"Distinctive" and "Famous" - Separate Requirements Under the Federal Trademark Dilution Act?, 3 J. Marshall Rev. Intell. Prop. L. 174 (2004)

The Federal Trademark Dilution Act was promulgated to provide national protection of famous marks from uses that cause dilution of the distinctive quality of the mark. Courts consider several factors in determining whether a mark is “distinctive and famous.” However, a difference of opinion has arisen as to whether there is a difference between a “distinctive” mark and a “famous” mark. An analysis of the statutory language, pertinent historical sources, and the case law interpreting the statute leads one to conclude that the view articulated by the Second Circuit is more consistent with the language of the statute, the intent of the draftspersons, and the majority of the courts that have indicated a view on the subject. “Distinctive” and “famous” appear to be separate and distinct requirements one must establish in order to qualify for protection under the FTDA.