In developing a trademark-litigation strategy, it is necessary to evaluate the mark owner's business goals and to consider the impact that litigation in one jurisdiction could have on rights in other jurisdictions. Depending on business goals, it can be critical to assess whether the assertion of claims in one jurisdiction might have an effect on potential rights elsewhere. This is particularly true for well-known or famous marks, and it is true whether the issues are analyzed from the perspective of the mark owner or a new entrant into the market.
In the United States, well-known marks may be protected and enforced through the application of several legal theories—the standard infringement (likelihood of confusion) analysis, the law of dilution (for "famous" marks), and the "well-known marks doctrine" (addressing rights based on reputation in the United States developed through use in other jurisdictions). This article focuses on recent developments in U.S. federal dilution law and the well-known marks doctrine.