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Dilution: The unauthorized commercial use of a party's rightfully held well known mark or a similar mark in association with goods or services different than or the same as those in the well known use(s), such that the original mark's ability to identify the rightful user as the source of goods or services or to carry associations of quality is impaired.

• Under the above definition, the impairment of the ability of consumers to identify commercial source based on the mark is "blurring" and the impairment of the ability of the mark to carry associations of quality is "tarnishment".

Mead Data Central v. Toyota, 875 F.2d.1026 (2nd Cir. 1989)

• This case was brought under a New York State unfair competition statute which prohibited the dilution of distinctive marks and trade names. The claim analyzed represented an alleged occurrence of the "blurring" form of dilution.
  • Mead, the plaintiff, had a distinctive "Lexis" trademark which was used for its legal research database.
  • Toyota, the defendant, had a distinctive "Lexus" trademark used for a line of automobiles.
    • The Court of Appeals held that marks must be "very" or "substantially" similar and, absent such similarity, there can be no viable claim of dilution under the New York statute.
• In ruling on plaintiff's dilution claims, the appeals court examined the distinctiveness of the plaintiff's mark.
  • It felt that confusion based on similarity, and therefore, dilution, was unlikely.
    • The marks' pronunciations were readily distinguishable.
• The Circuit Court focused on the context in which the public would be exposed to these marks (i.e., radio & TV announcements) and whether it would be able to differentiate them in that context.
  • In the court's view, attorneys were sufficiently sophisticated to differentiate between the marks and they were the demographic group exclusively targeted by the plaintiff's marketing.
    • "Lexis" was found to be known within one profession only, the legal profession.
      • As a result, the mark could not have achieved sufficient renown or secondary meaning for blurring to have occurred.
        • Sufficiently strong associations of commercial source among the general public as a whole were required to support a finding of dilution under New York law.
  • Based on this reasoning, the district court's finding of dilution was reversed.

• The concurrence performed an analysis in which six factors were seen as guiding. These were the six so-called Mead factors:
  1. Similarity of the marks
  2. Similarity of products using the marks
  3. Sophistication of consumers in the targeted markets
  4. Predatory intent
  5. Renown of the senior mark
  6. Renown of the junior mark

• These factors continue to be widely addressed in state unfair competition and Federal Trademark Dilution Act jurisprudence.
  • The Second Circuit, in Nabisco, Inc. v. P.F. Brands, Inc., 191 F.3d 208 (2nd Cir. 1999), has suggested a new list of ten factors which courts may use in blurring cases under the Federal Trademark Dilution Act.
    • These factors, at present, have not been widely used outside the Second Circuit.

• Since its enactment, blurring litigation under the Federal Trademark Dilution Act has proliferated.
  • A number of courts have held that the requisite fame of a protected mark can be specific to a market for a single good or service, rather than requiring that it exist among all consumers.
    • Although §1127 broadly defines dilution as being able to occur along with infringement between competing goods and/or services, market-specific fame seems a rather expansive view of the meaning of fame under §1125(c).

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