A Florida trademark lawsuit has been filed by Ringling Bros. and Barnum & Bailey Circus against singer Kid Rock’s “Greatest Show on Earth” tour. This is what is known as a trademark dilution lawsuit, and it’s been filed in the U.S. District Court for the Middle District of Florida, according to Rolling Stone.
Trademark dilution happens when a person, business or organization uses a famous mark in a way that tarnishes or blurs the mark. Dilution means the user is marring the capacity of that mark that is used to distinguish certain services or goods – even if there is no competition between the two parties or likelihood of any confusion, deception or mistake by consumers. That’s what makes it a bit different than the typical trademark infringement lawsuit, which involves the feasibility that consumers will be confused between the defendant and plaintiff in such a case.
In this example, no one is likely to confuse Kid Rock’s concert for a circus act (all jokes aside). Still, because the long-running (and now defunct) circus has such a strong mark, the singer’s use of the famous trademark may serve to trivialize the circus’s mark.
Prior to the passage of the Federal Trademark Dilution Act of 1996 (codified in 15 U.S.C. Section 1125(c)), there was no U.S. law that barred dilution of a trademark and only some states allowed for some sort of recourse for this act. Usually, that recourse involved some type of an injunction that prohibited one party from continuing to use the mark. In most cases, the main thing one will derive from a trademark dilution lawsuit is an injunction. However, the court does have discretion in some cases to award both attorney fees and damages – but typically only where the mark is famous and the owner of it can show the person infringing on it was willful and intentional in their effort to capitalize on the owner’s reputation or to cause some type of dilution of the mark.
Unlike most trademark laws, trademark dilution statutes are intended to protect well-known trademarks, as opposed to consumers. This was underscored in the 2003 U.S. Supreme court case of Moseley v. V. Secret Catalogue, Inc. It requires showing actual dilution occurred (rather than just the likelihood of dilution) and that there was actual harm, typically because consumers would be inclined to view the original mark in a less favorable light.
In 2006, the passage of the Trademark Dilution Revision Act (a revision of the Lanham Act) offered further clarification on the issue. For instance, it was made clear that a “famous” mark is one that is widely recognized by general public consumers as one that designates certain goods or services by a certain provider. There are a number of factors the court will consider, including the geographical reach of the mark, the volume of its sales, the extent to which the mark is actually recognized and whether the mark has been formally registered.
Our Orlando trademark litigation attorneys recognize that most small businesses will be dealing more with trademark infringement matters, as opposed to trademark dilution, but it’s important to underscore the distinction. Both types of cases can be incredibly complex, and require a dedicated trademark protection attorney who can help you explore and pursue your best legal options.
Contact the Florida business attorneys at The Chidolue Law Firm, serving Orlando and Lake Mary, by calling (407) 995-6567 or email us.
Kid Rock Faces Lawsuit From Circus Owners Over ‘Greatest Show on Earth’ Tour, Dec. 23, 2017, By Daniel Kreps, Rolling Stone
More Blog Entries:
HOW TO REGISTER A TRADEMARK, July 3, 2017, Orlando Trademark Litigation Attorney Blog