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Document Type

Article

Publication Date

Summer 2020

Publication Citation

95 Indiana Law Journal 683 (2020)

Abstract

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.

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