On Oct. 6, 2006, President Bush signed into law the Trademark Dilution Revision Act of 2006 (TDRA). The TDRA effectively reverses the 2003 ruling of the United States Supreme Court in Moseley v. V Secret Catalogue, Inc. A dilution claim is related to, but different from, a claim of trademark infringement. A dilution claim differs from a normal trademark infringement claim in that there is no need for the trademark owner to prove a "likelihood of confusion" to prevail on a dilution claim. Instead, the trademark owner need prove only that use of its "famous" mark by a third party causes the dilution of the "distinctive quality" of its mark. The dilution claim expands the scope of rights granted to famous and distinctive trademarks under the Lanham Act. The limitation of a dilution claim, however, is that it is available only to "famous" marks -- trademarks of unusually great distinctiveness, typically of national prominence. Before the Moseley decision, it was generally believed that a trademark owner must prove only a likelihood that the conduct of the defendant would dilute the distinctive quality of the trademark owner's famous mark. In Moseley, however, the United States Supreme Court ruled that the trademark owner must prove actual dilution in order to prevail. Not only did this decision raise the trademark owner's burden of proof to a nearly unattainable level, it forced the trademark owner to wait to assert its claim until it had suffered the very harm that the anti-dilution law was designed to prevent. In effect, Moseley took most of the wind out of the dilution sails. The TDRA provides that the owner of a famous trademark may prevail on a claim for either "dilution by blurring" or "dilution by tarnishment" by proving only a likelihood of dilution. Dilution by blurring is defined as an "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." The TDRA lays out a number of factors for courts to consider in determining whether the famous mark's distinctiveness has been (or is likely to be) impaired. Dilution by tarnishment is defined as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." The TDRA provides less guidance with regard to the factors to be considered in determining dilution by tarnishment. It is likely that courts will struggle with defining the subtle distinctions between dilution by tarnishment and dilution by blurring. The TDRA expressly establishes certain exceptions to dilution, namely: (a) "fair use" of the famous mark, including use of the mark in connection with comparative advertising, parody, and criticism of and comment on the owner of the famous mark or the associated goods or services; (b) news reporting and commentary; and (c) any noncommercial use. This last exception was included in the TDRA in response to pressure from public-interest groups and First Amendment advocates. The TDRA has breathed new life into the dilution claim for owners of "famous" marks. Case law will likely define the nuances of this new statute in the coming years. For more information, please contact Robert P. Felber, Jr., Richard G. Sanders, Samuel A. Reed or any other member of the Waller Lansden Intellectual Property Practice at 615-244-6380. The opinions expressed in this bulletin are intended for general guidance only. They are not intended as recommendations for specific situations. As always, readers should consult a qualified attorney for specific legal guidance.