Tim Lince

Trademark dilution is an often-used legal concept by rights holders of well-known brands, and has been at the centre of a number of well-publicised court battles. Nonetheless, it is also an elusive concept and a new study – which sought to shine further light on the phenomenon – has concluded that there are “serious doubts” on the validity of all current evidence of its existence.

The study – entitled ‘Is Trademark Dilution a Unicorn? An Experimental Investigation’ – was a joint project conducted by academics from New York University's School of Law and Stern School of Business. In the paper’s introduction, they describe trademark dilution as “among the most elusive concepts in intellectual property law”, hence the researchers’ bid to test the hypothesis of existing studies into it. The current evidence is based almost solely on ‘response time’ studies; namely, exposing groups of people to potentially diluting stimuli (eg, an advertisement for a Samsung beer that explicitly states that it is not made by the technology company) and subsequently testing how long respondents take to match Samsung to its correct product category – with the claim that those exposed to diluting marks have to “think for a moment” compared to those in a control group. However, the researchers describe this existing body of research as “flawed” and wanted to test the hypothesis they are based on.

This new study, therefore, builds on that past evidence by placing respondents in a “purchasing context”, with the hunch that “if both the treatment and control groups were prompted to think about purchasing a product in the product area of the famous brand, and not just merely shown a potentially diluting stimulus, the difference in matching response time would vanish”. The results of the tests “surprised” the researchers, as they found that “any diluting stimulus triggers increased response times to nearly any brand, even a brand unrelated to the diluting stimulus” – and ultimately concluded that the control group of response time studies is flawed.

“Our findings show that the only existing empirical studies claiming to show that dilution occurs are invalid,” the study states. “The research … casts serious doubt on the validity of the best evidence we have that trademark dilution actually exists. What has been reported as (and assumed to be) evidence of trademark dilution may actually be merely the result of nothing more than the subjects being surprised by seeing ads such as those for MERCEDES and INFINITI toothpaste employed in our studies. We are forced to reconsider the question the title of this paper: is dilution a unicorn?”

Indeed, one of the study’s authors, NYU School of Law professor of law Christopher Sprigman, told World Trademark Review that the title of the paper hints at the author’s opinion on the concept of trademark dilution: “Ultimately, we live in a world of horses and of one-horned animals. Therefore a unicorn is not implausible, but the fact is that no-one has ever seen one. Nonetheless, people for a long time believed in them. So it's hard to say that they don't exist but it's hard to prove that they do; and the same can be said of trademark dilution.”

Expanding on what these findings mean from a practical perspective, Sprigman urges brand owners to be mindful of these flaws if they are going to conduct reaction time studies as part of a dilution case. But most of all, he urges courts to be aware of the lack of empirical evidence into trademark dilution. “Courts should be more sceptical of the cause of action – they should not, for example, equate mere association with dilution,” he states. “So one test we conducted involved showing people a MERCEDES toothpaste, and it turned out that people associated Mercedes with toothpaste, but that doesn't mean that they were confused or that Mercedes was diluted - they just made an association. In other words, they hadn't associated Mercedes with toothpaste before but they do now, but that didn't produce any evidence of dilution. Therefore, if plaintiffs claim this type of use is trademark dilution, defendants should resist it.”

So in essence, until more studies are conducted, the hunt is still on. Spigman says he plans on conducting more research into the concept, and hopes other academics will take up the cause as well – especially longitudinal studies rather than those relying on response times. “Despite the flaws our study demonstrates into past evidence, it doesn't mean that the people who came before us were wrong; it’s just natural that methodologies develop,” he concludes. “It's the scientific method; you improve your instruments over time."

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