal law, including developments in the law since the TDRA, with a new chapter that chronicles the recent upsurge in cases in the Trademark Trial & Appeal Board (TTAB). Revised and new state dilution law chapters are devoted to defenses and remedies, as well as updated coverage of newly adopted state lawsparticularly those influenced by the most recent Model State Trademark Bill. International coverage has been revised to include analysis of the laws in many more countries, while retaining the comprehensive coverage of the European Union, Canada, and Japan.This treatise also updates developments in state dilution laws where several states have adopted the new (2007) version of the Model State Trademark Bill.
The Second Edition analyzes many major new cases, including:
- Rosetta Stone v. Google, where the Fourth Circuit distinguished its well-known case of Louis Vuitton v. Haute Diggity Dog by reversing the grant of summary judgment to the defendant on the issues of trademark use, fair use, and likelihood of dilution.
- Starbucks v. Wolfe's Borough Coffee, where the district court rejected a federal dilution claim after remand, despite evidence of mental association.
- Research in Motion Ltd. v. Defining Presence Marketing Group, Inc.; Nike, Inc. v. Maher; and Rolex Watch U. S. A. Inc. v. AFP Imaging Corp., analyzing the need for a famous mark, and discussing applications of the TDRA factors for dilution by blurring. The first two cases upheld oppositions based on dilution, while the third case rejected a dilution claim.
Trademark Dilution: Federal, State, and International Law, Second Edition alsoanalyzes dilution in the TTAB, providing discussions of non-precedential cases which are useful insights into the TTAB's thought process, even if they cannot be cited as precedent and it discusses continuing development and use of the multifactor test for dilution and analyzes lower court applications of the TDRA. Knowing how courts are using this test is critical to advising clients and colleagues on the likely outcome of cases.