Remedying Past and Future Harm: Reconciling Conflicting Circuit Court Decisions Under the Federal Trademark Dilution Act

Abstract

To remedy this mixed bag of jurisprudence, in 1995, Congress stepped in and created a federal cause of action for trademark dilution by enacting the Federal Trademark Dilution Act ("FTDA"). Congress intended for this remodeled federal law to provide certainty and uniformity in the area of trademark dilution. However, in the past few years, the circuit courts have begun to split on a new issue. The issue is whether the FTDA provides a remedy for harm that has already occurred, or harm that is likely to occur in the future. In 1999, the battle lines were drawn between the Fourth and Second Circuits. Since then, other circuit courts have joined the battle and have started to form alliances with either side.

This controversy is relatively new in the field of trademark dilution, and specific to the FTDA. However, the current disagreement has brought to the forefront a controversy that surrounded the birth of the dilution doctrine. This Comment examines the current controversy in light of the old one. Part II of this Comment outlines the development of the dilution doctrine, including early criticism of the dilution doctrine. Part III addresses the jurisprudence of dilution legislation in the states and by Congress, and then discusses the controversy surrounding the federal statute. Part IV analyzes the split among the circuit courts, focusing on the seminal decisions from the Fourth and Second Circuits. Part V attempts to reconcile the split by taking a critical look at the positions taken by both sides and suggesting a new method of interpreting the FTDA. Finally, Part VI concludes by arguing that the current controversy should be resolved by interpreting the FTDA to remedy both past and future harm.