95 Indiana Law Journal 683 (2020)
The law of trademark tarnishment—a type of trademark dilution—is in disarray. The
basic definition is deceptively simple. Trademark tarnishment occurs when a junior
mark harms the reputation of a substantially similar existing senior trademark by
associating itself with something perverse or deviant. However, it turns out that
Congress and the courts disagree over the prima facie evidence necessary to prove
its existence. The problem is that federal law and related legal principles are simply
ill-equipped to adequately analyze this unique market-driven doctrine. To make
matters worse, legal scholars cannot even agree on whether trademark tarnishment
can empirically exist in the marketplace. Part of the issue is that there has never been
any real attempt to define the phrase “harm to reputation” in the trademark context.
Drawing on marketing scholarship and social science methods, this Article
provides the first workable framework that courts can use to hear and accurately
analyze these cases. It relies on experimental survey methodology to empirically
show that tarnishment can exist under certain conditions; the key is increasing the
number of exposures to the harmful mark. The Article also introduces extant
branding theory as a way to define harm to reputation in the marketplace. This
interdisciplinary approach ultimately gives courts a mechanism by which to measure
harm to reputation and the tangible impact of tarnishment. In the process, this theory
provides litigants with an empirical-based strategy to prove their dilution claims and
contributes to the doctrinal justification for trademark dilution laws.
Bedi, Suneal and Reibstein, David
"Measuring Trademark Dilution by Tarnishment,"
Indiana Law Journal: Vol. 95:
3, Article 2.
Available at: https://www.repository.law.indiana.edu/ilj/vol95/iss3/2