Bringing and Defending a Federal Dilution Claim: A Practitioner's Guide
By Casey Scott McKay ·
This guide is the operational companion to the Marksy article on dilution doctrine, and it assumes you already know what blurring and tarnishment are. It walks a federal dilution matter through fourteen stages from the intake fame audit to settlement, from both chairs, using one worked example carried end to end. It gives model complaint paragraphs that plead fame factor by factor and survive a Rule 12(b)(6) motion, a fame evidence package broken out by custodian and evidentiary form, two survey specifications rather than one, targeted document requests and Rule 30(b)(6) topics for each side, and a realistic cost-and-timeline table for both district court and the Board. It explains why the Trademark Modernization Act presumption of irreparable harm is nearly useless to a dilution plaintiff, why the claim is almost always tried to the bench, and why monetary relief under 15 U.S.C. § 1125(c)(5) is a theory rather than a plan. The defense half sequences the attacks in the order that resolves cases cheapest: the register check under § 1125(c)(6), then fame, then the timing of fame against the defendant's first use, then the statutory exclusions, then the merits. It closes with TTAB dilution practice, where the proof burden is the same but the fame date, the available exclusions, the evidentiary vehicles, and the remedies all change.
IP and Technology > Trademarks | Guide | Published 21 November 2025 - Updated 4 March 2026 | Casey Scott McKay - marksy.us
Summary. This guide is the operational companion to the Marksy article on dilution doctrine, and it assumes you already know what blurring and tarnishment are. It walks a federal dilution matter through fourteen stages from the intake fame audit to settlement, from both chairs, using one worked example carried end to end. It gives model complaint paragraphs that plead fame factor by factor and survive a Rule 12(b)(6) motion, a fame evidence package broken out by custodian and evidentiary form, two survey specifications rather than one, targeted document requests and Rule 30(b)(6) topics for each side, and a realistic cost-and-timeline table for both district court and the Board. It explains why the Trademark Modernization Act presumption of irreparable harm is nearly useless to a dilution plaintiff, why the claim is almost always tried to the bench, and why monetary relief under 15 U.S.C. § 1125(c)(5) is a theory rather than a plan. The defense half sequences the attacks in the order that resolves cases cheapest: the register check under § 1125(c)(6), then fame, then the timing of fame against the defendant's first use, then the statutory exclusions, then the merits. It closes with TTAB dilution practice, where the proof burden is the same but the fame date, the available exclusions, the evidentiary vehicles, and the remedies all change.
Keywords: pleading dilution fame · section 43(c) complaint · fame evidence package · dilution survey design · actual association survey · willful dilution monetary relief · dilution summary judgment · attacking fame · timing of fame defense · statutory dilution exclusions · ttab dilution opposition · notice of reliance fame evidence · 30(b)(6) dilution topics · dilution discovery requests · permanent injunction scope · trademark modernization act presumption · state dilution registration bar · accelerated case resolution · dilution cost and timeline
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