Bloomberg BNA Releases Second Edition of Trademark Dilution Treatise

"Trademark Dilution: Federal, State, and International Law, Second Edition" Offers Clear Guidance on the Evolving Laws Governing Trademark Dilution Protection

ARLINGTON, Va., March 12, 2013 /PRNewswire-USNewswire/ -- Bloomberg BNA has published the Second Edition of Trademark Dilution: Federal, State, and International Law, Second Edition, to help practitioners sort through the controversy and confusion surrounding and following the Trademark Dilution Revision Act (TDRA) of 2006, the ways in which the Act sets the standard for analyzing federal dilution claims, and the complications that may arise under state law.


The Second Edition has been revamped and expanded. It offers complete coverage of federal law, including developments in the law since the TDRA, with a new chapter that chronicles the recent upsurge in cases in the Trademark Trial & Appeal Board (TTAB). Revised and new state dilution law chapters are devoted to defenses and remedies, as well as updated coverage of newly adopted state laws—particularly those influenced by the most recent Model State Trademark Bill. International coverage has been revised to include analysis of the laws in many more countries, while retaining the comprehensive coverage of the European Union, Canada, and Japan. This treatise also updates developments in state dilution laws where several states have adopted the new (2007) version of the Model State Trademark Bill.

The Second Edition analyzes many major new cases, including:

  • Rosetta Stone v. Google, where the Fourth Circuit distinguished its well-known case of Louis Vuitton v. Haute Diggity Dog by reversing the grant of summary judgment to the defendant on the issues of trademark use, fair use, and likelihood of dilution.
  • Starbucks v. Wolfe's Borough Coffee, where the district court rejected a federal dilution claim after remand, despite evidence of mental association.
  • Research in Motion Ltd. v. Defining Presence Marketing Group, Inc.; Nike, Inc. v. Maher; and Rolex Watch U. S. A. Inc. v. AFP Imaging Corp., analyzing the need for a famous mark, and discussing applications of the TDRA factors for dilution by blurring. The first two cases upheld oppositions based on dilution, while the third case rejected a dilution claim.

Trademark Dilution: Federal, State, and International Law, Second Edition also analyzes dilution in the TTAB, providing discussions of non-precedential cases which are useful insights into the TTAB's thought process, even if they cannot be cited as precedent and it discusses continuing development and use of the multifactor test for dilution and analyzes lower court applications of the TDRA. Knowing how courts are using this test is critical to advising clients and colleagues on the likely outcome of cases.

Trademark Dilution: Federal, State, and International Law, Second Edition is authored by David S. Welkowitz, a Professor of Law at Whittier Law School, Costa Mesa, Ca., who has taught trademark law since 1984 and is an internationally recognized scholar on trademark dilution law. This treatise is available for sale directly from Bloomberg BNA and also is available on the Bloomberg Law legal research system.

Bloomberg BNA, a wholly owned subsidiary of Bloomberg, is a leading source of legal, regulatory, and business information for professionals. In addition to Trademark Dilution: Federal, State, and International Law, Bloomberg BNA publishes: Trademark Infringement Remedies, Trademark Litigation Practice, and other treatises in intellectual property law. Visit us online for a free catalog, call 1.800.960.1220, or send an email request to

Trademark Dilution: Federal, State, and International Law, Second Edition may be purchased (852 pp., Hardcover, Order #2103-PR13/$385.00 plus tax, shipping, and handling) from Bloomberg BNA, Book Division, PO Box 7814, Edison, NJ 08818-7814. Telephone orders: 1.800.960.1220. Fax orders: 1.732.346.1624. A 10% discount is available on print copies of books when ordering from the website at Please note that discounts cannot be combined.

SOURCE Bloomberg BNA


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