Monday, November 23, 2015
Trademark Free Riding
Many brands in a strong competitive industry have the challenge of trademark free riding posed by not necessarily their own competitors. Company brands struggle against other entities that are not necessarily in their industry, benefiting by their use of a similar if not identical mark from the reputation they have tried to build. This “free-riding” effectively could dilute the reputation of an established trademark. The protection of a trademark’s reputation should be protected even to the extent of the absence of harm.
Free-riding could be so evident in design and scope that the intent is blatantly obvious upon first impression. A mark with significant public awareness has a lower hurdle to leap. Yet in obscure fields a prior trademark yet known in that field should be able to establish the dilution of its mark by an entity dealing in related and dissimilar goods.
The burden will be heavy on the subsequent user relative to the distinctiveness of the original owner of the mark. How should the presumption weigh? Arguably, it is unfair to benefit from the distinctiveness of a previously established mark, even in a dissimilar field of goods and services. This free riding should shift the burden of proof to the subsequent user of the similar or identical mark to demonstrate the basis for its choice for that mark in question.
The argument of broad dilution becomes harder when considering how a mark is received by public perception and demands of goods and services when the mark is appearing in dissimilar goods and services. Does it lose its distinctive meaning in its original service area for goods? The struggle continues!
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