[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[H.R. 1565 Reported in House (RH)]






                                                 Union Calendar No. 144
106th CONGRESS
  1st Session
                                H. R. 1565

                          [Report No. 106-250]

   To amend the Trademark Act of 1946 relating to dilution of famous 
                     marks, and for other purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                             April 27, 1999

  Mr. Coble introduced the following bill; which was referred to the 
                       Committee on the Judiciary

                             July 22, 1999

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]
 [For text of introduced bill, see copy of bill as introduced on April 
                               27, 1999]

_______________________________________________________________________

                                 A BILL


 
   To amend the Trademark Act of 1946 relating to dilution of famous 
                     marks, and for other purposes.

    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 ``Trademark Amendments Act of 1999''.

SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND CANCELATION.

    (a) Registrable Marks.--Section 2 of 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'' (in this Act referred to as the 
``Trademark Act of 1946'') (15 U.S.C. 1052) is amended by adding at the 
end the following flush sentences: ``A mark which when used would cause 
dilution under section 43(c) may be refused registration only pursuant 
to a proceeding brought under section 13. A registration for a mark 
which when used would cause dilution under section 43(c) may be 
canceled pursuant to a proceeding brought under either section 14 or 
section 24.''.
    (b) Opposition.--Section 13(a) of the Trademark Act of 1946 (15 
U.S.C. 1063(a)) is amended in the first sentence by inserting ``, 
including as a result of dilution under section 43(c),'' after 
``principal register''.
    (c) Petitions To Cancel Registrations.--Section 14 of the Trademark 
Act of 1946 (15 U.S.C. 1064) is amended in the matter preceding 
paragraph (1) by inserting ``, including as a result of dilution under 
section 43(c),'' after ``damaged''.
    (d) Cancelation.--Section 24 of the Trademark Act of 1946 (15 
U.S.C. 1092) is amended in the second sentence by inserting ``, 
including as a result of dilution under section 43(c),'' after 
``register''.

SEC. 3. REMEDIES IN CASES OF DILUTION OF FAMOUS MARKS.

    (a) Injunctions.--(1) Section 34(a) of the Trademark Act of 1946 
(15 U.S.C. 1116(a)) is amended in the first sentence by striking 
``section 43(a)'' and inserting ``subsection (a) or (c) of section 
43''.
    (2) Section 43(c)(2) of the Trademark Act of 1946 (15 U.S.C. 
1125(c)(2)) is amended in the first sentence by inserting ``as set 
forth in section 34'' after ``relief''.
    (b) Damages.--Section 35(a) of the Trademark Act of 1946 (15 U.S.C. 
1117(a)) is amended in the first sentence by striking ``or a violation 
under section 43(a),'' and inserting ``a violation under section 43(a), 
or a willful violation under section 43(c),''.
    (c) Destruction of Articles.--Section 36 of the Trademark Act of 
1946 (15 U.S.C. 1118) is amended in the first sentence--
            (1) by striking ``or a violation under section 43(a),'' and 
        inserting ``a violation under section 43(a), or a willful 
        violation under section 43(c),''; and
            (2) by inserting after ``in the case of a violation of 
        section 43(a)'' the following: ``or a willful violation under 
        section 43(c)''.

SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK INFRINGEMENT AND 
              DILUTION.

    (a) Civil Actions.--Section 32 of the Trademark Act of 1946 (15 
U.S.C. 1114) is amended--
            (1) by amending the last undesignated paragraph in 
        paragraph (1) to read as follows:
    ``As used in this subsection, the term `any person' also includes 
the United States, all agencies and instrumentalities thereof, and all 
individuals, firms, corporations, or other persons acting for the 
United States and with the authorization and consent of the United 
States, and any State, any instrumentality of a State, and any officer 
or employee of a State or instrumentality of a State acting in his or 
her official capacity. The United States, all agencies and 
instrumentalities thereof, and all individuals, firms, corporations, 
other persons acting for the United States and with the authorization 
and consent of the United States, and any State, any instrumentality of 
a State, and any officer or employee of a State or instrumentality of a 
State, shall be subject to the provisions of this Act in the same 
manner and to the same extent as any nongovernmental entity.''.
    (b) Waiver of Sovereign Immunity.--Section 40 of the Trademark Act 
of 1946 (15 U.S.C. 1122) is amended--
            (1) in subsection (b), by striking ``(b) In a suit'' and 
        inserting ``(c) Availibility of Remedies.--In a suit'';
            (2) by striking ``Sec. 40. (a) Any State'' and inserting 
        the following:
    ``Sec. 40. (a) Waiver of Sovereign Immunity by the United States.--
The United States, all agencies and instrumentalities thereof, and all 
individuals, firms, corporations, other persons acting for the United 
States and with the authorization and consent of the United States, 
shall not be immune from suit in Federal or State court by any person, 
including any governmental or nongovernmental entity, for any violation 
under this Act.
    ``(b) Waiver of Sovereign Immunity by States.--Any State''; and
            (3) in the first sentence of subsection (c), as so 
        redesignated--
                    (A) by striking ``subsection (a) for a violation 
                described in that subsection'' and inserting 
                ``subsection (a) or (b) for a violation described 
                therein''; and
                    (B) by inserting after ``other than'' the 
                following: ``the United States or any agency or 
                instrumentality thereof, or any individual, firm, 
                corporation, or other person acting for the United 
                States and with authorization and consent of the United 
                States, or''.
    (c) Definition.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 
1127) is amended by inserting between the 2 paragraphs relating to the 
definition of ``person'' the following:
    ``The term `person' also includes the United States, any agency or 
instrumentality thereof, or any individual, firm, or corporation acting 
for the United States and with the authorization and consent of the 
United States. The United States, any agency or instrumentality 
thereof, and any individual, firm, or corporation acting for the United 
States and with the authorization and consent of the United States, 
shall be subject to the provisions of this Act in the same manner and 
to the same extent as any nongovernmental entity.''.

SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.

    Section 43(a) of the Trademark Act of 1946 (15 U.S.C. 1125(a)) is 
amended by adding at the end the following:
    ``(3) In a civil action for trade dress infringement under this Act 
for trade dress not registered on the principal register, the person 
who asserts trade dress protection has the burden of proving that the 
matter sought to be protected is not functional.''.

SEC. 6. TECHNICAL AMENDMENTS.

    (a) Assignment of Marks.--Section 10 of the Trademark Act of 1946 
(15 U.S.C. 1060) is amended--
            (1) by striking ``subsequent purchaser'' in the second to 
        last sentence and inserting ``assignment'';
            (2) in the first sentence by striking ``mark,'' and 
        inserting ``mark''; and
            (3) in the third sentence by striking the second period at 
        the end.
    (b) Additional Clerical Amendments.--The text and title of the 
Trademark Act of 1946 are amended by striking ``trade-marks'' each 
place it appears and inserting ``trademarks''.

SEC. 7. RIGHTS OF PERFORMERS OF MUSICAL GROUPS.

    (a) In General.--Part A of subtitle II title 36, United States 
Code, is amended by inserting after chapter 2401 the following new 
chapter:

 ``CHAPTER 2501--ASSOCIATION TO PRESERVE AUTHENTICITY OF MUSICAL GROUPS

``Sec.
``250101. Association established.
``250102. Objects and purposes.
``250103. Powers.
``250104. Standards for use of certification mark.
``250105. Rights of performers.
``Sec. 250101. Association established
    ``There shall be established a body corporate which shall be known 
as the `Association to Preserve the Authenticity of Musical Groups'. 
The Association shall have perpetual succession and the powers and 
limitations contained in this chapter. The Association shall appoint 
its chairperson.
``Sec. 250102. Objects and purposes
    ``The objects and purposes of the Association shall be--
            ``(1) to benefit entertainers and performers who have 
        performed with original entertainment groups;
            ``(2) to promote, develop, and assist in preserving and 
        protecting the rights of entertainers and performers; and
            ``(3) to educate the public concerning the history of 
        performing groups and the names of the actual performers in 
        those groups.
To aid in its purposes, the Association shall promote and use the 
certification mark it establishes under this chapter and allow 
performers to use the certification mark of the Association in 
accordance with the chapter.
``Sec. 250103. Powers
    ``(a) In General.--The Association may--
            ``(1) sue and be sued, collect dues, claim and defend in 
        any court its rights and its members rights in its 
        certification mark;
            ``(2) make and adopt a constitution, bylaws, rules, and 
        regulations for the use of its certification mark;
            ``(3) from time to time repeal or amend its constitution, 
        bylaws, rules, and regulations not inconsistent with the laws 
        of the United States or any of the States thereof; and
            ``(4) provide for the safe-keeping and management of its 
        property and funds.
    ``(b) Certification Mark.--The Association shall establish and have 
the sole and exclusive rights to its certification mark for use in 
carrying out its purposes. No powers or privileges granted by this 
chapter shall interfere or conflict with established or vested rights.
``Sec. 250104. Standards for use of certification mark
    ``The Association shall establish the standards for those 
entertainers who may use its certification mark. Such standards shall 
include, but are not limited to, the following criteria:
            ``(1) At least one performer in any group displaying or 
        using in its advertising the certification mark must have been 
        a member of the original group that performed under the same or 
        similar name.
            ``(2) Any advertising for such group shall not be false or 
        misleading with respect to the membership or history of the 
        group.
Any additional standards must be consistent with paragraphs (1) and 
(2).
``Sec. 250105. Rights of Performers
    ``It shall not be a violation of the Trademark Act of 1946 or the 
statutes or common law of any State for an individual who has been a 
member of a performing group to be able to use the certification mark 
of the Association and represent that such individual had been a member 
of such a group in any promotions, advertisements, or performing of the 
same services as those performed by such group, if such representation 
meets the standards in section 250104 and does not deceive or confuse 
as to the nature, characteristics, qualities, or sponsorship of such 
services.''.
    (b) Conforming Amendment.--The item relating to chapter 2501 in the 
table of chapters for subtitle II of title 36, United States Code, is 
amended to read as follows:

``2501. ASSOCIATION TO PROVIDE AUTHENTICITY OF MUSICAL        250101''.
GROUPS.
                                     

                                                 Union Calendar No. 144

106th CONGRESS

  1st Session

                               H. R. 1565

                          [Report No. 106-250]

_______________________________________________________________________

                                 A BILL

   To amend the Trademark Act of 1946 relating to dilution of famous 
                     marks, and for other purposes.

_______________________________________________________________________

                             July 22, 1999

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed