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St. Mary's Law Journal

Richard Taylor

Abstract

Texas courts must set forth clear and concise guidelines for trademark antidilution enforcement. The adoption of a trademark antidilution statute substantially alters Texas trademark law. The statute allows a trademark owner to enjoin acts which dilute a registered or common law trademark’s distinctive quality. It applies whether competition exists between the parties or a likelihood of confusion exists as to the owner of the mark. The statute adds a new dimension to trademark protection in Texas because it creates a property interest in the trademark. As promising as these protections sound, the new antidilution statute may prove ineffective due to a lack of clarity. Texas courts must immediately specify the boundaries of the antidilution statute, otherwise no trademark owner will know what rights exist in the mark and no potential trademark user will know when a mark is being diluted. To accomplish this, Texas courts must first determine the accepted meaning of dilution. The most useful definition advanced has been that of quality representation and source representation coupled with the tarnishing concept. Under the source-quality representation definition, dilution occurs when the consumer’s opinion of the product or of the producer is diminished by unauthorized trademark use. Second, the courts need to adopt a definition of distinctive quality, so it is clear when the antidilution statutes are violated. Finally, Texas courts need to determine the scope of the antidilution statute. The best course of action would be to limit the scope of the Texas antidilution statute to circumstances outside the scope of infringement action to prevent preemption by federal law. Texas courts must use these guidelines to specify the boundaries of the antidilution statute and avoid confusion in trademark law.

Publisher

St. Mary's University School of Law

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