[United States Statutes at Large, Volume 120, 109th Congress, 2nd Session]
[From the U.S. Government Publishing Office, www.gpo.gov]

120 STAT. 1730

Public Law 109-312
109th Congress

An Act


 
To amend the Trademark Act of 1946 with respect to dilution by blurring
or tarnishment. NOTE: Oct. 6, 2006 -  [H.R. 683]

Be it enacted by the Senate and House of Representatives of the
United States of America in Congress NOTE: Trademark Dilution Revision
Act of 2006. 15 USC 1051 note. assembled,

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.

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120 STAT. 1731

``(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--

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120 STAT. 1732

``(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:

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120 STAT. 1733

``Whenever any person believes that such person is or will be damaged by
the registration of a mark on the supplemental reg- ister--
``(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''.

Approved October 6, 2006.

LEGISLATIVE HISTORY--H.R. 683:
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HOUSE REPORTS: No. 109-23 (Comm. on the Judiciary).
CONGRESSIONAL RECORD:
Vol. 151 (2005):
Apr. 19, considered and passed
House.
Vol. 152 (2006):
Mar. 8, considered and passed
Senate, amended.
Sept. 25, House concurred in Senate
amendment.