When a trademark achieves fame and renown, free-riders and pirates are often not far behind. Usually the attempt to exploit someone else’s mark comes in the same or related competitive space, and a regular infringement charge will work.
What happens, though, when someone uses the same mark in a totally different and unrelated field? Trademarks generally only confer rights within a particular market for particular goods or services, and an infringement claim (requiring a likelihood of confusion) may be harder to prove.
So what can the trademark owner do in that situation? A recent suit filed by Rolex in federal court in Texas may shed light on this issue. If the mark is a very famous and renown mark, then there may be a claim for what is known as “dilution.”