[House Report 109-23]
[From the U.S. Government Publishing Office]
109th Congress Report
HOUSE OF REPRESENTATIVES
1st Session 109-23
======================================================================
TRADEMARK DILUTION REVISION ACT OF 2005
_______
March 17, 2005.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Sensenbrenner, from the Committee on the Judiciary, submitted the
following
R E P O R T
[To accompany H.R. 683]
[Including cost estimate of the Congressional Budget Office]
The Committee on the Judiciary, to whom was referred the bill
(H.R. 683) to amend the Trademark Act of 1946 with respect to
dilution by blurring or tarnishment, having considered the
same, report favorably thereon with an amendment and recommend
that the bill as amended do pass.
CONTENTS
Page
The Amendment.................................................... 1
Purpose and Summary.............................................. 3
Background and Need for the Legislation.......................... 4
Hearings......................................................... 6
Committee Consideration.......................................... 6
Vote of the Committee............................................ 6
Committee Oversight Findings..................................... 6
New Budget Authority and Tax Expenditures........................ 6
Congressional Budget Office Cost Estimate........................ 6
Performance Goals and Objectives................................. 7
Constitutional Authority Statement............................... 7
Section-by-Section Analysis and Discussion....................... 7
Changes in Existing Law Made by the Bill, as Reported............ 9
Markup Transcript................................................ 14
The Amendment
The amendment is as follows:
Strike all after the enacting clause and insert the
following:
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 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''.
Purpose and Summary
The purpose of H.R. 683, the ``Trademark Dilution Revision
Act of 2005,'' is to amend the Federal Trademark Dilution Act
\1\ (FTDA) in the wake of a recent Supreme Court decision
regarding the standard of harm under the statute and
conflicting circuit case law on other relevant issues.
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\1\ Pub. L. No. 104-98 (1995).
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Background and Need for the Legislation
TRADEMARK LAW GENERALLY
Trademark law ``identifies'' goods and services.\2\ When an
individual encounters a mark (e.g., a word or symbol) in a
store or watching a commercial, he or she can develop an
association between a product or service and its corresponding
quality, brand reputation, or origin. Generally, a trademark
consists of the name or logo of a product. For example, the
restaurant chain McDonald's has trademarks in its name, its
golden arches logo, and other marks associated with its
business. In addition, trademark law also may protect the
distinctive features of a product's packaging. Examples of
famous and distinctive packaging include the shape of Coca-
Cola's bottle or Tiffany's little blue jewelry box.
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\2\ The proper term for a mark identifying a service (e.g.,
``FedEx'' or ``AOL'') is a ``service mark.'' Throughout this document,
it must be assumed that the term ``trademark,'' which strictly speaking
refers to a product, also is meant to include references to service
marks.
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DILUTION GENERALLY AND THE FEDERAL TRADEMARK DILUTION ACT
Trademark rights are unique because they are based on
Federal as well as state law. In fact, many states offer
trademark protection against ``dilution.'' Dilution is defined
as ``the lessening of the capacity of a famous mark to identify
and distinguish goods or services regardless of the presence or
absence of: (a) competition between the owner of the famous
mark and other parties; or (b) the likelihood of confusion,
mistake, or deception.\3\ Courts have defined dilution as
either the blurring of a mark's product identification or the
tarnishment of the affirmative associations a mark has come to
convey.
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\3\ 15 U.S.C. 1127 (1998).
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Dilution does not rely upon the standard test of
infringement, that is, the likelihood of confusion, deception,
or mistake. Rather, dilution occurs when the unauthorized use
of a famous mark reduces the public's perception that the mark
signifies something unique, singular, or particular.\4\ In
other words, dilution can result in the loss of the mark's
distinctiveness and, in worst-case scenarios, the owner's
rights in it.
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\4\ H.R. Rep. No. 104-364 (1995) reprinted in U.S.C.C.A.N. at 1029,
1030.
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In order to promote uniformity and certainty for trademark
owners, a Federal dilution statute was enacted in 1995.\5\ The
purpose of the FTDA is to protect famous trademarks, whether
registered or unregistered, from subsequent uses that blur the
distinctiveness of the mark or tarnish or disparage it, even in
the absence of a likelihood of confusion. The FTDA applies when
unauthorized users attempt to trade upon the goodwill and
established renown of such marks, and thereby dilute their
distinctive quality.\6\
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\5\ See supra note 1.
\6\ H.R. Rep. No. 104-364 (1995) reprinted in U.S.C.C.A.N. at 1029.
See also Lori Krafte-Jacobs, Judicial Interpretation of the Federal
Trademark Dilution Act of 1995, 66 U. Cin. L. Rev. 659 (1998).
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The FTDA specifies the following factors that a court may
consider, but is not limited to, in determining whether a mark
is distinctive and famous:
Lthe degree of inherent or acquired
distinctiveness of the mark;
Lthe duration and extent of use of the mark in
connection with the goods or services with which the
mark is used;
Lthe duration and extent of advertising and
publicity of the mark;
Lthe geographical extent of the trading area
in which the mark is used;
Lthe channels of trade for the goods or
services with which the mark is used;
Lthe degree of recognition of the mark in the
trading areas and channels of trade used by the marks'
owner and the person against whom the injunction is
sought; and
Lthe nature and extent of use of the same or
similar marks by third parties.\7\
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\7\ 15 U.S.C. Sec. 1125(c).
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MOSELY V. V SECRET CATALOGUE, INC.
Following passage of the FTDA, the circuit courts of appeal
split as to whether the statute required the owner of a famous
mark to prove actual harm as a prerequisite to injunctive
relief. This question was addressed by the Supreme Court in the
case of Mosely v. V Secret Catalogue, Inc.\8\ In a dilution
action between the lingerie company Victoria's Secret and a
small retail company (Victor's Little Secret) that sold, among
other items, adult ``novelties,'' the Court determined that the
FTDA ``. . . unambiguously requires a showing of actual
dilution, rather than a likelihood of dilution.'' \9\
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\8\ 123 S. Ct. 1115 (2003).
\9\ 537 U.S. 418 (2003).
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The Subcommittee on Courts, the Internet, and Intellectual
Property received testimony in 2004 \10\ and 2005 on this issue
and other dilution topics. Witnesses at these hearings focused
on the standard of harm threshold articulated in Mosely. For
example, a representative of the International Trademark
Association observed that ``[b]y the time measurable, provable
damage to the mark has occurred much time has passed, the
damage has been done, and the remedy, which is injunctive
relief, is far less effective.'' \11\ The Committee endorses
this position. The Mosely standard creates an undue burden for
trademark holders who contest diluting uses and should be
revised.
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\10\ Hearings on a Committee Print to Amend the Federal Trademark
Dilution Act, 108th Cong., 2d Sess., Serial No. 72 (April 22, 2004).
\11\ Hearings on the Trademark Dilution Revision Act of 2005 Before
the Subcomm. on Courts, the Internet, and Intellectual Property of the
House Comm. on the Judiciary, 109th Cong., 1st Sess. (February 17,
2005) (statement of Anne Gundelfinger on behalf of the International
Trademark Association at 3) (hereinafter Gundelfinger).
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OTHER ISSUES ADDRESSED BY H.R. 683
In addition, the circuits have split on the meaning and
application of other core provisions of the statute. This
absence of uniformity concerns the Committee, as it complicates
the ability of mark holders to protect their property and
businesses to plan their commercial affairs.
Hearings revealed that the regional circuits interpret the
FTDA differently on such matters as what constitutes a
``famous'' mark, whether marks with ``acquired
distinctiveness'' are protected under the statute, and whether
the FTDA covers dilution by ``tarnishment.'' \12\ The resulting
problems were concisely summarized at the Subcommittee's 2005
hearing as follows:
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\12\ Id. at 3-4. See also statement of William G. Barber on behalf
of the American Intellectual Property Law Association at 2-3.
[D]ilution law in the United States is moving in every
direction except the one that it needs to--forward. . .
. All the while, famous marks and their value both to
consumers and their owners remain at risk from blurring
and tarnishment, and third parties have little guidance
regarding what marks they can safely adopt without risk
of dilution liability. The lack of clarity in the law
and the splits in the various circuits are resulting in
forum shopping and unnecessarily costly lawsuits. For
these reasons a revision of dilution law is needed.\13\
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\13\ Gundelfinger at 5.
The Committee subscribes to this view and H.R. 683 serves
as a legislative response to these problems.
Hearings
No hearings were held on H.R. 683.
Committee Consideration
On March 3, 2005, the Subcommittee on Courts, the Internet,
and Intellectual Property met in open session and ordered
favorably reported the bill H.R. 683, as amended, by voice
vote, a quorum being present. On March 9, 2005, the Committee
met in open session and ordered favorably reported the bill
H.R. 683 with an amendment by voice vote, a quorum being
present.
Vote of the Committee
In compliance with clause 3(b) of Rule XIII of the Rules of
the House of Representatives, the Committee notes that there
were no recorded votes during Committee consideration of H.R.
683.
Committee Oversight Findings
In compliance with clause 3(c)(1) of Rule XIII of the Rules
of the House of Representatives, the Committee reports that the
findings and recommendations of the Committee, based on
oversight activities under clause 2(b)(1) of Rule X of the
Rules of the House of Representatives, are incorporated in the
descriptive portions of this report.
New Budget Authority and Tax Expenditures
Clause 3(c)(2) of Rule XIII of the Rules of the House of
Representatives is inapplicable because this legislation does
not provide new budgetary authority or increased tax
expenditures.
Congressional Budget Office Cost Estimate
In compliance with clause 3(c)(3) of Rule XIII of the Rules
of the House of Representatives, the Committee sets forth, with
respect to the bill, H.R. 683, the following estimate and
comparison prepared by the Director of the Congressional Budget
Office under section 402 of the Congressional Budget Act of
1974:
U.S. Congress,
Congressional Budget Office,
Washington, DC, March 14, 2005.
Hon. F. James Sensenbrenner, Jr., Chairman,
Committee on the Judiciary,
House of Representatives, Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for H.R. 683, the
``Trademark Dilution Revision Act of 2005.''
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contact is Melissa E.
Zimmerman, who can be reached at 226-2860.
Sincerely,
Douglas Holtz-Eakin.
Enclosure
cc:
Honorable John Conyers, Jr.
Ranking Member
H.R. 683--Trademark Dilution Revision Act of 2005.
H.R. 683 would make changes to trademark law to strengthen
a trademark owner's defense against the use of other similar
marks in the market that could harm the reputation of the
trademark or confuse consumers. CBO estimates that implementing
H.R. 683 would not have a significant effect on spending
subject to appropriation. Enacting the bill would not affect
direct spending or revenues.
H.R. 683 contains no intergovernmental or private-sector
mandates as defined in the Unfunded Mandates Reform Act and
would impose no costs on State, local, or tribal governments.
The CBO staff contact for this estimate is Melissa E.
Zimmerman, who can be reached at 226-2860. The estimate was
approved by Peter H. Fontaine, Deputy Assistant Director for
Budget Analysis.
Performance Goals and Objectives
H.R. 683 does not authorize funding. Therefore, clause
3(c)(4) of Rule XIII of the Rules of the House of
Representatives is inapplicable. H.R. 683 amends the Federal
Trademark Dilution Act tp protect against the dilution of a
protected trademark.
Constitutional Authority Statement
Pursuant to Rule XI, clause 2(1)(4) of the Rules of the
House of Representatives, the Committee finds the authority for
this legislation in Article I, section 8, clause 8, of the
Constitution.
Section-by-Section Analysis and Discussion
Section 1. Short Title. The Act may be cited as the
``Trademark Dilution Revision Act of 2005.''
Section 2. Dilution by Blurring; Dilution by Tarnishment.
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.
Section 2 of H.R. 683 specifies that injunctive relief is
appropriate even if there is no:
Lactual or likely confusion among the public;
Lcompetition between the owner and the person;
or
Lactual economic injury to the owner.
Under Sec. 2, a mark may only be ``famous'' 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. In determining whether a mark is famous, a court is
permitted to consider ``all relevant factors'' in addition to
prescribed conditions set forth in H.R. 683, including the
duration, extent, and geographic reach of advertising and
publicity of the mark.
Again, a court is permitted to consider all relevant
factors in determining the presence of dilution by blurring.
Specific factors that provide guidance in this regard include:
Lthe degree of similarity between the source
designation and the famous mark;
Lthe degree of inherent or acquired
distinctiveness of the famous mark; and
Lthe degree of recognition of the famous mark.
Section 2 of H.R. 683 enumerates specific exclusions that
do not constitute dilution: fair use in comparative commercial
advertising or promotion to identify the famous mark owner's
competing goods or services; fair use, other than as a
designation of source, including for purposes of identifying
and parodying, criticizing, or commenting upon the famous mark
owner or the famous mark owner's goods or services; and all
forms of news reporting and news commentary.
The owner of a famous mark is only entitled to injunctive
relief under Sec. 2, unless, in an action based on dilution by
blurring, 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 also
seek damages, costs, and attorneys' fees \14\ as well as
destruction of the infringing articles \15\ under separate
Lanham Act provisions.
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\14\ 15 U.S.C. Sec. 1117(a).
\15\ 15 U.S.C. Sec. 1118.
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Substantial portions of Sec. 2 are based on the existing
FTDA, but there are conspicuous differences between the two
texts. Under H.R. 683, and in response to the Mosely decision,
actual harm is not a prerequisite to injunctive relief. H.R.
683 also defines dilution by ``blurring'' as well as by
``tarnishment.'' In addition, the legislation expands the
threshold of ``fame'' and thereby denies protection for marks
that are famous only in ``niche'' markets. Finally, Sec. 2
would protect trade dress or product configuration and it would
not preempt state remedies for dilution.
Section 3. Conforming Amendments. Sections 2(f), 13(a), 14
and 24 of the Lanham Act were amended by the Trademark
Amendments Act of 1999 (Pub. L. No. 106-43) to grant owners of
famous trademarks the right to oppose registration or seek
cancellation of the registration of a mark on either the
principal or supplemental registers on the grounds that such
registration would cause dilution of the famous marks under the
FTDA Act. The conforming amendments made to these sections
would maintain the rights granted by the Trademark Amendments
Act of 1999. The new language in the legislation merely updates
these sections so that they comport with certain key changes
made to section 43(c)--specifically that the standard for
proving a dilution claim is ``likelihood of dilution'' and that
both dilution by blurring and dilution by tarnishment are
actionable.
Changes in Existing Law Made by the Bill, as Reported
In compliance with clause 3(e) of rule XIII of the Rules of
the House of Representatives, changes in existing law made by
the bill, as reported, are shown as follows (existing law
proposed to be omitted is enclosed in black brackets, new
matter is printed in italics, existing law in which no change
is proposed is shown in roman):
ACT OF JULY 5, 1946
(Commonly referred to as the ``Trademark Act of 1946''.)
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.
TITLE I--THE PRINCIPAL REGISTER
* * * * * * *
MARKS REGISTRABLE ON THE PRINCIPAL REGISTER
Sec. 2. No trademark by which the goods of the applicant
may be distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it--
(a) * * *
* * * * * * *
(f) Except as expressly excluded in subsections (a), (b),
(c), (d), (e)(3), and (e)(5) of this section, nothing herein
shall prevent the registration of a mark used by the applicant
which has become distinctive of the applicant's goods in
commerce. The Director may accept as prima facie evidence that
the mark has become distinctive, as used on or in connection
with the applicant's goods in commerce, proof of substantially
exclusive and continuous use thereof as a mark by the applicant
in commerce for the five years before the date on which the
claim of distinctiveness is made. Nothing in this section shall
prevent the registration of a mark which, when used on or in
connection with the goods of the applicant, is primarily
geographically deceptively misdescriptive of them, and which
became distinctive of the applicant's goods in commerce before
the date of the enactment of the North American Free Trade
Agreement Implementation Act.
[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.] 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.
* * * * * * *
OPPOSITION
Sec. 13. (a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register, including [as a result of dilution] the registration
of any mark which would be likely to cause dilution by blurring
or dilution by tarnishment under section 43(c), may, upon
payment of the prescribed fee, file an opposition in the Patent
and Trademark Office, stating the grounds therefor, within
thirty days after the publication under subsection (a) of
section 12 of this Act of the mark sought to be registered.
Upon written request prior to the expiration of the thirty-day
period, the time for filing opposition shall be extended for an
additional thirty days, and further extensions of time for
filing opposition may be granted by the Director for good cause
when requested prior to the expiration of an extension. The
Director shall notify the applicant of each extension of the
time for filing opposition. An opposition may be amended under
such conditions as may be prescribed by the Director.
* * * * * * *
Sec. 14. A petition to cancel a registration of a mark,
stating the grounds relied upon, may, upon payment of the
prescribed fee, be filed as follows by any person who believes
that he is or will be damaged[, including as a result of
dilution under section 43(c),] by the registration of a mark on
the principal register established by this Act, or under the
Act of March 3, 1881, or the Act of February 20, 1905 (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:
(1) * * *
* * * * * * *
TITLE II--THE SUPPLEMENTAL REGISTER
* * * * * * *
CANCELATION
Sec. 24. Marks for the supplemental register shall not be
published for or be subject to opposition, but shall be
published on registration in the Official Gazette of the Patent
and Trademark Office. [Whenever any person believes that he is
or will be damaged by the registration of a mark on this
register, including as a result of dilution under section
43(c), he 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.] 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. The Director shall
refer such application to the Trademark Trial and Appeal Board,
which shall give notice thereof to the registrant. If it is
found after a hearing before the Board which that the
registrant is not entitled to registration, or that the mark
has been abandoned, the registration shall be canceled by the
Director. However, no final judgment shall be entered in favor
of an applicant under section (1)(b) before the mark is
registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 7(c).
* * * * * * *
TITLE VIII--FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS, AND
DILUTION FORBIDDEN
Sec. 43. (a) * * *
* * * * * * *
[(c)(1) The owner of a famous mark shall be entitled,
subject to the principles of equity and upon such terms as the
court deems reasonable, to an injunction against another
person's commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark, and to obtain
such other relief as is provided in this subsection. In
determining whether a mark is distinctive and famous, a court
may consider factors such as, but not limited to--
[(A) the degree of inherent or acquired
distinctiveness of the mark;
[(B) the duration and extent of use of the mark in
connection with the goods or services with which the
mark is used;
[(C) the duration and extent of advertising and
publicity of the mark;
[(D) the geographical extent of the trading area in
which the mark is used;
[(E) the channels of trade for the goods or
services with which the mark is used;
[(F) the degree of recognition of the mark in the
trading areas and channels of trade used by the marks'
owner and the person against whom the injunction is
sought;
[(G) the nature and extent of use of the same or
similar marks by third parties; and
[(H) whether the mark was registered under the Act
of March 3, 1881, or the Act of February 20, 1905, or
on the principal register.
[(2) 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 unless the person against whom the
injunction is sought willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark. If such
willful intent is proven, 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.
[(3) 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 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 of the
distinctiveness of a mark, label, or form of advertisement.
[(4) The following shall not be actionable under this
section:
[(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) Noncommercial use of a mark.
[(C) All forms of news reporting and news
commentary.]
(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.
(d)(1)(A) * * *
(B)(i) In determining whether a person has a bad faith
intent described under subparagraph (A), a court may consider
factors such as, but not limited to--
(I) * * *
* * * * * * *
(IX) the extent to which the mark incorporated in
the person's domain name registration is or is not
distinctive and famous within the meaning of subsection
[(c)(1) of section 43] (c).
* * * * * * *
TITLE X--CONSTRUCTION AND DEFINITIONS
Sec. 45. In the construction of this Act, unless the
contrary is plainly apparent from the context--
The United States includes and embraces all territory which
is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully
be regulated by Congress.
* * * * * * *
[The term ``dilution'' means the lessening of the capacity
of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of--
[(1) competition between the owner of the famous
mark and other parties, or
[(2) likelihood of confusion, mistake, or
deception.]
* * * * * * *
Markup Transcript
BUSINESS MEETING
WEDNESDAY, MARCH 9, 2005
House of Representatives,
Committee on the Judiciary,
Washington, DC.
The Committee met, pursuant to notice, at 10:00 a.m., in
Room 2141, Rayburn House Office Building, Hon. F. James
Sensenbrenner, Jr. [Chairman of the Committee] presiding.
Chairman Sensenbrenner. The Committee will be in order. A
working quorum is present comprised entirely of Members of the
majority party. So rather than doing a ratification of minority
Committee assignments, since there is no one here to make a
motion to do that, we will now go to the next item on the
agenda which is the adoption of S. 167, the ``Family
Entertainment and Copyright Act of 2005,'' and the Chair
recognizes the gentlemen from Texas, Mr. Smith, the Chairman of
the Subcommittee on Courts, the Internet, and Intellectual
Property for a motion.
Mr. Smith. Mr. Chairman, I ask unanimous consent that we
consider the following bills en bloc: S. 167, H.R. 683, H.R.
1036, H.R. 1037, H.R. 1038.
Chairman Sensenbrenner. How about House Concurrent
Resolution----
Mr. Smith. It's my understanding, Chairman, that needs to
be considered separately.
Chairman Sensenbrenner. Okay. Without objection, the 5
bills mentioned by the gentleman from Texas will be considered
en bloc, and the Chair recognizes the gentleman from Texas to
explain them.
Mr. Smith. I'll try to be brief, Mr. Chairman. The first
bill, S. 167 really consists of three previous bills that this
Committee has approved and that passed the House last year. The
first one is the Family Movie Act, and I think Members will
recall that that simply gives parents the right to determine
what their children see when they rent or buy a movie video.
The second part of this particular bill is the Art Act
which creates new penalties for those who camcord movies in
public theaters and who willfully infringe copyright law by
distributing copies of prereleased works, movies or otherwise.
The Trademark Dilution Revision Act of 2005 simply,
basically protects trademarks in a better way and also makes
sure that people cannot infringe trademarks as easily as they
do now. It also does a good job of trying to keep us out of
court to determine some of the ambiguities of that particular
subject.
The two technical correction bills are just that, technical
corrections of the Satellite Viewer, Home Viewer Movie Act, and
the technical corrections, in addition to the satellite
corrections are technical corrections of the CARP bill, which
we approved last year and which passed the House.
The last bill in the en bloc package, Mr. Chairman, is your
bill, the Multidistrict Litigation Restoration Act of 2005, and
I will yield to you to make any comments on that.
And that would be the quick summary of the five bills en
bloc.
[The bill, H.R. 683, follows:]
Chairman Sensenbrenner. The Chair passes on this.
Without objection, all Members may place opening statements
in the record on each of the bills being considered en bloc at
this time. Hearing no objection, so ordered.
[The prepared statement of Mr. Berman follows:]
Prepared Statement of the Honorable Howard L. Berman, a Representative
in Congress from the State of California, and Ranking Member,
Subcommittee on Courts, the Internet, and Intellectual Property
Mr. Chairman, thank you for scheduling this mark-up of H.R. 683,
The Trademark Dilution Revision Act of 2005. Nine years after passage
of the Federal Trademark Dilution Act [FTDA], I believe we have with
this bill come full circle in ensuring the dilution act reflects the
original intention of Congress.
Trademark law does not involve typical intellectual property
rights. It does not emanate from the Patent and Copyright Clause of the
Constitution, but rather from the Commerce Clause. Rather than
protection of property rights, the primary policy rationale for
traditional trademark law rests on a policy of protecting consumers
from mistake and deception.
Protection against trademark dilution seems, in some ways, more
akin to property protection than consumer protection. Thus, any anti-
dilution legislation should be carefully and narrowly crafted. The goal
must be to protect only the most famous trademarks from subsequent uses
that blur the distinctiveness of the mark or tarnish or disparage it.
Legislation should refrain from expanding the potential of creating
rights in perpetuity for trademarks. Dilution should once again be used
sparingly as an ``extraordinary'' remedy, one that requires a
significant showing of fame.
This bill narrows the application of dilution by tightening the
definition of what is necessary to be considered a famous mark. The
bill eliminates fame for a niche market and lists factors necessary for
a dilution by blurring claim. With these changes, it is our hope that
the dilution remedy will be used in the rare circumstance and not as
the alternative pleading.
In addition, this bill changes the standard of dilution from
``actual'' to ``likelihood'' of dilution. This bill addresses the
classic view of dilution by blurring, that the injury caused by
dilution is the gradual diminution or whittling away at the value of
the famous mark, or, as those who have been victims of dilution
describe, ``death by a thousand cuts''--where significant injury is
caused by the cumulative effect of many small acts of dilution.
The language in the bill now squares with what Congress had
initially intended. I appreciate the expressed need to impose a more
lenient standard. A ``likelihood of dilution'' standard no longer
unfairly requires the senior user to wait until injury occurs before
bringing suit.
However, most importantly, an amendment was adopted in Subcommittee
to address the First Amendment and free speech issues that were raised
at the hearing. The ACLU voiced concerns about the possibility that
critics could be stifled by the threat of an injunction for mere
likelihood of tarnishment. Furthermore, they were concerned with the
balance between the rights of trademark holders and the First
Amendment. ACLU joined with INTA and AIPLA in crafting a separate
exemption from a dilution cause of action for parody, comment and
criticism.
Finally, different intellectual property owners voiced disagreement
at the hearing regarding the designation of source language in the
bill. After some negotiation between the parties, the conflict has been
resolved, and both AIPLA and INTA support the bill. I believe this
legislation strikes the delicate balance between protection of property
rights and encouragement of healthy competition. I urge my colleagues
to support this bill with the amendment and I yield back the balance of
my time.
Chairman Sensenbrenner. Are there any amendments to any of
the bills?
[No response.]
Chairman Sensenbrenner. There being no amendments, without
objection, the previous question is ordered on reporting the
bills favorably and the vote on reporting these bills favorably
will be taken when a reporting quorum is present.
Without objection the order for the previous question is
vitiated. There is a Subcommittee amendment on H.R. 683, the
Dilution Bill. Without objection, the Subcommittee amendment is
agreed to. Hearing none, so ordered.
[The amendment follows:]
Chairman Sensenbrenner. And now without objection, the
previous question is ordered on reporting the bills favorably
with H.R. 683 being reported favorably as amended. And the vote
will be taken at the time that a reporting quorum appears.
[Intervening business.]
Chairman Sensenbrenner. If there are no further amendments,
without objection, the previous question is ordered favorably
reporting Senate 167.
We are still one short of a reporting quorum. I would ask
the Members present to be patient, and as soon as we round up--
here we go. They have been rounded up. [Laughter.]
The previous question has been ordered on reporting
favorably the following bills: Senate 167, H.R. 683, H.R. 1036,
H.R. 1037 and H.R. 1038. So many as are in favor of reporting
these bills favorably will say aye.
Opposed, no?
The ayes appear to have it. The ayes have it, and the bills
are reported favorably.
Without objection, those bills which were amended here,
meaning H.R. 683, will be reported favorably to the House in
the form of a single amendment in the nature of a substitute,
incorporating the amendments adopted here today. That unanimous
consent request also includes Senate 167 as amended.
Is there any objection?
[Intervening business.]
Chairman Sensenbrenner. Okay. Without objection, all
Members will be given 2 days as provided by House rules, in
which to submit additional dissenting supplemental or minority
views, and without objection the staff is directed to make any
technical and conforming changes.
[Intervening business.]
Chairman Sensenbrenner. There being no further business to
come before the Committee, the Committee stands adjourned.
[Whereupon, at 10:17 a.m., the Committee was adjourned.]