[Congressional Record Volume 152, Number 121 (Monday, September 25, 2006)]
[House]
[Pages H6963-H6965]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK DILUTION REVISION ACT OF 2006

  Mr. SENSENBRENNER. Mr. Speaker, I move to suspend the rules and 
concur in the Senate amendment to the bill (H.R. 683) to amend the 
Trademark Act of 1946 with respect to dilution by blurring or 
tarnishment.
  The Clerk read as follows:

       Senate amendment:
       Strike out all after the enacting clause and insert:

     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

[[Page H6964]]

       ``(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''.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
Wisconsin (Mr. Sensenbrenner) and the gentleman from Michigan (Mr. 
Conyers) each will control 20 minutes.
  The Chair recognizes the gentleman from Wisconsin.


                             General Leave

  Mr. SENSENBRENNER. Mr. Speaker, I ask unanimous consent that all 
Members may have 5 legislative days within which to revise and extend 
their remarks and include extraneous material on H.R. 683 currently 
under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from Wisconsin?
  There was no objection.
  Mr. SENSENBRENNER. Mr. Speaker, I yield myself such time as I may 
consume.
  Mr. Speaker, I rise in support of H.R. 683, the Trademark Dilution 
Revision Act of 2006.
  The foundation of trademark law is that certain words, images and 
logos convey meaningful information to the public, including the 
source, quality and goodwill of a product or service.
  Unfortunately, there are those in both commercial and noncommercial 
settings who would seize upon the popularity of a trademark at the 
expense of the rightful owner and the public. Dilution refers to 
conduct that lessens that distinctiveness and value of a mark. This 
conduct can debase the value of a famous mark and mislead the consuming 
public.
  A 2003 Supreme Court decision, Mosely v. V Secret Catalogue, Inc., 
compelled the Committee on the Judiciary to review the Federal 
Trademark Dilution Act. H.R. 683 was drafted based on this review and 
is intended to clarify what Congress meant when it passed the dilution 
statute a decade ago. Enactment of this bill will eliminate confusion 
on key dilution issues that have increased litigation and resulted in 
uncertainty among the regional circuits.
  H.R. 683 provides that the owner of a famous distinctive mark is 
entitled to an injunction against any person who uses in commerce a 
mark that is likely to cause dilution by blurring or tarnishment. The 
bill states that a mark may only be ``famous'' if it is widely 
recognized by the general consuming public in the United States. In 
determining whether a mark is famous, a court is permitted to consider 
all relevant factors, including the duration, extent, and geographic 
reach of advertising and publicity of the mark.
  Finally, the bill provides that the owner of a famous mark is only 
entitled to injunctive relief under the bill, unless the defendant 
acted willfully. In the case of a willful act, the owner may also seek 
damages, costs, and attorneys' fees as well as destruction of the 
infringing articles under separate Lanham Act provisions.
  Mr. Speaker, the House passed this bill on April 19, 2006, by a roll 
call vote of 411-8. The other body amended the bill on March 8, 2006, 
and passed the version before us by unanimous consent. The amendments 
narrow the application of the dilution statute to trademark dress law; 
creates a free-speech exclusion for noncommercial use of a mark; and 
shifts the burden of proof in certain trade-dress actions to the 
plaintiff. These changes were negotiated with the full participation of 
interested legislators and stakeholders, including Internet service 
providers and the American Civil Liberties Union.
  I urge my colleagues to support this important legislation.
  Mr. Speaker, I reserve the balance of my time.
  Mr. CONYERS. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I support House passage of this measure, H.R. 683, as 
amended and passed by the Senate. An almost identical version of this 
bill passed this Congress with a roll call vote of 411-8 and 
subsequently passed the other Chamber as amended by unanimous consent.
  The measure makes a number of changes to the Federal Trademark 
Dilution Act of 1995. The primary change amends the required standard 
of proof so that owners of famous trademarks can maintain protection of 
their trademark before actual harm occurs to the mark.
  In addition, the bill clearly codifies the cause of action of 
dilution by tarnishment in order to prevent harm to a trademark owner's 
reputation, resulting, for example, from a disparaging usage of a same 
or similar mark by others.
  Finally, this measure narrows the scope of what may be considered a 
famous mark by elucidating the specific factors necessary to meet the 
definition of a famous trademark.
  There was support, I think it was unanimous for this measure, in the 
Judiciary Committee. I am happy to urge its favorable vote under the 
suspension of the rules proceedings today.
  Mr. Speaker, I yield back the balance of my time.
  Mr. SENSENBRENNER. Mr. Speaker, I yield 3\1/2\ minutes to the 
gentleman from Texas (Mr. Smith).
  Mr. SMITH of Texas. Mr. Speaker, I thank the gentleman from Wisconsin 
(Mr. Sensenbrenner), the chairman of the Judiciary Committee, for 
yielding me this time.
  Mr. Speaker, trademark law is relevant to the life of every consumer 
in America. Trademarks give consumers assurance that the goods or 
services they are buying are the product that the trademark represents.
  If a customer has purchased items in the past from a specific company 
that bears a specific mark or logo, the customer has an impression of 
that company and the goods or services it produces. So trademark law 
empowers consumers by giving them information that is often critical to 
their purchasing decisions.

                              {time}  1615

  Dilution alters the public perception of a trademarked product or 
service by diminishing its uniqueness over time. The idea of protecting 
famous trademarks from dilution surfaced in the

[[Page H6965]]

1920s. Since then, roughly half of the States have enacted dilution 
statutes, and Congress passed the Federal Trade Dilution Act nearly a 
decade ago.
  As Chairman Sensenbrenner noted, the Federal dilution statute is 
being amended for two main reasons: first, a 2003 Supreme Court 
decision involving Victoria's Secret ruled that the standard of harm in 
dilution cases is actual harm. Based on testimony taken at our two 
hearings, this is contrary to what Congress intended when it passed the 
dilution statute and is at odds with the concept itself of dilution. 
Diluting needs to be stopped at the outset. Once it occurs, the 
goodwill of a mark cannot be restored.
  Second, the regional circuits have split as to the meaning of what 
constitutes a ``famous'' mark, ``distinctiveness,'' ``blurring,'' and 
``tarnishment.'' This bill more clearly defines these terms. This will 
clarify rights and eliminate unnecessary litigation, an outcome that 
especially benefits smaller businesses that cannot afford to have a 
misunderstanding of what is permissible under the Federal dilution 
statute.
  Finally, amendments developed by the subcommittee and the other body 
will more clearly protect traditional first amendment uses, such as 
parody and criticism. These amendments provide balance to the law by 
strengthening traditional fair-use defenses.
  In sum, Mr. Speaker, H.R. 683 clarifies a muddied legal landscape and 
enables the Federal Trademark Dilution Act to operate as Congress 
intended.
  Mr. WU. Mr. Speaker, I rise once again to oppose the Trademark 
Dilution Revision Act.
  Trademark law was originally about consumer protection, ensuring 
consumers were not confused or harmed by the misuse of a famous 
trademark. However, with the passage of the Federal 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 antidilution 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.
  Mr. SENSENBRENNER. Mr. Speaker, I yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from Wisconsin (Mr. Sensenbrenner) that the House suspend the 
rules and concur in the Senate amendment to the bill, H.R. 683.
  The question was taken; and (two-thirds having voted in favor 
thereof) the rules were suspended and the Senate amendment was 
concurred in.
  A motion to reconsider was laid on the table.

                          ____________________