[106th Congress Public Law 43]
[From the U.S. Government Printing Office]



[[Page 217]]

                    TRADEMARK AMENDMENTS ACT OF 1999

[[Page 113 STAT. 218]]

Public Law 106-43
106th Congress

                                 An Act


 
To amend the Trademark Act of 1946 relating to dilution of famous marks, 
      and for other purposes. <<NOTE: Aug. 5, 1999 -  [S. 1259]>> 

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled, <<NOTE: Trademark 
Amendments Act of 1999.>> 

SECTION 1. SHORT TITLE. <<NOTE: 15 USC 1051 note.>> 

    This Act may be cited as the ``Trademark Amendments Act of 1999''.

SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND CANCELLATION.

    (a) Registrable Marks.--Section 2 of the Act entitled ``An Act to 
provide for the registration and protection of trade-marks used in 
commerce, to carry out the provisions of certain international 
conventions, and for other purposes'' (in this Act referred to as the 
``Trademark Act of 1946'') (15 U.S.C. 1052) is amended by adding at the 
end the following flush sentences: ``A mark which when used would cause 
dilution under section 43(c) may be refused registration only pursuant 
to a proceeding brought under section 13. A registration for a mark 
which when used would cause dilution 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 inserting ``, 
including as a result of dilution under section 43(c),'' after 
``principal register''.
    (c) Petitions To Cancel Registrations.--Section 14 of the Trademark 
Act of 1946 (15 U.S.C. 1064) is amended in the matter preceding 
paragraph (1) by inserting ``, including as a result of dilution under 
section 43(c),'' after ``damaged''.
    (d) Cancellation.--Section 24 of the Trademark Act of 1946 (15 
U.S.C. 1092) is amended in the second sentence by inserting ``, 
including as a result of dilution under section 43(c),'' after 
``register''.
    (e) <<NOTE: 15 USC 1052 note.>>  Effective Date and Application.--
The amendments made by this section shall take effect on the date of 
enactment of this Act and shall apply only to any application for 
registration filed on or after January 16, 1996.

SEC. 3. REMEDIES IN CASES OF DILUTION OF FAMOUS MARKS.

    (a) Injunctions.--(1) Section 34(a) of the Trademark Act of 1946 (15 
U.S.C. 1116(a)) is amended in the first sentence by striking ``section 
43(a)'' and inserting ``subsection (a) or (c) of section 43''.

[[Page 113 STAT. 219]]

    (2) Section 43(c)(2) of the Trademark Act of 1946 (15 U.S.C. 
1125(c)(2)) is amended in the first sentence by inserting ``as set forth 
in section 34'' after ``relief''.
    (b) Damages.--Section 35(a) of the Trademark Act of 1946 (15 U.S.C. 
1117(a)) is amended in the first sentence by striking ``or a violation 
under section 43(a),'' and inserting ``a violation under section 43(a), 
or a willful violation under section 43(c),''.
    (c) Destruction of Articles.--Section 36 of the Trademark Act of 
1946 (15 U.S.C. 1118) is amended in the first sentence--
            (1) by striking ``or a violation under section 43(a),'' and 
        inserting ``a violation under section 43(a), or a willful 
        violation under section 43(c),''; and
            (2) by inserting after ``in the case of a violation of 
        section 43(a)'' the following: ``or a willful violation under 
        section 43(c)''.
SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK INFRINGEMENT AND 
                    DILUTION.

    (a) Civil Actions.--Section 32 of the Trademark Act of 1946 (15 
U.S.C. 1114) is amended in the last undesignated paragraph in paragraph 
(1)--
            (1) in the first sentence by inserting after ``includes'' 
        the following: ``the United States, all agencies and 
        instrumentalities thereof, and all individuals, firms, 
        corporations, or other persons acting for the United States and 
        with the authorization and consent of the United States, and''; 
        and
            (2) in the second sentence by striking ``Any'' and inserting 
        ``The United States, all agencies and instrumentalities thereof, 
        and all individuals, firms, corporations, other persons acting 
        for the United States and with the authorization and consent of 
        the United States, and any''.

    (b) Waiver of Sovereign Immunity.--Section 40 of the Trademark Act 
of 1946 (15 U.S.C. 1122) is amended--
            (1) by redesignating subsection (b) as subsection (c);
            (2) by striking ``Sec. 40. (a) Any State'' and inserting the 
        following:

    ``Sec. 40. (a) Waiver of Sovereign Immunity by the United States.--
The United States, all agencies and instrumentalities thereof, and all 
individuals, firms, corporations, other persons acting for the United 
States and with the authorization and consent of the United States, 
shall not be immune from suit in Federal or State court by any person, 
including any governmental or nongovernmental entity, for any violation 
under this Act.
    ``(b) Waiver of Sovereign Immunity by States.--Any State''; and
            (3) in the first sentence of subsection (c), as so 
        redesignated--
                    (A) by striking ``subsection (a) for a violation 
                described in that subsection'' and inserting 
                ``subsection (a) or (b) for a violation described 
                therein''; and
                    (B) by inserting after ``other than'' the following: 
                ``the United States or any agency or instrumentality 
                thereof, or any individual, firm, corporation, or other 
                person acting for the United States and with 
                authorization and consent of the United States, or''.

    (c) Definition.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 
1127) is amended by inserting between the 2 paragraphs relating to the 
definition of ``person'' the following:

[[Page 113 STAT. 220]]

    ``The term `person' also includes the United States, any agency or 
instrumentality thereof, or any individual, firm, or corporation acting 
for the United States and with the authorization and consent of the 
United States. The United States, any agency or instrumentality thereof, 
and any individual, firm, or corporation acting for the United States 
and with the authorization and consent of the United States, shall be 
subject to the provisions of this Act in the same manner and to the same 
extent as any nongovernmental entity.''.

SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.

    Section 43(a) of the Trademark Act of 1946 (15 U.S.C. 1125(a)) is 
amended by adding at the end the following:
    ``(3) In a civil action for trade dress infringement 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 the matter 
sought to be protected is not functional.''.

SEC. 6. TECHNICAL AMENDMENTS.

    (a) Assignment of Marks.--Section 10 of the Trademark Act of 1946 
(15 U.S.C. 1060) is amended--
            (1) by striking ``subsequent purchase'' in the second to 
        last sentence and inserting ``assignment'';
            (2) in the first sentence by striking ``mark,'' and 
        inserting ``mark.''; and
            (3) in the third sentence by striking the second period at 
        the end.

    (b) Additional Clerical Amendments.--The text and title of the 
Trademark Act of 1946 <<NOTE: 15 USC 1051 note, 1053, 1054, 1091, 1124, 
1126, 1127.>> are amended by striking ``trade-marks'' each place it 
appears and inserting ``trademarks''.

    Approved Aug. 5, 1999.

LEGISLATIVE HISTORY--S. 1259:
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CONGRESSIONAL RECORD, Vol. 145 (1999):
            July 1, considered and passed Senate.
            July 26, considered and passed House.

                                  <all>