[Congressional Record Volume 152, Number 29 (Wednesday, March 8, 2006)]
[Senate]
[Pages S1921-S1923]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK DILUTION REVISION ACT OF 2006

  Mr. FRIST. Mr. President, I ask unanimous consent that the Senate 
proceed to the immediate consideration of Calendar No. 366, H.R. 683.
  The PRESIDING OFFICER. The clerk will report the bill by title.
  The legislative clerk read as follows:

       A bill (H.R. 683) to amend the Trademark Act of 1946 with 
     respect to dilution by blurring or tarnishment.

  There being no objection, the Senate proceeded to consider the bill 
which had been reported from the Committee on the Judiciary with an 
amendment.
  [Strike the part shown in black brackets and insert the part shown in 
italic.]

                                H.R. 683

         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

[[Page S1922]]

     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''.]

     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

[[Page S1923]]

     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''.

  Mr. LEAHY. Mr. President, I am pleased that today the Senate is going 
to pass an important piece of legislation, the Trademark Dilution 
Revision Act, HR 683. The principal purpose of this law is to clarify 
Congress's intentions when it first passed the Federal Trademark 
Dilution Act over a decade ago.
  In 2003, the Supreme Court decided the case of Moseley v. V Secret 
Catalogue, Inc. The Court held that trademark holders had to show 
actual harm, not the likelihood of harm, from dilution before they 
could seek injunctions. As an original author and sponsor of the act, I 
know firsthand that this is contrary to what Congress intended when it 
passed the dilution statue. What we did intend was to stop diluting 
before actual harm could be realized and the value of any reputable 
trademark debased.
  H. R. 683 makes clear Congress's intent and corrects the law to 
provide that owners of famous trademarks can seek injunctions against 
anyone who attempts to use a mark that is likely to cause dilution. It 
also affords the court the ability to consider ``all relevant factors'' 
when determining whether a mark is ``famous.'' However, this 
legislation not intended to provide for injunctive or other relief 
against legitimate, third party trade in products manufactured under 
authority of the U.S. trademark owner of the distinctive, famous mark.
  Furthermore, Senator Hatch and I were successful in including 
language that definitively shelters important constitutionally 
protected first amendment freedoms from being caught up in the 
liability net.
  I thank Senators Hatch and Specter for their support in creating and 
passing this important bipartisan legislation.
  Mr. FRIST. Mr. President, I ask unanimous consent that the committee-
reported amendment be agreed to, the bill, as amended, be read a third 
time and passed, the motion to reconsider be laid upon the table, and 
that any statements relating to the bill be printed in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The committee amendment in the nature of a substitute was agreed to.
  The bill (H.R. 683), as amended, was read the third time and passed.

                          ____________________