Introduction

Trademark dilution claims before the Trademark Trial and Appeal Board present a unique challenge for brand owners. Unlike likelihood of confusion cases, dilution focuses on protecting famous marks from gradual erosion of their distinctiveness, even when consumers are not confused. The legal standard is demanding, the evidentiary burden is high, and the TTAB applies strict procedural rules governed by the Trademark Trial and Appeal Board Manual of Procedure. For parties asserting dilution, success depends almost entirely on the strength and structure of the evidentiary record.

Understanding how the Board evaluates fame, distinctiveness, and association is critical. Many dilution claims fail not because the mark lacks value, but because the evidence does not meet the TTAB’s exacting standards. Building a persuasive record requires strategic planning, disciplined evidence collection, and strict compliance with TBMP trial rules

Understanding Trademark Dilution Under the Lanham Act

Trademark dilution is governed by Section 43(c) of the Lanham Act and is limited to marks that are widely recognized by the general consuming public of the United States. This threshold requirement alone eliminates many potential claims. The TTAB repeatedly emphasizes that dilution protection is reserved for truly famous marks, not strong marks, well known marks, or niche brands.

Before evidence is even considered, the Board looks closely at whether the pleaded facts plausibly support fame. Dilution claims that rely on regional recognition, industry specific visibility, or limited consumer exposure are often dismissed early. This makes evidentiary preparation a front loaded exercise that begins well before the testimony period opens.

The Fame Requirement and the TTAB’s Evidentiary Expectations

Fame is the cornerstone of any dilution claim. The TTAB evaluates fame based on the totality of the evidence, with a strong preference for objective, quantifiable proof. Conclusory statements about brand success or longevity carry little weight. Instead, the Board looks for sustained national exposure and broad consumer recognition.

Relevant evidence often includes historical sales figures, advertising expenditures, length and extent of use, and geographic reach. However, raw numbers alone are not enough. Evidence must be contextualized to show that the mark has penetrated the general consuming public rather than a narrow market segment.

Media recognition also plays a significant role, particularly when coverage comes from nationally recognized publications or mainstream outlets. The Board is more persuaded by unsolicited media attention than by self generated marketing materials. Each piece of evidence must be properly authenticated and introduced in accordance with TBMP evidentiary rules to ensure it is considered part of the record.

Distinctiveness and Association Evidence

In addition to fame, dilution claims require proof that the mark is distinctive and that the respondent’s use creates an association that is likely to impair distinctiveness or harm reputation. This association does not require confusion, but it must be supported by evidence rather than speculation.

Survey evidence can be powerful in dilution cases, especially when it measures association or blurring. That said, the TTAB scrutinizes survey methodology closely. Poorly designed surveys or surveys that fail to isolate dilution factors often do more harm than good. When surveys are used, they should be introduced through properly noticed testimony and accompanied by expert declarations that comply with TBMP Chapter 700.

Other forms of association evidence include consumer declarations, social media references, and third party commentary. These materials must demonstrate that consumers mentally link the junior mark with the famous mark in a way that threatens its uniqueness.

Procedural Compliance and the Importance of TBMP 700

Even compelling evidence can be excluded if it is not submitted correctly. The TTAB enforces procedural compliance rigorously, particularly during the trial phase. Testimony periods, notices of reliance, and evidentiary objections are all governed by TBMP Chapter 700, which serves as the backbone of TTAB trial practice.

Evidence supporting dilution must be introduced during the appropriate testimony period and in the proper format. Business records, advertising materials, and media coverage typically require authentication through declaration or testimony. Internet evidence must include access dates and clear source identification. Failure to follow these technical requirements can result in exclusion, regardless of the evidence’s substantive value.

Common Pitfalls That Undermine Dilution Claims

One of the most common mistakes in TTAB dilution cases is overreliance on the fame of the brand owner rather than the fame of the mark itself. Corporate reputation, market valuation, and general business success do not automatically translate into trademark fame.

Another frequent issue is attempting to rely on evidence developed for likelihood of confusion claims without tailoring it to dilution standards. While there is overlap, dilution requires a different analytical focus. Evidence must show widespread recognition and a likelihood of dilution, not marketplace confusion.

Finally, timing matters. Evidence must reflect the status of the mark before the respondent’s first use. Materials created after that date may be given little or no weight, even if they demonstrate current fame.

Strategic Considerations for Brand Owners

Dilution claims should be pursued thoughtfully and selectively. Because the evidentiary burden is high, brand owners benefit from early assessment of whether the record can realistically meet the TTAB’s expectations. In many cases, focusing on likelihood of confusion provides a more efficient path to relief.

When dilution is appropriate, a cohesive narrative supported by properly introduced evidence can be persuasive. The strongest cases are those where fame is unmistakable, the association is clear, and the procedural record is airtight.

Your brand is everything. Protecting it requires more than strong arguments. It requires disciplined execution within the Board’s procedural framework.

Conclusion

Building a strong evidentiary record for dilution claims before the TTAB is a demanding process that leaves little room for error. Fame must be proven, association must be demonstrated, and every piece of evidence must comply with TBMP requirements. For brand owners with truly famous marks, a well structured dilution case can provide powerful protection against erosion of distinctiveness. For others, understanding these standards helps inform smarter enforcement strategies and better litigation outcomes.

If you are considering a dilution claim or defending against one, working with experienced TTAB counsel can make the difference between a dismissed claim and a successful result. Let’s simplify this IP process together.