Utah Code 70-3a-403. Injury to business reputation — Dilution
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(1) Subject to the principles of equity and upon the terms the court considers reasonable, the owner of a mark that is famous in this state is entitled to:
Terms Used In Utah Code 70-3a-403
- Dilution: means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of:(1)(c)(i) competition between the owner of the famous mark and another person; or(1)(c)(ii) the likelihood of:(1)(c)(ii)(A) confusion;(1)(c)(ii)(B) mistake; or(1)(c)(ii)(C) deception. See Utah Code 70-3a-103
- Injunction: An order of the court prohibiting (or compelling) the performance of a specific act to prevent irreparable damage or injury.
- Mark: means any trademark or service mark entitled to registration under this chapter whether or not the trademark or service mark is registered. See Utah Code 70-3a-103
- Person: means :(24)(a) an individual;(24)(b) an association;(24)(c) an institution;(24)(d) a corporation;(24)(e) a company;(24)(f) a trust;(24)(g) a limited liability company;(24)(h) a partnership;(24)(i) a political subdivision;(24)(j) a government office, department, division, bureau, or other body of government; and(24)(k) any other organization or entity. See Utah Code 68-3-12.5
- State: when applied to the different parts of the United States, includes a state, district, or territory of the United States. See Utah Code 68-3-12.5
- Use: means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. See Utah Code 70-3a-103
(1)(a) an injunction against another person‘s commercial use of a mark, if the use:
(1)(a)(i) begins after the mark has become famous; and
(1)(a)(ii) causes dilution of the distinctive quality of the mark; and
(1)(b) obtain other relief as is provided in this section.
(2) To determine if a mark is famous, a court may consider factors including:
(2)(a) the degree of inherent or acquired distinctiveness of the mark in this state;
(2)(b) the duration and extent of use of the mark in connection with the goods and services with which the mark is used;
(2)(c) the duration and extent of advertising and publicity of the mark in this state;
(2)(d) the geographical extent of the trading area in which the mark is used;
(2)(e) the channels of trade for the goods or services with which the mark is used;
(2)(f) the degree of recognition of the mark in the trading areas and channels of trade in this state that are used by:
(2)(f)(i) the mark’s owner; and
(2)(f)(ii) the person against whom the injunction is sought;
(2)(g) the nature and extent of use of the same or similar mark by third parties; and
(2)(h) whether the mark is the subject of:
(2)(h)(i) a state registration in this state; or
(2)(h)(ii) a federal registration:
(2)(h)(ii)(A) under the Act of March 3, 1881, c. 138, 21 Stat. 502;
(2)(h)(ii)(B) under the Act of February 20, 1905, c. 592, 33 Stat. 724; or
(2)(h)(ii)(C) on the principal register.
(3) In an action brought under this section, the owner of a famous mark is entitled only to injunctive relief in this state, unless the person against whom the injunctive relief is sought willfully intended to:
(3)(a) trade on the owner’s reputation; or
(3)(b) cause dilution of the famous mark.
(4) If willful intent is proven under Subsection (3)(a) or (b) , in addition to injunctive relief, the owner is entitled to the remedies set forth in Section 70-3a-404 , subject to:
(4)(a) the discretion of the court; and
(4)(b) the principles of equity.
(5) The following are not actionable under this section:
(5)(a) fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark;
(5)(b) noncommercial use of the mark; and
(5)(c) all forms of news reporting and news commentary.