Trademark Dilution: Proving and Defending Against Dilution Claims, Leveraging Recent Court Guidance

Navigating Distinctiveness, Recognition, Use in Commerce, and State and Federal Claims

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, March 31, 2015

Recorded event now available

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Course Materials

This CLE course will provide guidance to IP counsel on preparing for and conducting trademark dilution litigation. The panel will offer their experienced perspectives and strategies for proving and defending against dilution claims and examine the recent court rulings in dilution cases.


Trademark dilution is a complex, challenging area of law. It differs from typical trademark infringement in a few ways: there is no need to prove a likelihood of confusion to protect a mark, and it is not necessary to demonstrate that the goods of the plaintiffs and defendants compete. In fact, at times it seems that all that is necessary is to have a famous mark. But then when one sees results finding that Charbucks does not dilute Starbucks, the case law can seem inconsistent.

Trademark counsel must carefully assess whether the requirements for bringing a dilution case have been met and be prepared for a lengthy fight if the question is close. A 12-year court battle over alleged dilution between Starbucks and Black Bear, maker of "Mister Charbucks," recently culminated with a decision in which the Second Circuit Court of Appeals provided some insight into the difficulties a famous mark owner can face. It also highlights the problems inherent in any case that ultimately turns on expert testimony. Inside counsel especially need to become more familiar with the issues surrounding surveys, particularly as they relate to dilution.

Beyond the issues surrounding federal trademark dilution, there are at least a handful of states that do not require fame in order to being a state dilution claim. How can counsel best use these state laws? And what are the downside risks that these state laws continue to have?

Listen as our authoritative panel of trademark attorneys discusses what dilution is and what it is not. The panel will also discuss how to prove and how to defend against dilution claims. The panel will examine recent dilution cases and court rulings and will offer best practices for the do's and don'ts of dilution litigation.



  1. Dilution
    1. What it is
    2. What it is not
    3. Comparison to confusion
  2. Proving a dilution claim
  3. Defending against a dilution claim
    1. Federal dilution
    2. State dilution


The panel will review the following and other key questions:

  • What does it mean to lose the distinctive value of a mark?
  • What lessons can be learned from recent court decisions addressing trademark dilution?
  • How does state dilution litigation differ from federal dilution litigation?


Feingold, Stephen
Stephen Feingold

Kilpatrick Townsend & Stockton

Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex...  |  Read More

Kenneth B. Germain
Kenneth B. Germain

Of Counsel
Wood Herron & Evans

Mr. Germain has more than 35 years of experience in the trademark/unfair competition field and is a former full-time...  |  Read More

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