Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Congress enacted the Trademark Dilution Revision Act (the "TDRA") about one year ago in an effort to resolve numerous open trademark issue.*  Many believe that the TDRA has opened more questions than it answered.  The University of Michigan Law Review's First Impressions blog recently addressed those issues with a series of articles:

• Dilution's (Still) Uncertain Future
  Graeme Dinwoodie, Chicago-Kent College of Law
  Mark Janis, University of Iowa College of Law
  Looking at the litigation history of trademark dilution.

• What is Dilution, Anyway?
  Stacey Dogan, Northeastern University School of Law
  Considering the underlying meaning of dilution.

• The Trademark Dilution Revision Act of 2006: A Welcome — and Needed — Change
  Dale Cendali & Bonnie Schriefer, O'Melveny & Myers LLP
  Explaining why the TDRA clarifies and strengthens First Amendment protections.

• The Dilution Solution: Populating the Trademark A-list
  Scott Wilcox, University of Michigan Law School
  Looking at the court as arbiters of fame.

*  For more on the TDRA, click here for the Blog's archives and click here for the Seattle Trademark Lawyer’s coverage of the TDRA's first anniversary.

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Milwaukee Elec. Tool Corp. v. Robert Bosch Tool Corp., No. 05 C 1171, 2007 WL 2875232 (N.D. Ill. Sep. 28, 2004) (Kendall, J.)

Judge Kendall granted plaintiff’s motion to dismiss its Lanham Act case with prejudice and awarded defendant its costs but not its fees pursuant to 15 U.S.C. § 1117(a). The Court held that attorney’s fees were not warranted because the case and its dismissal after substantial fact discovery were not exceptional. Plaintiff dismissed its case because of two significant events which plaintiff believed reduced its likelihood of success.

            First, during discovery Congress passed the Trademark Dilution Revision Act (“TDRA”)* which changed the definition of “famous” such that fame within a niche market was no longer sufficient for dilution. Plaintiff was not certain it could prove fame outside its market. Second, defendant changed the trade dress, and particularly the color scheme, of its accused SKIL line of power tools. Plaintiff believed that defendant’s new trade dress was less similar to plaintiff’s and, therefore, plaintiff’s case was more difficult to prove. The Court accepted plaintiff’s reasoning and, therefore, held that the case was not exceptional. The Court did, however, award costs, which plaintiff had originally agreed it would pay.

* For more on the TDRA, click here for the Seattle Trademark Lawyer’s coverage of the TDRA this week in honor of the TDRA’s first anniversary.

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