Originally posted 2005-07-27 12:48:40. Republished by Blog Post Promoter

Trademark dilution is something that happens when you use my “famous” trademark in a way that, while not necessarily threatening likelihood of confusion — because everyone knows Microsoft doesn’t make skateboards or Coke doesn’t make hunting rifles — does threaten to “dilute” or lessen the ability of my trademark to denote a single source in general. Since to qualify for (federal) trademark dilution protection my mark has to be famous (and registered), the thinking is that I’ve kind of “earned the right” to own the whole universe of possibilities for goods and services utilizing my mark.

There are two ways to show dilution; either one will do. One is by showing blurring — the existence of an association arising from the similarity between my famous mark another famous trademark that impairs the distinctiveness of my mark. The other is tarnishment: You’ve caused my famous mark to be “tarnished” by association with not-nice things, or, I would argue, things otherwise inappropriate to my brand equity.

All that is by way of saying, Whom do you sue when you plant the seeds to tarnish your own brand? (Hint: The answer is not Google.)

UPDATE: Nothing sweeter than watching some companies dilute their own trademarks!

By Ron Coleman

I write this blog.

3 thoughts on “Reverse Trademark Dilution?”
  1. There is an interesting case that has been brought by Ford Motor Company against the Ferrari Formula 1 racing team over the brand, “F150.” Ferrari has normally branded its race cars season to season with the letter “F” and a number (ie. “Ferrari F10” for its race car used in the 2010 F1 season). For 2011, it decided to brand its car “F150” in commemoration of the 150th anniversary of Italy’s unification. Everyone knows that Ford F-150 is one of the top selling full sized pickup trucks in the world. So, Ford decided to bring a lawsuit against the Ferrari F1 team (Scuderia Ferrari Marlboro, yeah that’s right, they’re associated with Phillip Morris!) on the theory that Ferrari is blurring the brand. First of all, there is little chance that consumers would draw any association between Scuderia Ferrari and the Ford F-150, so a LOC argument is out the window. But I think this would be a classic example of reverse dilution by tarnishment. Just by bringing the lawsuit, Ford is passing off on the enormous goodwill of the Ferrari F1 team. Ferrari is the pinnacle of Formula 1 racing, and Ford left the sport in 2004 with its tail between its legs under its Jaguar brand. I can’t see any other reason for the lawsuit. I’d love to read your take on this case.

  2. I don’t know if I agree, Jon. There’s a significant history of the use of Detroit motors in European race or touring cars. I think Ford could bring a reasonable argument that there is a likelihood of confusion. It might be challenging to find actual confusion, though. The “relevant consumer base” isn’t just F1 race nuts (who aren’t likely to be confused) because F1 teams seek to be global advertising machines for their sponsors.

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