[Congressional Record Volume 145, Number 106 (Monday, July 26, 1999)]
[House]
[Pages H6363-H6364]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                    TRADEMARK AMENDMENTS ACT OF 1999

  Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the 
Senate bill (S. 1259) to amend the Trademark Act of 1946 relating to 
dilution of famous marks, and for other purposes.
  The Clerk read as follows:

                                S. 1259

       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

[[Page H6364]]

     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''.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
North Carolina (Mr. Coble) and the gentleman from Maryland (Mr. 
Cummings) each will control 20 minutes.
  The Chair recognizes the gentleman from North Carolina (Mr. Coble).


                             General Leave

  Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may 
have 5 legislative days within which to revise and extend their remarks 
and to include extraneous material on S. 1259.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from North Carolina?
  There was no objection.
  Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
  I rise today, Mr. Speaker, in support of S. 1259, the Trademark 
Amendments Act of 1999, and urge the House to adopt the measure.
  This bill is nearly identical to H.R. 1565, the Trademark Amendments 
Act of 1999, which the House Committee on the Judiciary favorably 
reported on May 26 of this year.
  This legislation makes significant and necessary improvements in the 
trademark law.
  The Subcommittee on Courts and Intellectual Property and the 
Committee on the Judiciary support S. 1259 in a bipartisan manner. I 
urge its adoption today.
  Mr. Speaker, I reserve the balance of my time.
  Mr. CUMMINGS. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I rise in support of S. 1259, the Senate trademark bill 
that is substantially similar to the bill reported out of the Committee 
on the Judiciary earlier this year, H.R. 1565.
  This legislation is a necessary follow-up to the Federal Trademark 
Dilution Act of 1995, which was enacted last Congress and which gave a 
Federal cause of action to holders of famous trademarks for dilution.
  The bill before us today is necessary to clear up certain issues in 
the interpretation of the dilution act which the Federal courts have 
grappled with since its enactment.
  In particular, S. 1259 would provide holders of famous marks with a 
right to oppose or seek cancellation of a mark that would cause 
dilution as provided in the dilution act.
  The legislation enacted in the 105th Congress authorizes injunctive 
relief after the harm has occurred, while the legislation before us 
today will allow the right to oppose or seek cancellation of a mark 
hopefully before harm has occurred.
  While we today take up the Senate bill, it is substantially the same 
as the House bill on which a hearing and committee markup occurred 
earlier this year.
  I urge my colleagues to support S. 1259.
  Mr. Speaker, I yield back the balance of my time.
  Mr. COBLE. Mr. Speaker, I have no further requests for time, and I 
yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from North Carolina (Mr. Coble) that the House suspend the 
rules and pass the Senate bill, S. 1259.
  The question was taken; and (two-thirds having voted in favor 
thereof) the rules were suspended and the Senate bill was passed.
  A motion to reconsider was laid on the table.

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