[Congressional Bills 104th Congress]
[From the U.S. Government Publishing Office]
[S. 1513 Introduced in Senate (IS)]







104th CONGRESS
  1st Session
                                S. 1513

 To amend the Trademark Act of 1946 to make certain revisions relating 
                   to the protection of famous marks.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           December 29, 1995

   Mr. Hatch introduced the following bill; which was read twice and 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To amend the Trademark Act of 1946 to make certain revisions relating 
                   to the protection of famous marks.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Federal Trademark Dilution Act of 
1995''.

SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

    For purposes of this Act, the Act entitled ``An Act to provide for 
the registration and protection of trade-marks used in commerce, to 
carry out the provisions of certain international conventions, and for 
other purposes'', approved July 5, 1946 (15 U.S.C. 1051 and following), 
shall be referred to as the ``Trademark Act of 1946''.

SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.

    (a) Remedies.--Section 43 of the Trademark Act of 1946 (15 U.S.C. 
1125) is amended by adding at the end the following new subsection:
    ``(c)(1) The owner of a famous mark shall be entitled, subject to 
the principles of equity and upon such terms as the court deems 
reasonable, to an injunction against another person's commercial use in 
commerce of a mark or trade name, if such use begins after the mark 
becomes famous and causes dilution of the distinctive quality of the 
famous mark, and to obtain such other relief as is provided in this 
subsection. In determining whether a mark is distinctive and famous, a 
court may consider factors such as, but not limited to--
            ``(A) the degree of inherent or acquired distinctiveness of 
        the mark;
            ``(B) the duration and extent of use of the mark in 
        connection with the goods or services with which the mark is 
        used;
            ``(C) the duration and extent of advertising and publicity 
        of the mark;
            ``(D) the geographical extent of the trading area in which 
        the mark is used;
            ``(E) the channels of trade for the goods or services with 
        which the mark is used;
            ``(F) the degree of recognition of the mark in the trading 
        areas and channels of trade of the mark's owner and the person 
        against whom the injunction is sought;
            ``(G) the nature and extent of use of the same or similar 
        marks by third parties; and
            ``(H) the existence of a registration under the Act of 
        March 3, 1881, or the Act of February 20, 1905, or on the 
        principal register.
    ``(2) In an action brought under this subsection, the owner of a 
famous mark shall be entitled only to injunctive relief unless the 
person against whom the injunction is sought willfully intended to 
trade on the owner's reputation or to cause dilution of the famous 
mark. If such willful intent is proven, the owner of a famous mark 
shall also be entitled to the remedies set forth in sections 35(a) and 
36, subject to the discretion of the court and the principles of 
equity.
    ``(3) The ownership by a person of a valid registration under the 
Act of March 3, 1881, or the Act of February 20, 1905, or on the 
principal register shall be a complete bar to an action against that 
person, with respect to that mark, that is brought by another person 
under the common law or statute of a State and that seeks to prevent 
dilution of the distinctiveness of a mark, label, or form of 
advertisement.
    ``(4) The following shall not be actionable under this section:
            ``(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.
            ``(B) Noncommercial use of a mark.
            ``(C) All forms of news reporting and news commentary.''.
    (b) Conforming Amendment.--The heading for title VIII of the 
Trademark Act of 1946 is amended by striking ``AND FALSE DESCRIPTIONS'' 
and inserting ``, FALSE DESCRIPTIONS, AND DILUTION''.

SEC. 4. DEFINITION.

    Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended 
by inserting after the paragraph defining when a mark shall be deemed 
to be ``abandoned'' the following:
    ``The term `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) competition between the owner of the famous mark and 
        other parties, or
            ``(2) likelihood of confusion, mistake, or deception.''.

SEC. 5. EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect on 
the date of the enactment of this Act.
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