[Congressional Record Volume 158, Number 121 (Tuesday, September 11, 2012)]
[House]
[Pages H5795-H5796]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




   TRADEMARK ACT OF 1946 AMENDMENT RELATING TO REMEDIES FOR DILUTION

  Mr. SMITH of Texas. Mr. Speaker, I move to suspend the rules and pass 
the bill (H.R. 6215) to amend the Trademark Act of 1946 to correct an 
error in the provisions relating to remedies for dilution, as amended.
  The Clerk read the title of the bill.
  The text of the bill is as follows:

                               H.R. 6215

       Be it enacted by the Senate and House of Representatives of 
     the United States of America in Congress assembled,

     SECTION 1. REMEDIES FOR DILUTION.

       (a) In General.--Section 43(c)(6) of 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 (commonly referred to as the 
     ``Trademark Act of 1946''; 15 U.S.C. 1125(c)(6)), is amended 
     by striking subparagraphs (A) and (B) and inserting the 
     following:
       ``(A) is brought by another person under the common law or 
     a statute of a State; and
       ``(B)(i) seeks to prevent dilution by blurring or dilution 
     by tarnishment; or
       ``(ii) asserts any claim of actual or likely damage or harm 
     to the distinctiveness or reputation of a mark, label, or 
     form of advertisement.''.
       (b) Effective Date.--The amendment made by subsection (a) 
     shall apply to any action commenced on or after the date of 
     the enactment of this Act.

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


                             General Leave

  Mr. SMITH of Texas. 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 materials on H.R. 6215, as 
amended, currently under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from Texas?
  There was no objection.
  Mr. SMITH of Texas. I yield myself such time as I may consume.
  Mr. Speaker, the purpose of the Federal Trademark Dilution Act of 
1995 is to protect famous trademarks from uses that blur the 
distinctiveness of the trademark or tarnish or disparage it. Dilution 
does not rely upon the standard test of infringement, that is, 
likelihood of confusion, deception, or mistake. Rather, it applies when 
the unauthorized use of a famous trademark reduces the public's 
perception that the trademark signifies something unique, singular, or 
particular.
  Dilution can result in the loss of the trademark's distinctiveness 
and possibly the owner's rights in it.
  Congress enacted amendments to the original dilution statute in 2006. 
Last year, two law professors discovered a technical problem with one 
of the 2006 changes.
  During Senate consideration of the House bill, the section that 
provides a Federal registration defense to a dilution action was 
reorganized. This produced an unexpected and unintended change to the 
law.
  As originally drafted in the House, the provision was designed to 
encourage Federal registration of trademarks. This is a worthy policy 
goal that prevents State laws from interfering with federally protected 
trademarks and ensures that registered trademarks are protected 
nationwide.
  The House version promoted this goal and barred a State action for 
dilution against a federally registered trademark. However, the Senate 
reformatted the House text in such a way as to create a bar against 
State action for dilution as well as a State or Federal action based on 
a claim of actual or likely damage or harm to the distinctiveness or 
reputation of a trademark. This means the Federal registration defense 
is available to both State sand Federal dilution claims.

                              {time}  1530

  Congress did not intend such an outcome. If all dilution claims, 
including Federal claims, are barred by registration, it becomes 
difficult to cancel a diluting trademark that is registered. This 
encourages illegitimate trademark holders to register diluting 
trademarks, which forces legitimate trademark holders to expend greater 
resources to monitor registrations, as well as other trademarks being 
used in commerce. That is why I introduced H.R. 6215 to amend the 
Federal Trademark Dilution Act.
  This bill simply reformats the affected provision to clarify that 
Federal registration only constitutes a complete bar to a State claim 
based on dilution, or actual or likely damage or harm to the 
distinctiveness or reputation of a trademark. The change applies 
prospectively.
  This bill ensures that the trademark community is protected from 
those who seek to use this loophole as a way to disparage legitimate 
trademarks and cost their owners time and money.
  The only change to the bill, as reported, is a technical correction 
to a boilerplate reference regarding the date of enactment of the 
Trademark Act of 1946. The reported version inaccurately identifies the 
date of enactment as July 6, 1946. The correct date is July 5, 1946.
  I urge my colleagues to support H.R. 6214, and I reserve the balance 
of my time.
  Mr. WATT. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I rise in support of H.R. 6215, which is necessary to 
correct a technical error in the Trademark Dilution Revision Act of 
2006 that inadvertently allowed the registration of a Federal trademark 
to be a complete bar to Federal trademark dilution claims.
  The concept of dilution was initially a creature of State law. 
Massachusetts was the first State to enact a dilution statute in 1947. 
The purpose of the dilution law is to protect the value and uniqueness 
of the plaintiff's trademark without requiring evidence about the 
likelihood of confusion.
  Over 50 years after the passage of the Massachusetts statute, the 
1996 Federal Trademark Dilution Act provided nationwide injunctive 
relief ``against a use that causes dilution of the distinctive quality 
of the famous mark.'' In

[[Page H5796]]

2003, however, the Supreme Court in Moseley v. Victoria's Secret 
Catalog, Inc., considered the question of whether objective proof of 
actual injury to the economic value of a famous mark--that is, actual 
dilution--is required to obtain relief under the Federal Trademark 
Dilution Act. The Court decided that evidence of actual dilution was 
required, not simply a showing of likely dilution.
  The Trademark Dilution Revision Act of 2006 amended the law in an 
attempt to reverse the Victoria's Secret decision and to expand the 
scope of State dilution claims banned under the Federal statute. During 
consideration of the Trademark Dilution Revision Act, however, the 
provision allowing a Federal registration defense to dilution claims 
brought under State law was reorganized in such a way as to result in 
an unintended substantive change in the provision. As a result, the 
Federal registration defense is available not only against State 
dilution claims, but also against Federal dilution claims.
  The legislative history makes clear that Congress did not intend to 
allow a Federal trademark registration to bar a Federal dilution claim. 
H.R. 6215 corrects this error and has broad support in the intellectual 
property community and bipartisan support on the Judiciary Committee.
  I urge my colleagues to support the legislation that ensures that the 
will of the Congress, as originally intended, is not undermined by an 
inadvertent drafting error.
  Mr. Speaker, I yield back the balance of my time.
  Mr. SMITH of Texas. 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 Texas (Mr. Smith) that the House suspend the rules and 
pass the bill, H.R. 6215, as amended.
  The question was taken; and (two-thirds being in the affirmative) the 
rules were suspended and the bill, as amended, was passed.
  A motion to reconsider was laid on the table.

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