Doctrine of Dilution of Trademarks: Case Laws and Critical Review

This essay delves into the Doctrine of Dilution of Trademarks, a legal principle designed to protect trademark owners from the weakening or tarnishing of their brand's distinctiveness. It explains the concepts of dilution by blurring and dilution by tarnishment, supported by case studies such as Ringling Brothers – Barnum & Bailey Combined Shows, Inc. v Utah Division of Travel Development and Nabisco, Inc. v PF Brands, Inc. The analysis critically examines the doctrine's ambiguities, particularly in determining when dilution actually occurs and the subjectivity involved in assessing the significance of blurring or tarnishment. The essay concludes by highlighting the doctrine's limitations, such as its focus on registered trademarks and the potential for differing interpretations between parties and the courts, ultimately positioning the Doctrine of Dilution of Trademarks as a complex and often debated area of trademark law.

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Doctrine of Dilution of Trademarks
Any mark of a trade like logo, sign, designs etc is a trademark. The main purpose of which is to
identify and distinguish a product or service from those of others (Bhaskar, 2006). Trademarks
have number of laws to abide with. Trademark law essentially aims at protection of the
consumer. It is said that a consumer is king; and for the protection of this king, certain laws have
to be designed. One of these laws is the Doctrine of Dilution of Trademarks. This doctrine is a
trademark law permitting the owner of the trademark to forbid any other party to use that
particular mark in such a way that it would lessen its uniqueness or singularity. For example, a
famous trademark of a hair shampoo brand might be considered as dilution if another company
begins to use it to refer to a food product or a clothing item. Trademark dilution is a relatively
new concept in the category of infringement laws and more information about it along with an
example and critical analysis has been discussed (Lalnunthangi, 2012).
Dilution of a trademark can be done in the following ways:
 Dilution by blurring: When an identity of a brand or a product in the minds of the public
is fading away and then its use by a competitor for its own product or service. The most
common form of dilution by blurring is comparative advertising.
 Dilution by tarnishment: It means that a trademark is linked to a product of an inferior
quality, or to a brand or product that has immoral associations, or where it is being used
in a context that is not savory to the interest of the general public. In this case, the
reputation of the trademark diminishes or is said to be tarnished (Pandey, 2017).
Two distinguishing case studies under this doctrine have been discussed below:
Ringling Brothers – Barnum & Bailey Combined Shows, Inc. v Utah Division of Travel
Development
The tourism department of Utah made a slogan ‘The Greatest Snow On Earth’ for a campaign
but it was alleged by the Ringling Brothers Circus that it was a direct copy of their slogan – ‘The
Greatest Show On Earth’ (Bros & Shows., 2012). The Ringling Brothers argued that according
to the Doctrine of Dilution of Trademarks, this was a case of dilution by blurring wherein a mark
is either identical or somewhat similar to an existing famous mark. This led to the consumers
making a connection between the two which was actually not so. In this case, the consumers’

familiarity was reduced to not actually being familiar of the association between the two. The
court was of the opinion that the dilution was not significant and it actually did not lead to any
actual harm to Ringling Brothers. The appeal was rejected.
Nabisco, Inc. v PF Brands, Inc.
Nickelodeon, in order to promote a new cartoon, entered into agreement with Nabisco to produce
a snack marketed to children. These were animal shaped cheese crackers. However, PF Brands
argued that the shape of the fish cracker was similar to its own characters and thus, led to
infringement of the trademark. The court agreed with the case, and gave a ruling in favour of PF
Brands.
Critical Analysis
As seen by the two examples, the doctrine is not clear enough with its requirements as to where a
dilution actually happens or not. In the case of Ringling Brothers, it was said that it was a
‘likelihood of blurring’ and not an actual case of blurring but in the case of Nabisco, it was
considered as actual dilution by blurring. This indicated that the doctrine was liberally applied
and was not clearly specified.
Conclusion
The following can be concluded from the above analysis. The major criticism here is that the
doctrine provides that a court can only consider a mark which has been registered for the purpose
of infringement. A mark which has not been registered will not be considered as diluted by
blurring or by tarnishing. A party when arguing a case can only argue that a mark was not
significant enough to be registered but in that case the doctrine automatically fails.
Another point of criticism is that a point of blurring or tarnishing of a trademark might be
considered as significant by a party but not by the court in which the case has been argued. The
Doctrine of Dilution of Trademarks is not clear in these aspects and therefore, always under
scanner.

References
Bhaskar, B. (2008). Trademark Dilution Doctrine: The Scenario Post TDRA, 2005. NUJS Law
Review, 1 (4), 637 – 652. Retrieved from http://www.commonlii.org/in/journals /NUJSLa
wRw/2008/37.pdf.
Lalnunthangi, K. (2012). “Doctrine of Dilution of Trademark: A Comparative Study On The
Indian and American Jurisdiction”. Retrieved from
https://www.uniassignment.com/essay-samples/law/doctrine-of-dilution-of-trademark-
law-company-business-partnership-essay.php.
Pandey, A. (2017). The Doctrine of Dilution of Trademarks. Retrieved from https://blog.iple
aders .in/doctrine-dilution-trademarks/.
Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division Of Travel
Development. (2012). Retrieved from https://www.law.berkeley.edu/files/bclt_Annual
Review_Ringling_Bros_Case_Summary.pdf.