Publication Date


Document Type



It has been sixteen years since a powerful form of federal trademark protection became available to a select group of trademark owners-those with "famous" trademarks. This relatively new protection, a form of infringement called trademark dilution, is the result of the Federal Trademark Dilution Act of 1995 (FTDA). This Act, which added a new section to the federal trademark statutes, was later amended by the Trademark Dilution Revision Act of 2006 (TDRA). These statutes have resulted in a plethora of court opinions, as litigants have eagerly sought to exploit the power of this statute. The major attraction of trademark dilution is that, unlike the usual trademark infringement claim, dilution does not require any showing of confusion.

But this Article is not about the main elements of a federal dilution claim; there is a plethora of scholarship discussing the merits and demerits of this cause of action. The focus of this Article is about process-the process by which the decision-making that underlies the claim is made. In particular, it is about the roles of the judge and jury in this process and about various flaws, some inherent and some artificially created, in the decision-making process. Few dilution claims reach a trial and even fewer reach a jury; thus, there are relatively few cases that discuss the problem. For the most part, there is little question that dilution cases will be decided by a judge, whether by motion to dismiss, motion for summary judgment, or motion for a preliminary injunction. Even if the case goes to trial, there normally will not be a dispute over the proper decision maker. The statute makes clear that the presumptive remedy for dilution is an injunction. Thus, the trial judge would be the decision maker, both as to fact and law, subject to appropriate appellate review. However, in limited circumstances, the federal dilution statute permits the owner of a famous trademark to obtain other remedies, such as monetary damages, where someone other than a judge might be involved in the process. If the offending user "willfully intended to trade on the recognition of the famous mark," or "willfully intended to harm the reputation of the famous mark," then the remedies of sections 35(a) and 36 of the Lanham Act, which include various forms of monetary and other relief, are available." However, the TDRA states that these other remedies are "subject to the discretion of the court and the principles of equity." Furthermore, section 35(a) not only reiterates that its provisions are subject to the principles of equity, it indicates that to some degree awards of damages are subject to the discretion of the court, solidifying the court's control over damage awards. ...

I do not propose to solve the larger problem in this Article. The goal is simply to lay out the problem using actual cases in which juries were empanelled and to make some tentative suggestions about solutions. Hopefully, this will lead to some useful insights and productive future discussions about the appropriate means of deciding not only dilution cases, but many other types of cases as well. While that may seem a rather modest aspiration, I submit that the basic problem is sufficiently important and unrecognized, thus requiring further discussion before robust solutions can be implemented.