Reference no: EM131693030

To state a claim for trademark dilution ("TM dilution"), a plaintiff must prove the following: (1) the plaintiff owns a famous mark that is distinctive; (2) the defendant has begun using a mark in commerce that allegedly is diluting the famous mark; (3) the similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) the association is likely to impair the distinctiveness of the famous mark or harm its reputation. Likelihood of confusion of the marks is NOT needed for a trademark dilution claim.

Provide one example that meets TM dilution (or an example that fails to be TM dilution) from the your experience or your imagination (i.e. a hypothetical). Also, APPLY the 4 part TM dilution test to the facts of your example.

For example, Samantha Lundberg opened "Sambuck's Coffeehouse" in Astoria, Oregon, even though she knew that "Starbucks" is one of the largest coffee chains in the nation.  Would Starbucks prevail on a trademark dilution claim against Sambuck's?

Here, Starbucks would likely prevail on a trademark dilution claim against Sambuck's. Starbucks would need to show the following to be successful on a claim for trademark dilution:

1) that plaintiff (Starbucks) owns a famous mark that is distinctive - here, YES, Starbucks owns a famous mark that is distinctive as it is a global company with countless storefronts across the US and internationally;

2) defendant (Samantha/Sambuck's) has begun using a mark in commerce that is allegedly diluting the famous mark - here, YES, Samantha's use of Sambuck's, which is a coffee house also selling coffee-related services (similar to Starbucks), is alleged diluting Starbuck's famous mark;

3) the similarity between the marks (Starbucks and Sambuck's) gives rise to an association between the marks - here, YES, there is a similarity between Starbucks and Sambuck's regarding their names themselves (i.e. they sound alike, look alike, etc.), and they are both coffee storefronts that provide coffee-related services; and

4) the association is likely to impair the distinctiveness of the famous mark or harm its reputation - here, YES, the association between Starbucks and Sambuck's is likely to impair Starbuck's famous mark (e.g. - Sambuck's could sell bad coffee or treat its customers rudely, etc.)