[Congressional Bills 109th Congress]
[From the U.S. Government Publishing Office]
[H.R. 683 Reported in House (RH)]






                                                   Union Calendar No. 9
109th CONGRESS
  1st Session
                                H. R. 683

                          [Report No. 109-23]

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


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                            February 9, 2005

Mr. Smith of Texas introduced the following bill; which was referred to 
                     the Committee on the Judiciary

                             March 17, 2005

  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 
                           February 9, 2005]

_______________________________________________________________________

                                 A BILL


 
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 2005''.
    (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.
            ``(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) 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) Fair use of a famous mark by another person, 
                other than as a designation of source for the person's 
                goods or services, including for purposes of 
                identifying and parodying, criticizing, or commenting 
                upon the famous mark owner or the goods or services of 
                the famous mark owner.
                    ``(C) All forms of news reporting and news 
                commentary.
            ``(4) Additional remedies.--In an action brought under this 
        subsection, the owner of the famous mark shall be entitled only 
        to injunctive relief as set forth in section 34, except that, 
        if--
                    ``(A) the person against whom the injunction is 
                sought did not use in commerce, prior to the date of 
                the enactment of the Trademark Dilution Revision Act of 
                2005, the mark or trade name that is likely to cause 
                dilution by blurring or dilution by tarnishment, 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,
        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.
            ``(5) 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 is brought by another person under the common 
        law or a statute of a State and that seeks to prevent dilution 
        by blurring or dilution by tarnishment, or that asserts any 
        claim of actual or likely damage or harm to the distinctiveness 
        or reputation of a mark, label, or form of advertisement.''; 
        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)--
            (1) by striking ``, including as a result of dilution under 
        section 43(c),''; and
            (2) by inserting ``(A) for which the constructive use date 
        is after the date on which the petitioner's mark became famous 
        and which would be likely to cause dilution by blurring or 
        dilution by tarnishment under section 43(c), or (B) on grounds 
        other than dilution by blurring or dilution by tarnishment'' 
        after ``February 20, 1905''.
    (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 
``dilution''.




                                                   Union Calendar No. 9

109th CONGRESS

  1st Session

                               H. R. 683

                          [Report No. 109-23]

_______________________________________________________________________

                                 A BILL

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

_______________________________________________________________________

                             March 17, 2005

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