Michigan Telecommunications and Technology Law Review
This Article undertakes the first systematic investigation of trademark dilution in registration practice before the US Patent and Trademark Office (PTO). The Article consists of three distinct descriptive empirical analyses. In the first, I present a new hand-coded dataset of all 453 Trademark Trial and Appeal Board (TTAB) dispositions of dilution claims through June 30, 2014, and report that dilution has been necessary to the PTO’s refusal of exactly three registrations in over a decade. In the second part, I apply algorithmic coding of the recently released PTO Casefiles Dataset to demonstrate that concurrent registration of identical marks to different registrants in different product classes is a long-standing feature of the registration system that does not appear to have changed with the advent of anti-dilution rights. In the third part, I examine third-party applications to register famous marks, and find some suggestion that anti-dilution rights coincide with a modest decrease in the success of such applications—more likely due to an increased rate of abandonment by applicants than to increased opposition by prior registrants. But this change, even if it is not illusory, would correspond to at most an additional 5 to 30 rejected applications per year, against an annual volume of as many as 200,000 applications for word marks in general. While additional research may help buttress the case that anti-dilution rights have had a modest effect on registration for a very narrow class of marks, I conclude that their primary effect appears to be imposing increased costs on those who have business with the trademark system, with little if any apparent benefit to justify those costs.