the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

August 2016

Trademark lawyers wax eloquent about the significant benefits of federally registering a trademark with the U.S. Patent and Trademark Office. Federal courts do too. And one of the benefits touted is the federal registration defense to state dilution claims provided by Lanham Act § 43(c)(6), 15 U.S.C. § 1125(c)(6).  In fact, in its recently well-publicized decision in In re Tam (which has nothing to do with the defense), the Federal Circuit listed the defense as one of the important legal rights and benefits conferred on trademark owners who register their marks.  In re Tam, 808 F.3d 1321, 1329 (Fed. Cir. 2015) (“registration operates as a complete defense to state or common law claims of trademark dilution”). But this “important” defense afforded by registration hasn’t been treated as such. It’s been chipped away at, and there’s not much left to rely on. Significant limitations have been placed on this supposed significant benefit. continue reading→