All students of trademark law are aware that the Supreme Court in Mosley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), interpreted the Federal Trademark Dilution Act to require "actual dilution" as an essential element of a federal dilution claim.
But how do you prove actual dilution?
The Supreme Court's enigmatic answer:
"direct evidence of dilution such as surveys will not be necessary if actual dilution can reliably be proved through circumstantial evidence--the obvious case is one where the junior and senior marks are identical."
The Second Circuit has now joined a number of district courts in holding that the mere use of an identical junior mark is sufficient to establish actual dilution of a famous mark.
In Savin Corporation v. The Savin Group, 2004 WL 2829324 (2d. Cir., December 10, 2004), the Court affirmed summary judgment againt the plaintiff on its trademark infringement claim but vacated and remanded the dismissal of the dilution claim, stating:
We interpret Mosley to mean that where a plaintiff who owns a famous senior mark can show the commercial use of an identical junior mark, such a showing contitutes circumstantial evidence of the actual-dilution element of an FTDA claim.
The Court acknowledges that this position is "very close to granting rights in goss in a [famous] trademark," but "it cannont be overstated, however, that for the presumption of dilution to apply, the marks must be identical."
