[Congressional Record (Bound Edition), Volume 151 (2005), Part 5]
[House]
[Pages 6935-6937]
[From the U.S. Government Publishing Office, www.gpo.gov]




                TRADEMARK DILUTION REVISION ACT OF 2005

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

                                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 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

[[Page 6936]]

     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''.

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

                              {time}  1500


                             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 (Mr. Issa). 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, 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 for their 
own purposes and at the expense of the rightful owner and the public. 
Dilution refers to conduct that lessens the 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, Moseley v. V Secret Catalogue, Inc., 
compelled the House Committee on the Judiciary's Subcommittee on Courts 
and Intellectual Property, during the last Congress, to review the 
Federal Trademark Dilution Act and a committee print to amend it. The 
contents of the bill before us, H.R. 683, were largely culled from that 
committee print.
  H.R. 683 does not establish new precedent or break new ground. 
Rather, the bill represents a clarification of what Congress meant when 
it passed the dilution statute a decade ago. Enactment of this bill is 
necessary because it will eliminate confusion on key dilution issues 
that have increased litigation and resulted in uncertainty among the 
regional circuits.
  The primary components of H.R. 683 include the following: one, 
subject to the principles of equity, the owner of a famous distinctive 
mark is entitled to an injunction against any person who commences use 
in commerce a mark that is likely to cause dilution by blurring or 
tarnishment.
  Second, a mark may be ``famous'' only if it is widely recognized by 
the general consuming public in the United States as a source 
designation of the goods or services of the mark's owner.
  Third, in determining whether a mark is famous, a court is permitted 
to consider ``all relevant factors'' in addition to prescribed 
conditions set forth in the print, including the duration, extent, and 
geographic reach of advertising and publicity of the mark.
  Fourth, H.R. 683 clarifies the definition of dilution by blurring, as 
well as by tarnishment.
  Fifth, the bill enumerates specific defenses to a dilution action: 
comparative commercial advertising or promotion to identify competing 
goods; all forms of news reporting and news commentary; and traditional 
fair uses pertaining to parody, criticism, and commentary.
  Sixth and finally, other than an action based on dilution by 
blurring, the owner of a famous mark is only entitled to injunctive 
relief under H.R. 683 if the defendant willfully intended to trade on 
the famous mark's recognition; or in an action based on dilution by 
tarnishment, the defendant willfully intended to trade on the famous 
mark's reputation.
  In either case, the owner may seek damages, costs, and attorneys' 
fees as well as the destruction of the infringing articles under 
separate Lanham Act provisions.
  In sum, this bill will provide greater guidance for courts when they 
adjudicate dilution cases and businesses that use trademarks. It is a 
good complement to the dilution statute that received more than 2 years 
of subcommittee process.
  Mr. Speaker, I urge Members to support this legislation.
  Mr. Speaker, I reserve the balance of my time.
  Mr. BERMAN. Mr. Speaker, I yield myself such time as I may consume.
  I rise in support of House passage of H.R. 683. This bill makes 
important changes designed to protect famous trademark owners against 
the use of similar marks that might harm a company's reputation or 
confuse consumers. It also manages to balance trademark law with first 
amendment concerns.
  In 1995, the Federal Trademark Dilution Act was passed in order to 
``protect famous trademarks from subsequent uses that blur the 
distinctiveness of the mark or tarnish or disparage it.'' The purpose 
of the act was to bring uniformity and consistency to the protection of 
famous marks, a goal that had been complicated by differing State 
dilution laws.
  However, since 1995, a significant split had developed among the 
courts in the interpretation of key elements of the dilution act. The 
Supreme Court eventually took a step to resolve the controversy in its 
recent decision in Moseley v. V Secret Catalogue, the Victoria's Secret 
case, where it interpreted the words ``cause dilution'' in the act to 
require a demonstration of actual dilution.
  As a result of this decision, trademark holders are now required to 
wait until the injury happens before bringing suit. Victims of dilution 
have asserted that the injury caused by dilution constitutes the 
gradual diminution or whittling away at the value of the famous mark. 
They analogize the effects of dilution to 100 bee stings, where 
significant injury is caused by the cumulative effect, not just by one.
  Section 2(c)(1) of this bill addresses this problem by changing the 
standard to ``likelihood of dilution.'' By lowering the standard, proof 
of actual harm would no longer be a prerequisite to injunctive relief, 
and therefore extensive damage cannot be done before relief can be 
sought. Furthermore, the bill includes a clear reference to dilution by 
tarnishment. This allows the trademark owner to protect his mark from 
associations which harm the reputation of the famous trademark. The 
bill narrows the reach of a dilution cause of action. It tightens the 
definition of fame by providing a specific list of factors, and 
eliminates the protection for marks that are famous only in niche 
markets.
  While not universally supported, this bill has now garnered the 
support of the ACLU for accommodating its first amendment concerns. In 
section 2(c)(3), the bill addresses the balance between the rights of 
trademark holders and the first amendment by providing an exemption for 
purposes of identifying and parodying, criticizing or commenting on the 
famous mark. The trade groups representing intellectual property 
owners, AIPLA, INTA and IPO, have all endorsed this bill.
  H.R. 683 achieves an important balance in the protection of 
intellectual property. I encourage my colleagues to support it.
  Mr. Speaker, I reserve the balance of my time.
  Mr. SENSENBRENNER. Mr. Speaker, I yield 4 minutes to the gentleman 
from Texas (Mr. Smith).
  Mr. SMITH of Texas. Mr. Speaker, I thank the chairman of the 
Committee on the Judiciary for yielding me this time.
  Mr. Speaker, trademark law is relevant to the life of every consumer 
in

[[Page 6937]]

America. Trademarks give customers assurance that the goods or services 
they are buying are what customers think they are. If a customer has 
purchased items in the past from a particular company that bears a 
specific mark or logo, the customer has an impression, favorable or 
not, 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.
  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 1920s. Since then, roughly half of the States have enacted dilution 
statutes while Congress passed the Federal Trademark Dilution Act 
nearly a decade ago.
  As the gentleman from Wisconsin 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 
Intellectual Property Subcommittee hearings, this is contrary to what 
Congress intended when it passed the dilution statute and is at odds 
with the concept of dilution. Diluting needs to be stopped at the 
outset because actual damage can only be proven over time, after which 
the good will 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. 
The bill more distinctly defines these terms. This will clarify rights 
and eliminate unnecessary litigation, an outcome that especially 
benefits small businesses that cannot afford to have a misunderstanding 
of what is permissible under the Federal dilution statute.
  Finally, amendments developed at the subcommittee level 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.
  Mr. Speaker, in sum, 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 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 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.
  Mr. BERMAN. Mr. Speaker, I yield back the balance of my time.
  Mr. SENSENBRENNER. Mr. Speaker, I yield back the balance of my time.
  The SPEAKER pro tempore (Mr. Bishop of Utah). The question is on the 
motion offered by the gentleman from Wisconsin (Mr. Sensenbrenner) that 
the House suspend the rules and pass the bill, H.R. 683, as amended.
  The question was taken.
  The SPEAKER pro tempore. In the opinion of the Chair, two-thirds of 
those present have voted in the affirmative.
  Mr. SENSENBRENNER. Mr. Speaker, on that I demand the yeas and nays.
  The yeas and nays were ordered.
  The SPEAKER pro tempore. Pursuant to clause 8 of rule XX and the 
Chair's prior announcement, further proceedings on this motion will be 
postponed.

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