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Trademark Dilution: Federal, State, and International Law, Second Edition, with 2013 Supplement


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Get clear guidance on the complex laws governing trademark dilution protection

Trademark Dilution: Federal, State, and International Law, Second Edition helps sort through the controversy and confusion surrounding the Trademark Dilution Revision Act (TDRA) of 2006, the ways in which the Act makes clear that the likelihood of dilution is the standard for analyzing federal dilution claims, and the complications that may arise under state law.

The Second Edition has been revamped and decentralized, resulting in several newly separated chapters to make it easier to find relevant features. It has eight chapters on federal dilution law, covering all topics and featuring discussions and citations of a larger number of cases than ever before. A revised state dilution law section with new chapters devoted to defenses and remedies is included, as well as updated coverage of newly adopted state laws-particularly those influenced by the most recent Model State Trademark Bill. The international chapter has been revised to include coverage of many more countries, while retaining the comprehensive coverage of the European Union, Canada, and Japan.  This treatise also updates developments in state dilution laws where several states have adopted the new (2007) version of the Model State Trademark Bill.

The Second Edition analyzes several major new cases, including:

  • Rosetta Stone v. Google, where the Fourth Circuit distinguished its well known case of Louis Vuitton v. Haute Diggity Dog by reversing the grant of summary judgment to the defendant on the issues of trademark use, fair use, and likelihood of dilution
  • Starbucks v. Wolfe’s Borough Coffee, where the district court rejected a federal dilution claim after remand, despite evidence of a mental association between the trademarks
  • Research in Motion Ltd. v. Defining Presence Marketing Group, Inc.; Nike, Inc. v. Maher; and Rolex Watch U. S. A. Inc. v. AFP Imaging Corp., sparking discussions of the need for a famous mark, and applications of the TDRA factors for dilution by blurring. The first two cases upheld oppositions based on dilution, while the third case rejected a dilution claim. 

Trademark Dilution: Federal, State, and International Law, Second Edition analyzes dilution issues before the Trademark Trial & Appeal Board (TTAB), providing discussions of non-precedential cases which provide useful insights into the TTAB’s thought processes. The book also discusses continuing development and use of the multifactor test for dilution and analyzes lower court applications of the TDRA. Knowing how courts are using this test is critical to advising clients. 

Supplement Information

The 2013 Supplement contains updates in every chapter, including:

  • Extensive treatment of the trade dress dilution claims in Apple, Inc. v. Samsung Electronics Co., including issues of fame, application of the likelihood of dilution test and appropriate remedies –plus relevant jury instructions from the trial
  • Discussion of new case law relating to fame, the test for dilution and the statutory exclusions
  • New Federal Circuit case law relating to issue and claim preclusion
  • Discussion of new dilution cases in the U.K. and Ireland
  • Updated statutory citations from around the world 

Main Volume Information

2012/852 pp. Hardcover, with 2013 Supplement/Order #9340P

Supplement Information

2013/ISBN 978-1-61746-340-2/Order #2340

Main Volume Information

About the Author
David S. Welkowitz is a Professor of Law at Whittier Law School, Costa Mesa, Calif. He has taught several intellectual property courses including Trademark Law, International Intellectual Property, and Comparative Rights of Publicity.

Supplement Information

By David S. Welkowitz