[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1259 Engrossed in Senate (ES)]
106th CONGRESS
1st Session
S. 1259
_______________________________________________________________________
AN ACT
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) Cancellation.--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''.
(e) Effective Date and Application.--The amendments made by this
section shall take effect on the date of enactment of this Act and
shall apply only to any application for registration filed on or after
January 16, 1996.
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)''.
(d) Effective Date and Application.--The amendments made by this
section shall take effect on the date of enactment of this Act and
shall not apply to any civil action pending on such date of enactment.
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 in the last undesignated paragraph in paragraph
(1)--
(1) in the first sentence by inserting after ``includes''
the following: ``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'';
and
(2) in the second sentence by striking ``Any'' and
inserting ``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''.
(b) Waiver of Sovereign Immunity.--Section 40 of the Trademark Act
of 1946 (15 U.S.C. 1122) is amended--
(1) by redesignating subsection (b) as subsection (c);
(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 purchase'' 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''.
Passed the Senate July 1, 1999.
Attest:
Secretary.
106th CONGRESS
1st Session
S. 1259
_______________________________________________________________________
AN ACT
To amend the Trademark Act of 1946 relating to dilution of famous
marks, and for other purposes.