Trademark Dilution: Empirical Measures for an Elusive Concept

Abstract

Consumer researchers have conceptualized brand name dilution in terms of the potentially damaging effects that a company's own brand extensions can have on beliefs and attitudes toward parent brands. A different form of dilution, trademark dilution, can also occur through the unauthorized use of a mark (e.g., brand, logo) by an entity other than its owner. With passage of the Federal Trademark Dilution Act of 1995, an increasing number of trademark dilution cases are being litigated. A recurring issue in these cases has been how to measure trademark dilution. The authors review the concept of trademark dilution and explore how recognition and recall-based methods can be used for empirically assessing trademark dilution. The authors also investigate the impact of brand familiarity and product category similarity on the extent of trademark dilution and discuss implications, limitations, and areas for further research.

Magical Thinking in Trademark Law

“…Scholars relentlessly struggle to understand the underlying rationale of the dilution doctrine (Landes and Posner 1987, 306–09; Simonson 1993, 151; Morrin and Jacoby 2000, 267–68; Bradford 2008), which is indeed somewhat puzzling. The evil of dilution lies in the additional association added by a nonconfusing use to a famous trademark (Morrin and Jacoby 2000, 267–68; Landes and Posner 2003). This additional association is said to impair the “selling power,” the “uniqueness,” and the “magic” of the mark, as it ceases to be mentally linked exclusively with its owner (McCarthy 2011, §§ 24:73, 24:118).…”

“…For several decades, the concept of dilution was largely based on mere intuition (Simonson 1993, 150). Only in the last twenty years researchers started looking for scientific support for this doctrine (Simonson 1993; Morrin and Jacoby 2000; Morrin, Lee, and Allenby 2006; Pullig, Simmons, and Netemeyer 2006). Experiments have indeed found that consumers need additional time to associate the brand with its core products after having been exposed to dilutive uses (Morrin and Jacoby 2000, 269–70, 272–74; Pullig, Simmons, and Netemeyer 2006, 52, 61–62).…”

“…Researchers explain that famous marks are stored in strong cognitive networks, while less familiar brands are stored in weaker networks. Therefore, weaker brands are more likely to suffer from a diluting use than famous brands (Morrin and Jacoby 2000, 270–71). Experiments demonstrate that weaker brands are much more vulnerable to the harmful effects of dilution.…”

“…Yet, these very brands are most extensively protected against it (McCarthy 2011, § 24:87). For instance, while the “Hyatt” trademark for hotels has been legally protected against dilution supposedly caused by its use in relation to legal services ( Hyatt Corp. v. Hyatt Legal Services 1984, 1157–58), an experiment demonstrated that this specific mark is resistant to dilution (Morrin and Jacoby 2000, 269–70). On the other hand, not very famous brands, such as Viking backpacks, are likely to be affected by dilutive uses (272) but are not legally protected against them.…”

Copy Alert: A Method and Metric to Detect Visual Copycat Brands

“…Academic marketing research has investigated brand confusion caused by copycats (Kapferer 1995;Miaoulis and D'Amato 1978;Miceli and Pieters 2010;Warlop and Alba 2004) and has documented the harm from trademark dilution (Morrin and Jacoby 2000;Morrin, Lee, and Allenby 2006;Pulling, Simmons, and Netemeyer 2006;Van Horen and Pieters 2012). Moreover, prior research typically has relied on similarity judgments after long exposures to brand packages, from several seconds up to one minute (Morrin and Jacoby 2000;Morrin, Lee, and Allenby 2006;Pulling, Simmons, and Netemeyer 2006;Warlop and Alba 2004). These shortcomings have prevented wide-scale application of academic copycat research in managerial decision making and brand infringement liti-gation.…”