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


                                                       Calendar No. 366
109th CONGRESS
  2d Session
                                H. R. 683


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             April 20, 2005

  Received; read twice and referred to the Committee on the Judiciary

                           February 27, 2006

               Reported by Mr. Specter, with an amendment
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]

_______________________________________________________________________

                                 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,

<DELETED>SECTION 1. SHORT TITLE.</DELETED>

<DELETED>    (a) Short Title.--This Act may be cited as the ``Trademark 
Dilution Revision Act of 2005''.</DELETED>
<DELETED>    (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.).</DELETED>

<DELETED>SEC. 2. DILUTION BY BLURRING; DILUTION BY 
              TARNISHMENT.</DELETED>

<DELETED>    Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) 
is amended--</DELETED>
        <DELETED>    (1) by striking subsection (c) and inserting the 
        following:</DELETED>
<DELETED>    ``(c) Dilution by Blurring; Dilution by Tarnishment.--
</DELETED>
        <DELETED>    ``(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.</DELETED>
        <DELETED>    ``(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:</DELETED>
                <DELETED>    ``(i) The duration, extent, and geographic 
                reach of advertising and publicity of the mark, whether 
                advertised or publicized by the owner or third 
                parties.</DELETED>
                <DELETED>    ``(ii) The amount, volume, and geographic 
                extent of sales of goods or services offered under the 
                mark.</DELETED>
                <DELETED>    ``(iii) The extent of actual recognition 
                of the mark.</DELETED>
        <DELETED>    ``(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:</DELETED>
                <DELETED>    ``(i) The degree of similarity between the 
                mark or trade name and the famous mark.</DELETED>
                <DELETED>    ``(ii) The degree of inherent or acquired 
                distinctiveness of the famous mark.</DELETED>
                <DELETED>    ``(iii) The extent to which the owner of 
                the famous mark is engaging in substantially exclusive 
                use of the mark.</DELETED>
                <DELETED>    ``(iv) The degree of recognition of the 
                famous mark.</DELETED>
                <DELETED>    ``(v) Whether the user of the mark or 
                trade name intended to create an association with the 
                famous mark.</DELETED>
                <DELETED>    ``(vi) Any actual association between the 
                mark or trade name and the famous mark.</DELETED>
        <DELETED>    ``(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.</DELETED>
        <DELETED>    ``(3) Exclusions.--The following shall not be 
        actionable as dilution by blurring or dilution by tarnishment 
        under this subsection:</DELETED>
                <DELETED>    ``(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.</DELETED>
                <DELETED>    ``(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.</DELETED>
                <DELETED>    ``(C) All forms of news reporting and news 
                commentary.</DELETED>
        <DELETED>    ``(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--</DELETED>
                <DELETED>    ``(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</DELETED>
                <DELETED>    ``(B) in a claim arising under this 
                subsection--</DELETED>
                        <DELETED>    ``(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</DELETED>
                        <DELETED>    ``(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,</DELETED>
        <DELETED>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.</DELETED>
        <DELETED>    ``(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</DELETED>
        <DELETED>    (2) in subsection (d)(1)(B)(i)(IX), by striking 
        ``(c)(1) of section 43'' and inserting ``(c)''.</DELETED>

<DELETED>SEC. 3. CONFORMING AMENDMENTS.</DELETED>

<DELETED>    (a) Marks Registrable on the Principal Register.--Section 
2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--
</DELETED>
        <DELETED>    (1) by striking the last two sentences; 
        and</DELETED>
        <DELETED>    (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.''.</DELETED>
<DELETED>    (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''.</DELETED>
<DELETED>    (c) Cancellation.--Section 14 of the Trademark Act of 1946 
(15 U.S.C. 1064) is amended, in the matter preceding paragraph (1)--
</DELETED>
        <DELETED>    (1) by striking ``, including as a result of 
        dilution under section 43(c),''; and</DELETED>
        <DELETED>    (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''.</DELETED>
<DELETED>    (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--</DELETED>
        <DELETED>    ``(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</DELETED>
        <DELETED>    ``(2) on grounds other than dilution by blurring 
        or dilution by tarnishment,</DELETED>
<DELETED>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.''.</DELETED>
<DELETED>    (e) Definitions.--Section 45 of the Trademark Act of 1946 
(15 U.S.C. 1127) is amended by striking the definition relating to 
``dilution''.</DELETED>

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''.
                                                       Calendar No. 366

109th CONGRESS

  2d Session

                               H. R. 683

_______________________________________________________________________

                                 AN ACT

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

_______________________________________________________________________

                           February 27, 2006

                       Reported with an amendment