USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Dilution Dilution claims are only available if a mark is famous, that is, a “household name” to the general consum - ing public. Under dilution, there is no need to show a likelihood of confusion. • Dilution by tarnishment considers whether an asso - ciation between the junior user and the famous mark is likely to reputationally harm the famous mark. • Dilution by blurring determines whether the junior user’s use of a mark will impair the distinctiveness of that famous mark. Dilution is governed the Lanham Act. Some states have somewhat broader dilution laws that cover marks that are famous in niche markets or in a par - ticular locale. False endorsement False endorsement is when a defendant uses the per - sona of another to create the false impression that the individual approves, sponsors, endorses, etc the defendant’s business and/or product. Cybersquatting Cybersquatting in the US is governed by the Anti - cybersquatting Consumer Protection Act (15 USC § 1125 (d)). The Act applies when a defendant in bad faith registers a domain that is confusingly similar to or dilutive of another’s mark for profit. Under the Act, a plaintiff can recover damages. Copyright Copyright owners can bring claims in federal court or before the Copyright Claims Board (see 7.5 Lawsuit Procedures ). In certain circumstances, the govern - ment can pursue criminal copyright claims against a wilful infringer (17 USC §§ 501 and 506). Copyright owners have several legal claims avail - able to them when pursuing civil infringement. These claims can vary based on the nature of the infringe - ment and the specific rights involved but may include: • Direct infringement: Infringement by the defendant.
requires a party to bring a claim within three years of when it became aware or should have become aware of the infringement, not necessarily when it first occurred. Where there is ongoing infringement, the statute of limitations may reset with each new act of infringement. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark Trade mark owners can bring federal law, state law and common law claims. Generally, a claim for trade mark infringement requires the following: • The plaintiff has rights in a protectable trade mark. • The use is likely to cause confusion. Unfair competition law is broader. An unfair competi - tion may be filed under federal law (under the Lan - ham Act (15 USC § 1125a)), state statutes or com - mon law. Unfair competition law broadly covers trade mark infringement, false advertising, false designation of origin and false endorsement. Trade mark infringement and unfair competition law may be found through direct infringement, contribu - tory infringement and vicarious infringement. • Direct infringement is infringement by the defend - ant. • Contributory infringement may occur in various forms but generally occurs when a party knowingly encourages or facilitates unlawful activity. • Vicarious infringement generally imputes liability on a third party where the defendant has the right to control the activity or the infringing product, can bind the third party or the parties act as an appar - ent or actual “partnership”. In addition, there are some other causes of action which may be available depending on the nature of the trade mark right.
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