II

106TH CONGRESS

1ST SESSION S. 1259

To amend the Trademark Act of 1946 relating to dilution of famous marks,

and for other purposes.

IN THE SENATE OF THE UNITED STATES

JUNE 22, 1999

Mr. HATCH (for himself and Mr. LEAHY) introduced the following bill; which

was read twice and referred to the Committee on the Judiciary

A BILL

To amend the Trademark Act of 1946 relating to dilution

of famous marks, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Trademark Amend5 ments Act of 1999’’.

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

7 CANCELATION.

8 (a) REGISTRABLE MARKS.—Section 2 of the Act en9 titled ‘‘An Act to provide for the registration and protec10 tion of trade-marks used in commerce, to carry out the
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1 provisions of certain international conventions, and for

2 other purposes’’ (in this Act referred to as the ‘‘Trade3 mark Act of 1946’’) (15 U.S.C. 1052) is amended by add4 ing at the end the following flush sentences: ‘‘A mark

5 which when used would cause dilution under section 43(c)

6 may be refused registration only pursuant to a proceeding

7 brought under section 13. A registration for a mark which

8 when used would cause dilution under section 43(c) may

9 be canceled pursuant to a proceeding brought under either

10 section 14 or section 24.’’.

11 (b) OPPOSITION.—Section 13(a) of the Trademark

12 Act of 1946 (15 U.S.C. 1063(a)) is amended in the first

13 sentence by inserting ‘‘, including as a result of dilution

14 under section 43(c),’’ after ‘‘principal register’’.

15 (c) PETITIONS TO CANCEL REGISTRATIONS.—Sec16 tion 14 of the Trademark Act of 1946 (15 U.S.C. 1064)

17 is amended in the matter preceding paragraph (1) by in18 serting ‘‘, including as a result of dilution under section

19 43(c),’’ after ‘‘damaged’’.

20 (d) CANCELLATION.—Section 24 of the Trademark

21 Act of 1946 (15 U.S.C. 1092) is amended in the second

22 sentence by inserting ‘‘, including as a result of dilution

23 under section 43(c),’’ after ‘‘register’’.

24 (e) EFFECTIVE DATE AND APPLICATION.—The

25 amendments made by this section shall take effect on the
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1 date of enactment of this Act and shall apply only to any

2 application for registration filed on or after January 16,

3 1996.

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

5 MARKS.

6 (a) INJUNCTIONS.—(1) Section 34(a) of the Trade7 mark Act of 1946 (15 U.S.C. 1116(a)) is amended in the

8 first sentence by striking ‘‘section 43(a)’’ and inserting

9 ‘‘subsection (a) or (c) of section 43’’.

10 (2) Section 43(c)(2) of the Trademark Act of 1946

11 (15 U.S.C. 1125(c)(2)) is amended in the first sentence

12 by inserting ‘‘as set forth in section 34’’ after ‘‘relief’’.

13 (b) DAMAGES.—Section 35(a) of the Trademark Act

14 of 1946 (15 U.S.C. 1117(a)) is amended in the first sen15 tence by striking ‘‘or a violation under section 43(a),’’ and

16 inserting ‘‘a violation under section 43(a), or a willful vio17 lation under section 43(c),’’.

18 (c) DESTRUCTION OF ARTICLES.—Section 36 of the

19 Trademark Act of 1946 (15 U.S.C. 1118) is amended in

20 the first sentence—

21 (1) by striking ‘‘or a violation under section

22 43(a),’’ and inserting ‘‘a violation under section

23 43(a), or a willful violation under section 43(c),’’;

24 and
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1 (2) by inserting after ‘‘in the case of a violation

2 of section 43(a)’’ the following: ‘‘or a willful viola3 tion under section 43(c)’’.

4 SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN5 FRINGEMENT AND DILUTION.

6 (a) CIVIL ACTIONS.—Section 32 of the Trademark

7 Act of 1946 (15 U.S.C. 1114) is amended in the last un8 designated paragraph in paragraph (1)—

9 (1) in the first sentence by inserting after ‘‘in10 cludes’’ the following: ‘‘the United States, all agen11 cies and instrumentalities thereof, and all individ12 uals, firms, corporations, or other persons acting for

13 the United States and with the authorization and

14 consent of the United States, and’’; and

15 (2) in the second sentence by striking ‘‘Any’’

16 and inserting ‘‘The United States, all agencies and

17 instrumentalities thereof, and all individuals, firms,

18 corporations, other persons acting for the United

19 States and with the authorization and consent of the

20 United States, and any’’.

21 (b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40

22 of the Trademark Act of 1946 (15 U.S.C. 1122) is

23 amended—

24 (1) by redesignating subsection (b) as sub25 section (c);
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1 (2) by striking ‘‘SEC. 40. (a) Any State’’ and

2 inserting the following:

3 ‘‘SEC. 40. (a) WAIVER OF SOVEREIGN IMMUNITY BY

4 THE UNITED STATES.—The United States, all agencies

5 and instrumentalities thereof, and all individuals, firms,

6 corporations, other persons acting for the United States

7 and with the authorization and consent of the United

8 States, shall not be immune from suit in Federal or State

9 court by any person, including any governmental or non10 governmental entity, for any violation under this Act.

11 ‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY

12 STATES.—Any State’’; and

13 (3) in the first sentence of subsection (c), as so

14 redesignated—

15 (A) by striking ‘‘subsection (a) for a viola16 tion described in that subsection’’ and inserting

17 ‘‘subsection (a) or (b) for a violation described

18 therein’’; and

19 (B) by inserting after ‘‘other than’’ the fol20 lowing: ‘‘the United States or any agency or in21 strumentality thereof, or any individual, firm,

22 corporation, or other person acting for the

23 United States and with authorization and con24 sent of the United States, or’’.
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1 (c) DEFINITION.—Section 45 of the Trademark Act

2 of 1946 (15 U.S.C. 1127) is amended by inserting be3 tween the 2 paragraphs relating to the definition of ‘‘per4 son’’ the following:

5 ‘‘The term ‘person’ also includes the United States,

6 any agency or instrumentality thereof, or any individual,

7 firm, or corporation acting for the United States and with

8 the authorization and consent of the United States. The

9 United States, any agency or instrumentality thereof, and

10 any individual, firm, or corporation acting for the United

11 States and with the authorization and consent of the

12 United States, shall be subject to the provisions of this

13 Act in the same manner and to the same extent as any

14 nongovernmental entity.’’.

15 SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.

16 Section 43(a) of the Trademark Act of 1946 (15

17 U.S.C. 1125(a)) is amended by adding at the end the fol18 lowing:

19 ‘‘(3) In a civil action for trade dress infringement

20 under this Act for trade dress not registered on the prin21 cipal register, the person who asserts trade dress protec22 tion has the burden of proving that the matter sought to

23 be protected is not functional.’’.
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1 SEC. 6. TECHNICAL AMENDMENTS.

2 (a) ASSIGNMENT OF MARKS.—Section 10 of the

3 Trademark Act of 1946 (15 U.S.C. 1060) is amended—

4 (1) by striking ‘‘subsequent purchase’’ in the

5 second to last sentence and inserting ‘‘assignment’’;

6 (2) in the first sentence by striking ‘‘mark,’’

7 and inserting ‘‘mark.’’; and

8 (3) in the third sentence by striking the second

9 period at the end.

10 (b) ADDITIONAL CLERICAL AMENDMENTS.—The text

11 and title of the Trademark Act of 1946 are amended by

12 striking ‘‘trade-marks’’ each place it appears and inserting

13 ‘‘trademarks’’.

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