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Should Distinctiveness Have Anything to Do with Dilution – By Nandan Pendsey, IP Attorney, USA
Evolution of Dilution as a Remedy: The theory of Dilution as a means of protecting a trademark was first propounded by Frank Schechter in his research article, “The Rational Basis for Trademark Protection”. He advocates in this article that the real function of trademark law is to identify a product as satisfactory and thereby stimulate further purchases by the consuming public. He further says that the real injury to a trademark is the gradual whittling away or dispersion of its identity (now known as dilution) and therefore preservation of this uniqueness of a trademark should be the only rational basis for protection. As the purpose of a dilution cause of action is to preserve this uniqueness, distinctiveness or that quality in a trademark to distinguish itself from other marks, this cause of action should be available only for the select class of highly distinctive marks. This makes distinctiveness extremely important in the dilution analysis. The central theme of trademark law is to protect the consumers from getting confused as to the source of the goods. For this reason, infringement was considered as the most appropriate and an adequate remedy. The experience with trademark infringement as the sole remedy against unauthorized use of trademarks was not very satisfactory, particularly in cases where there was no likelihood of confusion. Anti-dilution statutes have thus developed to fill a void left by the failure of trademark infringement law in this area. In US, before the Federal Trademark Dilution Act, dilution remedy was available only on a patch quilt system in independent states. To remedy this, Congress passed the FTDA in 1995 both to provide uniform national protection against dilution and to bring this country’s law into conformity with international agreements.