I hesitate to add to the fallout from Matal v. Tam, the Supreme Court’s decision last week invalidating the disparagement clause of Section 2(a) of the Trademark Act. That said, here I go.
Many trademark practitioners, separate and apart from their reaction to the decision itself, now ask “where do we go from here?” The next shoe to drop, it seems, will see courts assessing the constitutionality of other provisions of the Lanham Act. One prevalent target – dilution, and it seems some observers are not optimistic about its future. Over at SCOTUSblog, Lisa Ramsey suggests “dilution laws and other expansive trademark doctrines that allow the government to prohibit or punish non-misleading uses of protected trademarks may not survive constitutional scrutiny after Tam.” She argues “Companies accused of trademark dilution may be able to argue that the dilution statute is an unconstitutional content-based regulation of non-misleading expression and is facially invalid under the First Amendment.”
This raises a broader question, one I have wondered since first studying trademark law: is the “bite” of trademark dilution as bad as its “bark”? It’s certainly fodder for trademark litigation – dilution claims are part and parcel of virtually all infringement complaints for famous trademarks. For a quick primer, “Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks, through blurring or tarnishment, even if the public is not likely to be confused.”
An aptly-timed study from New York University entitled Is Trademark Dilution a Unicorn? An Experimental Investigation raises the same question, and raises a controversial conclusion: “dilution is theoretically plausible, but remains empirically unproven.” According to the study, the conventional wisdom to support trademark dilution relies on “a set of studies showing that respondents are slower to match brands to their product categories and product attributes after being exposed to an advertisement for a different product using the same or a similar brand name.” But the study’s authors say these studies were flawed – their “evidence of trademark dilution is actually the artifact of a flawed experimental design that fails to control for the effect of seeing a surprising advertisement.”
Food for thought as the Tam precedent spreads into other trademark statutes – the constitutional question may be less compelling than the empirical question – that is, whether dilution statutes protect consumers at all.