In the decade following passage of a federal right of anti-dilution, the biggest question in trademark law was how to prove dilution. This is a clear sign of something. Can no smart attorney, judge, or social scientist figure out what dilution is in order to prove it? Dilution has proven to be a "dauntingly elusive concept" for the courts. Even in the Supreme Court, nearly all of the questions from the Justices In oral argument in Moseley v. V. Secret Catalog were seeking to simply understand what dilution is.Unless they simply know it when they see it, other courts either do not get dilution, or else they just do not like it. Some courts that have ruled in dilution cases have read additional restrictions into the act. What these courts are doing can be characterized as "judicial nullification." These courts seem to be uncomfortable with the apparent breadth of the new right and are seeking to reign it in with additional limitations. The Supreme Court in the V. Secret case also evidenced some distaste for dilution, but admirably tried to wrestle it down nonetheless. The Court ultimately failed to define dilution and acknowledged this by holding that whatever dilution is, at least you have to prove it.Trademark owners advocated for a likelihood of dilution standard rather than an actual dilution standard because of the difficulty in proving dilution. The Supreme Court could not provide guidance because it could not conceptualize the harm that it thought should be proven. The trademark bar takes it on faith that dilution exists and would like it to be presumed in certain circimstances. The main problem with dilution law is that it provides a remedy without a supportable theorization of the harm. The debate about actual versus likely dilution revealed a radical truth: dilution is a remedy in search of a harm.It is not a strong sense of harm that is motivating the push for dilution protection. Instead, it a strong reaction to a perceived sense of the bad faith on the part of defendants. When defending dilution, proponents frequently state that defendants in dilution cases can only have bad faith intentions to use these famous marks. Dilution protection is therefore desired not so much to protect famous trademark owners' property, but instead to protect against others' free rides.If dilution is really about preventing the unfair advantage that results from the non-confusing use of a famous mark, then this really is unfair competition legislation. But an unfair competition right without strict boundaries could easily become a right in gross for the trademark owner.https://papers.ssrn.com/sol3/papers.cfm?abstract_id=923164
Farley, Christine Haight, Why We Are Confused About the Trademark Dilution Law (2006). 16 Fordham Intellectual Property Media & Entertainment Law Journal 1175 (2006).