[Congressional Record Volume 141, Number 197 (Tuesday, December 12, 1995)]
[House]
[Pages H14317-H14318]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

[[Page H14317]]


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                 FEDERAL TRADEMARK DILUTION ACT OF 1995

  Mr. MOORHEAD. Mr. Speaker, I move to suspend the rules and pass the 
bill (H.R. 1295) to amend the Trademark Act of 1946 to make certain 
revisions relating to the protection of famous marks, as amended.
  The Clerk read as follows:

                               H.R. 1295

       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 ``Federal Trademark Dilution 
     Act of 1995''.

     SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

       For purposes of this Act, 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'', approved 
     July 5, 1946 (15 U.S.C. 1051 and following), shall be 
     referred to as the ``Trademark Act of 1946''.

     SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.

       (a) Remedies.--Section 43 of the Trademark Act of 1946 (15 
     U.S.C. 1125) is amended by adding at the end the following 
     new subsection:
       ``(c)(1) The owner of a famous mark shall be entitled, 
     subject to the principles of equity and upon such terms as 
     the court deems reasonable, to an injunction against another 
     person's commercial use in commerce of a mark or trade name, 
     if such use begins after the mark has become famous and 
     causes dilution of the distinctive quality of the mark, and 
     to obtain such other relief as is provided in this 
     subsection. In determining whether a mark is distinctive and 
     famous, a court may consider factors such as, but not limited 
     to--
       ``(A) the degree of inherent or acquired distinctiveness of 
     the mark;
       ``(B) the duration and extent of use of the mark in 
     connection with the goods or services with which the mark is 
     used;
       ``(C) the duration and extent of advertising and publicity 
     of the mark;
       ``(D) the geographical extent of the trading area in which 
     the mark is used;
       ``(E) the channels of trade for the goods or services with 
     which the mark is used;
       ``(F) the degree of recognition of the mark in the trading 
     areas and channels of trade used by the marks' owner and the 
     person against whom the injunction is sought;
       ``(G) the nature and extent of use of the same or similar 
     marks by third parties; and
       ``(H) whether the mark was registered under the Act of 
     March 3, 1881, or the Act of February 20, 1905, or on the 
     principal register.
       ``(2) In an action brought under this subsection, the owner 
     of the famous mark shall be entitled only to injunctive 
     relief unless the person against whom the injunction is 
     sought willfully intended to trade on the owner's reputation 
     or to cause dilution of the famous mark. If such willful 
     intent is proven, 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.
       ``(3) 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 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 of the 
     distinctiveness of a mark, label, or form of advertisement.
       ``(4) The following shall not be actionable under this 
     section:
       ``(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) Noncommercial use of a mark.
       ``(C) All forms of news reporting and news commentary.''.
       (b) Conforming Amendment.--The heading for title VIII of 
     the Trademark Act of 1946 is amended by striking ``AND FALSE 
     DESCRIPTIONS'' and inserting ``, FALSE DESCRIPTIONS, AND 
     DILUTION''.

     SEC. 4. DEFINITION.

       Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is 
     amended by inserting after the paragraph defining when a mark 
     shall be deemed to be ``abandoned'' the following:
       ``The term `dilution' means the lessening of the capacity 
     of a famous mark to identify and distinguish goods or 
     services, regardless of the presence or absence of--
       ``(1) competition between the owner of the famous mark and 
     other parties, or
       ``(2) likelihood of confusion, mistake, or deception.''.

     SEC. 5. EFFECTIVE DATE.

       This Act and the amendments made by this Act shall take 
     effect on the date of the enactment of this Act.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
California [Mr. Moorhead] will be recognized for 20 minutes, and the 
gentlewoman from Colorado [Mrs. Schroeder] will be recognized for 20 
minutes.
  The Chair recognizes the gentleman from California [Mr. Moorhead].
  Mr. MOORHEAD. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I rise in support of H.R. 1295, the Federal Trademark 
Dilution Act of 1995 and I would like to commend the gentlewoman from 
Colorado [Mrs. Schroeder], the ranking member of the Subcommittee on 
Courts and Intellectual Property for all of her hard work on this 
issue.
  Mr. Speaker, this bill is designed to protect famous trademarks from 
subsequent uses that blur the distinctiveness of the mark or tarnish or 
disparage it, even in the absence of a likelihood of confusion. Thus, 
for example, the use of DuPont shoes, Buick aspirin, and Kodak pianos 
would be actionable under this bill.
  The concept of dilution dates as far back as 1927, when the Harvard 
Law Review published an article by Frank I. Schecter in which it was 
argued that coined or unique trademarks should be protected from the 
``gradual whittling away of dispersion of the identity and hold upon 
the public mind'' of the mark by its use on noncompeting goods. Today, 
approximately 25 States have laws that prohibit trademark dilution.
  A Federal trademark dilution statute is necessary, because famous 
marks ordinarily are used on a nationwide basis 

[[Page H14318]]
and dilution protection is only available on a patch-quilt system of 
protection. Further, some courts are reluctant to grant nationwide 
injunctions for violation of State law where half of the States have no 
dilution law. Protection for famous marks should not depend on whether 
the forum where suit is filed has a dilution statute. This simply 
encourages forum-shopping and increases the amount of litigation.
  H.R. 1295 would amend section 43 of the Trademark Act to add a new 
subsection (c) to provide protection against another's commercial use 
of a famous mark which result in dilution of such mark. The bill 
defines the term ``dilution'' to mean ``the lessening of the capacity 
of registrant's mark to identify and distinguish goods or services of 
the presence or absence of (a) competition between the parties, or (b) 
likelihood of confusion, mistake, or deception.''
  The proposal adequately addresses legitimate first amendment concerns 
espoused by the broadcasting industry and the media. The bill would not 
prohibit or threaten noncommercial expression, such as parody, satire, 
editorial, and other forms of expression that are not a part of a 
commercial transaction. The bill includes specific language exempting 
from liability the ``fair use'' of a mark in the context of comparative 
commercial advertising or promotion and all forms of news reporting and 
news commentary.
  The legislation sets forth a number of specific criteria in 
determining whether a mark has acquired the level of distinctiveness to 
be considered famous. These criteria include: First, the degree of 
inherent or acquired distinctiveness of the mark; second, the duration 
and extent of the use of the mark; and third, the geographical extent 
of the trading area in which the mark is used.
  With respect to remedies, the bill limits the relief a court could 
award to an injunction unless the wrongdoer willfully intended to trade 
on the trademark owner's reputation or to cause dilution, in which case 
other remedies under the Trademark Act become available. The ownership 
of a valid Federal registration would act as a complete bar to a 
dilution action brought under State law.
  Mr. Speaker, H.R. 1295 is strongly supported by the U.S. Patent and 
Trademark Office, the International Trademark Association; the American 
Bar Association; Time Warner; the Campbell Soup Co.; the Samsonite 
Corp., and many other U.S. companies, small businesses, and 
individuals. It is solid legislation and I urge its passage.
  Mr. Speaker, I reserve the balance of my time.
  Mrs. SCHROEDER. Mr. Speaker, I yield myself such time as I may 
consume.
  Mr. Speaker, I am pleased to join the Intellectual Property 
Subcommittee chairman, the gentleman from California, in support of 
H.R. 1295, the Trademark Dilution Act. In particular, I am pleased that 
the bill before us today includes an amendment I offered in 
subcommittee to extend the Federal remedy against trademark dilution to 
unregistered as well as registered famous marks.
  At our hearing on H.R. 1295, the administration made a compelling 
case that limiting the Federal remedy against trademark dilution to 
those famous marks that are registered is not within the spirit of the 
United States position as a leader setting the standards for strong 
worldwide protection of intellectual property. Such a limitation would 
undercut the United States' position with our trading partners, which 
is that famous marks should be protected regardless of whether the 
marks are registered in the country where protection is sought.
  In all of our work this year, the Intellectual Property Subcommittee 
has been strongly committed to making sure that the United States is a 
leader in setting high standards worldwide for the protection of 
intellectual property. This bill is fully within that tradition, and 
will strengthen our hand in our negotiations with our trading partners.
  It is also important to recognize, as the Patent and Trademark Office 
pointed out in its testimony, that existing precedent does not 
distinguish between registered and unregistered marks in determining 
whether a mark is entitled to protection as a famous mark. To the 
extent that dilution has been a remedy available to the owner of a 
trademark or service mark in the United States under State statutes and 
the common law, that remedy has not been limited only to registered 
marks. So it really doesn't make any sense, if we are going to create a 
Federal statute on trademark dilution, to limit the remedy to 
registered marks.
  For these reasons, I am happy that the bill before us today includes 
a strong Federal remedy for trademark dilution, not only with respect 
to registered marks, but also with respect to unregistered famous 
marks. I urge my colleagues to support this bill.
  Mr. Speaker, I have no further speakers on this bill, so I yield back 
the balance of my time.
  Mr. MOORHEAD. Mr. Speaker, I have no further requests for time, and I 
yield back the balance of my time.
  The SPEAKER pro tempore (Mr. Ewing). The question is on the motion of 
the gentleman from California [Mr. Moorhead] that the House suspend the 
rules and pass the bill, H.R. 1295, as amended.
  The question was taken; and (two-thirds having voted in favor 
thereof) the rules were suspended and the bill, as amended, was passed.
  A motion to reconsider was laid on the table.

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