Written by a team of international experts, marshalled by one of the world’s foremost trademark lawyers, Trademark Dilution and Free Riding is the leading comparative work on trademark dilution. This book is a must-have resource for trademark professionals worldwide, and will also stand as a valuable reference point for intellectual property scholars.

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.

Trademark dilution needs to be rethought to ensure that it enhances social welfare. Blurring should only be considered harmful when it increases consumer search costs. The fact that a trademark calls to mind two different products should not itself be considered actionable. Blurring only causes real harm when it interferes with consumers' ability to remember brand attributes. The Coase Theorem suggests that anti-dilution statutes will not block beneficial, non-competing uses of a mark, because, if transactions costs are low and the use is socially beneficial, the trademark owner will license the use. Unfortunately, the "naked licensing" rule, which forbids unsupervised licenses, adds unnecessary transactions costs and blocks potentially beneficial uses. Some commentators think free riding is or should be the essence of dilution. If free riding causes no harm - no consumer confusion, no blurring, and no tarnishment - then it is socially beneficial and should be allowed.

What remedy does a car manufacturer have to prevent the use of its trade mark for cosmetics, confectionery, office furniture, or any one of a number of dissimilar uses? Except in cases of public deception, the answer was none until the doctrine of trade mark dilution was first introduced into English law and into much of Europe with the advent of the Trade Marks Act 1994 and the EC Trade Marks Directive. This doctrine, `misunderstood, misconstrued, and misapplied' since it was introduced into American law nearly 70 years ago, exists to prevent one trader taking unfair advantage of the name or mark, usually well established, of one business and using it for the exploitation of goods in areas in which the well-known trader is not presently active. This controversial and complex area of law is now of very considerable interest to lawyers, trade mark and patent agents and their business clients throughout the European Union where specific anti-dilution provisions have been widely introduced. Its appearance is timely given the uncertainty about the relevant provisions of the Trade Marks Act 1994 and there can be no doubt that practitioners in the field will be eager to buy and read this book.