Gregory J. Krabacher, Member of the Firm in the Health Care & Life Sciences practice, in the firm’s Columbus office, authored an article in ILN IP Insider, titled “The 99 Year Dilution Dilemma: What’s the Harm if No Confusion?”
Following is an excerpt:
The origin story for the cause of action of “dilution” in the United States begins with Frank Schechter’s 1927 Harvard Law Review article, Rational Basis of Trademark Protection. Indeed the U.S. Supreme Court credits Mr. Schechter’s work as the “seminal discussion,” noting that “[u]nlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers.”
Mr. Schechter based his theories, among other cases, on his study of the German Odol case. In that case, the court found harm to the selling power of a well-known brand for mouthwash through the use by another party for steel. Schechter notes in passing that if U.S. courts eventually adopt Odol’s holding, “it will not be the first time that they have gone to continental armories for the weapons with which to combat the commercial buccaneer.”
A belief that traditional U.S. trademark law principles and “orthodox definition[s]” require updating to better address the practical realities and complexities of modern commerce appears to explain Mr. Schechter’s interest in Odol and similar cases. According to Mr. Schechter, the “vital” distinction between the simpler commerce of say, 400 years ago, and “now” is that trademarks no longer merely designate “the origin or ownership of the goods to which it is affixed”, but rather, designate that goods “bearing the same mark[] emanate from a single source.”
