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Author

Soyoung Yook

Date of Award

12-2000

Author's School

School of Law

Degree Name

Doctor of Juridical Science (SJD)

Degree Type

Dissertation

Abstract

The Lanham Act defines the term "dilution" as the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of a famous mark and other parties, or likelihood of confusion, mistake or deception. The dilution theory overturns the existing trademark theory which requires a likelihood of confusion to protect marks. The conventional role of trademarks is to distinguish owners' goods from others. If there was no competition or similarity between two goods, there would be no consumer confusion and no unfairness in business, and thus there was no reason to protect the owner of a mark. However, modern trademarks function not only as a traditional source identifier and guarantee of quality, but also as a device to create advertising or commercial magnetism. Accordingly, protection of trademarks, must be expanded as their roles become bigger in the society. Protection from dilution is justified to protect such modern aspects of trademarks. However, dilution protection must be limited to famous marks where confusion does not exist in order to preserve the rationale of trademark protection.

Dilution originated from the German Odol case and has developed in the United States where dilution protection began from the state level in 1947, and the Federal Trademark Dilution Act was enacted in 1995. However, courts were reluctant to allow dilution as the sole ground to provide protection for a trademark before cybersquatting problems arise. Dilution is an effective tool to prohibit cybersquatting because cybersquatters do not compete with and do not create any confusion with existing marks. In Europe, even though neither the Trademark Directive nor the Regulation explicitly mentions dilution, they provide protection for trademarks used on non-similar goods or services in several provisions. These provisions seem to be dilution provisions. Benelux countries, the United Kingdom and Germany amended their trademark laws to follow the Directive. According to cases, France seems to protect marks from dilution, but still needs clarification. Japan does not protect against dilution, but Korea began to amend related laws to insert dilution provisions.

Chair and Committee

Charles R. McManis, Supervising Professor; Dorsey D. Ellis, Jr., Examining Professor; John Owen Haley, Examining Professor; A. Peter Mutharika, Examining Professor.

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