[Congressional Bills 109th Congress]
[From the U.S. Government Publishing Office]
[H.R. 683 Enrolled Bill (ENR)]


        H.R.683

                       One Hundred Ninth Congress

                                 of the

                        United States of America


                          AT THE SECOND SESSION

          Begun and held at the City of Washington on Tuesday,
             the third day of January, two thousand and six


                                 An Act


 
To amend the Trademark Act of 1946 with respect to dilution by blurring 
                             or tarnishment.

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

SECTION 1. SHORT TITLE.

    (a) Short Title.--This Act may be cited as the ``Trademark Dilution 
Revision Act of 2006''.
    (b) References.--Any reference in this Act to the Trademark Act of 
1946 shall be a reference to the Act entitled ``An Act to provide for 
the registration and protection of trademarks 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 et seq.).

SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.

    Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is 
amended--
        (1) by striking subsection (c) and inserting the following:
    ``(c) Dilution by Blurring; Dilution by Tarnishment.--
        ``(1) Injunctive relief.--Subject to the principles of equity, 
    the owner of a famous mark that is distinctive, inherently or 
    through acquired distinctiveness, shall be entitled to an 
    injunction against another person who, at any time after the 
    owner's mark has become famous, commences use of a mark or trade 
    name in commerce that is likely to cause dilution by blurring or 
    dilution by tarnishment of the famous mark, regardless of the 
    presence or absence of actual or likely confusion, of competition, 
    or of actual economic injury.
        ``(2) Definitions.--(A) For purposes of paragraph (1), a mark 
    is famous if it is widely recognized by the general consuming 
    public of the United States as a designation of source of the goods 
    or services of the mark's owner. In determining whether a mark 
    possesses the requisite degree of recognition, the court may 
    consider all relevant factors, including the following:
            ``(i) The duration, extent, and geographic reach of 
        advertising and publicity of the mark, whether advertised or 
        publicized by the owner or third parties.
            ``(ii) The amount, volume, and geographic extent of sales 
        of goods or services offered under the mark.
            ``(iii) The extent of actual recognition of the mark.
            ``(iv) Whether the mark was registered under the Act of 
        March 3, 1881, or the Act of February 20, 1905, or on the 
        principal register.
        ``(B) For purposes of paragraph (1), `dilution by blurring' is 
    association arising from the similarity between a mark or trade 
    name and a famous mark that impairs the distinctiveness of the 
    famous mark. In determining whether a mark or trade name is likely 
    to cause dilution by blurring, the court may consider all relevant 
    factors, including the following:
            ``(i) The degree of similarity between the mark or trade 
        name and the famous mark.
            ``(ii) The degree of inherent or acquired distinctiveness 
        of the famous mark.
            ``(iii) The extent to which the owner of the famous mark is 
        engaging in substantially exclusive use of the mark.
            ``(iv) The degree of recognition of the famous mark.
            ``(v) Whether the user of the mark or trade name intended 
        to create an association with the famous mark.
            ``(vi) Any actual association between the mark or trade 
        name and the famous mark.
        ``(C) For purposes of paragraph (1), `dilution by tarnishment' 
    is association arising from the similarity between a mark or trade 
    name and a famous mark that harms the reputation of the famous 
    mark.
        ``(3) Exclusions.--The following shall not be actionable as 
    dilution by blurring or dilution by tarnishment under this 
    subsection:
            ``(A) Any fair use, including a nominative or descriptive 
        fair use, or facilitation of such fair use, of a famous mark by 
        another person other than as a designation of source for the 
        person's own goods or services, including use in connection 
        with--
                ``(i) advertising or promotion that permits consumers 
            to compare goods or services; or
                ``(ii) identifying and parodying, criticizing, or 
            commenting upon the famous mark owner or the goods or 
            services of the famous mark owner.
            ``(B) All forms of news reporting and news commentary.
            ``(C) Any noncommercial use of a mark.
        ``(4) Burden of proof.--In a civil action for trade dress 
    dilution 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--
            ``(A) the claimed trade dress, taken as a whole, is not 
        functional and is famous; and
            ``(B) if the claimed trade dress includes any mark or marks 
        registered on the principal register, the unregistered matter, 
        taken as a whole, is famous separate and apart from any fame of 
        such registered marks.
        ``(5) Additional remedies.--In an action brought under this 
    subsection, the owner of the famous mark shall be entitled to 
    injunctive relief as set forth in section 34. The owner of the 
    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 if--
            ``(A) the mark or trade name that is likely to cause 
        dilution by blurring or dilution by tarnishment was first used 
        in commerce by the person against whom the injunction is sought 
        after the date of enactment of the Trademark Dilution Revision 
        Act of 2006; and
            ``(B) in a claim arising under this subsection--
                ``(i) by reason of dilution by blurring, the person 
            against whom the injunction is sought willfully intended to 
            trade on the recognition of the famous mark; or
                ``(ii) by reason of dilution by tarnishment, the person 
            against whom the injunction is sought willfully intended to 
            harm the reputation of the famous mark.
        ``(6) Ownership of valid registration a complete bar to 
    action.--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 under this Act shall be a complete bar to an 
    action against that person, with respect to that mark, that--
            ``(A)(i) is brought by another person under the common law 
        or a statute of a State; and
            ``(ii) seeks to prevent dilution by blurring or dilution by 
        tarnishment; or
            ``(B) asserts any claim of actual or likely damage or harm 
        to the distinctiveness or reputation of a mark, label, or form 
        of advertisement.
        ``(7) Savings clause.--Nothing in this subsection shall be 
    construed to impair, modify, or supersede the applicability of the 
    patent laws of the United States.''; and
        (2) in subsection (d)(1)(B)(i)(IX), by striking ``(c)(1) of 
    section 43'' and inserting ``(c)''.

SEC. 3. CONFORMING AMENDMENTS.

    (a) Marks Registrable on the Principal Register.--Section 2(f) of 
the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--
        (1) by striking the last two sentences; and
        (2) by adding at the end the following: ``A mark which would be 
    likely to cause dilution by blurring or dilution by tarnishment 
    under section 43(c), may be refused registration only pursuant to a 
    proceeding brought under section 13. A registration for a mark 
    which would be likely to cause dilution by blurring or dilution by 
    tarnishment 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 striking ``as a 
result of dilution'' and inserting ``the registration of any mark which 
would be likely to cause dilution by blurring or dilution by 
tarnishment''.
    (c) Cancellation.--Section 14 of the Trademark Act of 1946 (15 
U.S.C. 1064) is amended, in the matter preceding paragraph (1) by 
striking ``, including as a result of dilution under section 43(c),'' 
and inserting ``, including as a result of a likelihood of dilution by 
blurring or dilution by tarnishment under section 43(c),''.
    (d) Marks for the Supplemental Register.--The second sentence of 
section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to 
read as follows:
``Whenever any person believes that such person is or will be damaged 
by the registration of a mark on the supplemental register--
        ``(1) for which the effective filing date is after the date on 
    which such person's mark became famous and which would be likely to 
    cause dilution by blurring or dilution by tarnishment under section 
    43(c); or
        ``(2) on grounds other than dilution by blurring or dilution by 
    tarnishment, such person may at any time, upon payment of the 
    prescribed fee and the filing of a petition stating the ground 
    therefor, apply to the Director to cancel such registration.''.
    (e) Definitions.--Section 45 of the Trademark Act of 1946 (15 
U.S.C. 1127) is amended by striking the definition relating to the term 
``dilution''.

                               Speaker of the House of Representatives.

                            Vice President of the United States and    
                                               President of the Senate.