President Bush recently signed a law that makes it easier for trademark owners to cite damages to their mark. The Trademark Dilution Revision Act, signed on Oct. 6, states that a mark owner doesn't have to prove actual damage to its mark but only the likelihood of injury.

Congress added trademark dilution as a cause of action under federal law in 1996. Unlike traditional trademark infringement cases, in which the injury is the likelihood of confusion among consumers, dilution recognizes the potential injury to a famous trademark by lessening its uniqueness.

The classic law school example is to suggest that if someone started selling KODAK bicycles, it would injure the vitality of the KODAK trademark by "blurring" its distinctiveness - even if there were no evidence that any consumers actually thought those bikes came from the film people.

Kate Strain, an intellectual property lawyer at Savannah-based Hunter Maclean, said the new law will help business owners better protect their reputations. "You want to protect your trademarks by making sure they are associated with quality products and make sure that your name isn't damaged by others," she said. "You don't want the public to think that you're endorsing a product when you really aren't."

The new law overturns a 2003 Supreme Court decision involving a store called "Victor's Little Secret" selling "adult novelties" in a Louisville, Ky., strip mall. When Victoria's Secret sued for trademark dilution, the Court held that the plaintiff needed to prove, not merely the likelihood of dilution, but actual dilution, a very difficult task. The new law revises the statute to make it clear that plaintiff need only show the defendant's mark is likely to cause dilution of the plaintiff's mark.

The new law now adds "dilution by tarnishment" as a cause of action, defined as "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark."

Smaller operators using a well-known mark in an unsavory way are the most likely to be affected by the new law. But Savannah intellectual property lawyer Nathan Belzer said small mom-and-pop shops with names similar to famous marks but completely different products could also be affected.

To determine if a small operator's name could be in conflict with a famous mark,Belzer said, business owners should analyze the strength of the mark in question. The strongest marks, he said, are coined marks, such as KODAK, which don't appear in the English language or any other language. Those names should be avoided entirely. The second strongest marks are arbitrary marks - like Apple computers -- which have no relation to the product but are well-known. .

On more tentative ground are marks that are suggestive of the product, such as Weedeater, or descriptive such as Fizzy, to describe a seltzer drink. Those marks aren't as easy to protect, Belzer said. And there are no protections, Belzer said, for generic marks such as Shoe Store. Also, if a trademark, such as Delta, (airlines and faucets among others) is already highly diluted, it can't be protected under this law.

The new law makes several other changes. First, it redefines "fair use" in dilution claims. Section 43 of the Lanham Act listed as fair uses:

(1) 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

(2) Noncommercial use of a mark

(3) All forms of news reporting and news commentary

The new law's fair-use exceptions are:

(1) Advertising or promotion that permits consumers to compare goods or services

(2) Identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner

(3) All forms of news reporting and news commentary

(4) Any noncommercial use of a mark

The new law also alters language that could have been interpreted to extend these fair-use defenses to many other trademark cases. The 1996 dilution statute listed such defenses as applicable to actions brought under "this section," which might be read to apply not just to dilution claims but to many other cases under Section 43 of the Lanham Act. The new law limits those fair-use defenses to dilution cases.

"This law will give corporations a lot more confidence in bringing cases forward," Strain said. "They've got more weapons in their arsenal now."