SOMEWHERE THE SPIRIT OF FRANK SCHECTER MUTTERS : I TOLD YOU SO!!
Imagine that you are the owner of the internationally famous LOUIS VUITTON trademark. You spend every waking moment trying to convince women to spend ridiculous amount of money for your very plebeian products. And the only reason they do so is because they need the cachet connected with the interlocking LV letters and the LOUIS VUITTON name.
So along comes this dog toy company. You heard me right. A dog toy company. With the unmitigated gall( love the chance to use those words) to name one of its toys CHEWY VUITON! Eighty years ago when Frank Schecter first proposed the dilution doctrine this was exactly the factual setting he imagined as harmful. No real possibility that folks will mistake dog toys for purses. No, the potential harm to LV was death by a thousand paper cuts. Or put more bluntly. If you've spent enough then you should own the word or symbol. And, as with any other form of property. The essence of ownership is the right to exclude. Anyone.
It ain't about confusion. Its about control.
So why did LV lose? Because once again, a court was uncomfortable granting someone ownership rights in a name. For hundreds of years judges have been wrestling with competing notions to justify the rights of a trademark owner. Some courts have rendered decisions based on defendant's harm to the brand owner. Others have used harm to the public as the basis for protecting a verbal or non verbal symbol. The invention and implementation of the dilution doctrine has only added to the( pardon the use of the term) confusion about how and when to protect trademarks.
To lessen this confusion I offer a modest proposal. Actually, its a version of what Frank Schecter first proposed in 1927. Why not limit the dilution doctrine ONLY to claims involving non competitive goods. And, why not then let plaintiff's choose- either assert trademark infringement or assert trademark dilution. But not both.
Then a judge or jury being asked to decide will have no doubt about the basis for a plaintiff's claim. A more cynical way of stating this is: without trademark infringement to hide behind, it will be much more difficult for a judge or jury to misread the plain language of the statute. And, by choosing between the bases for relief a plaintiff makes a much more forceful commitment to the dilution doctrine.