What Can Harm the Reputation of a Trademark? A Critical Re-Evaluation of Dilution by Tarnishment

“Dilution” remains one of the most controversial concepts in trademark law throughout the world. However, while dilution by “blurring” has received sustained criticism for decades, relatively little scholarly attention has been paid to the other limb of dilution, namely “tarnishment”. It is perhaps easy to see why. The concept of tarnishment has a stronger intuitive appeal than blurring; it has seemingly clear parallels with other areas of the law involving harm to reputation; and the relatively few tarnishment cases around the world have tended to involve unsavoury uses of famous marks.In this article I critically re-assess dilution by tarnishment, addressing three related issues. First, I explore the historical origins of the tarnishment action in both the United States (focusing on mid-twentieth century State dilution statutes and earlier case law) and Europe (looking at developments in the Benelux from the 1960s). This investigation reveals that the type of injury against which such early laws were designed to protect was more limited than “dilution by tarnishment” as currently conceptualized. Second, focusing on more recent case law, I will investigate the ways in which famous marks' reputations have been constructed in tarnishment actions, and show that there has been insufficient engagement with the complex, multivalent notion of brand “reputation”. Third, looking to literature on consumer psychology, I will consider whether, in the absence of consumer confusion, unauthorized uses of famous marks in fact create reputational “harm”, at least of a type and magnitude that might justify the current levels of legal intervention under United States and EU law. Taken together, these issues show that tarnishment raises as many complex and unresolved issues as blurring in relation to the “harms” against which dilution laws are designed to protect. This should give us cause to reconsider whether the dilution action is really about preventing cognizable harm at all, or is ultimately concerned with the morality of trade behaviour, and what the consequences of such a reconceptualization might be