[Congressional Record Volume 151, Number 52 (Tuesday, April 26, 2005)]
[Extensions of Remarks]
[Pages E763-E764]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK DILUTION REVISION ACT OF 2005

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                               speech of

                             HON. DAVID WU

                               of oregon

                    in the house of representatives

                        Tuesday, April 19, 2005

  Mr. WU. Mr. Speaker, I rise in strong opposition to H.R. 683, the 
Trademark Dilution Revision Act.
  Trademark law emanates from the commerce clause. It was originally 
about consumer protection, ensuring consumers are not confused or 
harmed by the misuse of a famous trademark, rather than property 
protection. However, with the passage of the Federal

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Trademark Dilution Act in 1995, the issue of trademark dilution became 
more an issue of property protection. The purpose of that law was to 
enable businesses'' to protect the investment that companies have made 
in branding their products. Consumer confusion was no longer required 
to establish ``dilution.'' Not surprisingly, private lawsuits in this 
area jumped from 2,405 in 1990 to 4,187 in 2000.
  For example, Starbucks went after a local coffee shop in my district 
that was named after its owner, Samantha Buck Lundberg. The coffee shop 
bore the nickname given to her by her family and friends--Sambuck. 
Ringling Bros.-Barnum and Bailey Circus sued the State of Utah over 
Utah's advertising slogan that it had ``The Greatest Snow on Earth.'' 
To the circus this slogan was an obvious play on the long time 
identification of the circus as ``The Greatest Show on Earth.'' 
Microsoft sued to prevent use of the term ``Lindows'' for the Linux 
operating system software and website produced by Lindows, Inc., 
arguing that it was clearly an attempt to play on the Windows 
designation of its own operating system. Lindows eventually changed the 
name of the product and website to ``Linspire'' after losing court 
cases. Best Western International the hotel/motel chain appears to be 
trying to claim sole right to the word ``Best'' when it comes to using 
the word in names of hotels or motels. It has sued both Best Inns and 
Best Value Inns, contending that those names infringe on its trademark.
  In recent years, the Supreme Court addressed these lawsuits in 
Moseley, et al., DBA Victor's Little Secret v. V Secret Catalogue, 
Inc., et al., in which Victoria's Secret sued a small business in 
Kentucky. In its opinion, the Court ruled that companies under the 
Federal Trademark Dilution Act have to prove that their famous brand is 
actually being damaged before they can use dilution law to force 
another person or company to stop using a word, logo, or color.
  Since trademark laws have an effect not only on famous companies but 
also on the many small businesses with legitimate business interests, 
any anti-dilution legislation should be very carefully considered so as 
not to interfere with the rights of small businesses. The goal must be 
to protect trademarks from subsequent uses that blur, dilute or tarnish 
that trademark, but it must also be the protection of small business 
interests from its more powerful corporate counterparts.
  Unfortunately, this bill will change trademark law to make it easier 
for large companies to sue individuals and businesses for trademark 
dilution, thus potentially creating rights in perpetuity for 
trademarks. This bill states that no actual harm will have to be 
proven; large companies will be able arbitrarily to file lawsuits 
against small businesses and private citizens.
  I agree with the Supreme Court in its unanimous decision in Moseley. 
I think that companies in seeking to impose their trademarks upon the 
public must show actual harm. If not, we run the risk of trademark 
owners being able to lock up large portions of our shared language. 
This open-ended invitation to litigate is especially troubling at a 
time when even colors and common words can be granted trademark 
protection.
  I urge my colleagues to oppose this bill.

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