106TH CONGRESS

1ST SESSION S. 1259

AN ACT

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’’.
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1 SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND

2 CANCELATION.

3 (a) REGISTRABLE MARKS.—Section 2 of the Act en4 titled ‘‘An Act to provide for the registration and protec5 tion of trade-marks used in commerce, to carry out the

6 provisions of certain international conventions, and for

7 other purposes’’ (in this Act referred to as the ‘‘Trade8 mark Act of 1946’’) (15 U.S.C. 1052) is amended by add9 ing at the end the following flush sentences: ‘‘A mark

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

11 may be refused registration only pursuant to a proceeding

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

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

14 be canceled pursuant to a proceeding brought under either

15 section 14 or section 24.’’.

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

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

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

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

20 (c) PETITIONS TO CANCEL REGISTRATIONS.—Sec21 tion 14 of the Trademark Act of 1946 (15 U.S.C. 1064)

22 is amended in the matter preceding paragraph (1) by in23 serting ‘‘, including as a result of dilution under section

24 43(c),’’ after ‘‘damaged’’.

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

26 Act of 1946 (15 U.S.C. 1092) is amended in the second
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1 sentence by inserting ‘‘, including as a result of dilution

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

3 (e) EFFECTIVE DATE AND APPLICATION.—The

4 amendments made by this section shall take effect on the

5 date of enactment of this Act and shall apply only to any

6 application for registration filed on or after January 16,

7 1996.

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

9 MARKS.

10 (a) INJUNCTIONS.—(1) Section 34(a) of the Trade11 mark Act of 1946 (15 U.S.C. 1116(a)) is amended in the

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

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

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

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

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

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

18 of 1946 (15 U.S.C. 1117(a)) is amended in the first sen19 tence by striking ‘‘or a violation under section 43(a),’’ and

20 inserting ‘‘a violation under section 43(a), or a willful vio21 lation under section 43(c),’’.

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

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

24 the first sentence—
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1 (1) by striking ‘‘or a violation under section

2 43(a),’’ and inserting ‘‘a violation under section

3 43(a), or a willful violation under section 43(c),’’;

4 and

5 (2) by inserting after ‘‘in the case of a violation

6 of section 43(a)’’ the following: ‘‘or a willful viola7 tion under section 43(c)’’.

8 (d) EFFECTIVE DATE AND APPLICATION.—The

9 amendments made by this section shall take effect on the

10 date of enactment of this Act and shall not apply to any

11 civil action pending on such date of enactment.

12 SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN13 FRINGEMENT AND DILUTION.

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

15 Act of 1946 (15 U.S.C. 1114) is amended in the last un16 designated paragraph in paragraph (1)—

17 (1) in the first sentence by inserting after ‘‘in18 cludes’’ the following: ‘‘the United States, all agen19 cies and instrumentalities thereof, and all individ20 uals, firms, corporations, or other persons acting for

21 the United States and with the authorization and

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

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

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

25 instrumentalities thereof, and all individuals, firms,
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1 corporations, other persons acting for the United

2 States and with the authorization and consent of the

3 United States, and any’’.

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

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

6 amended—

7 (1) by redesignating subsection (b) as sub8 section (c);

9 (2) by striking ‘‘SEC. 40. (a) Any State’’ and

10 inserting the following:

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

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

13 and instrumentalities thereof, and all individuals, firms,

14 corporations, other persons acting for the United States

15 and with the authorization and consent of the United

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

17 court by any person, including any governmental or non18 governmental entity, for any violation under this Act.

19 ‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY

20 STATES.—Any State’’; and

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

22 redesignated—

23 (A) by striking ‘‘subsection (a) for a viola24 tion described in that subsection’’ and inserting
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1 ‘‘subsection (a) or (b) for a violation described

2 therein’’; and

3 (B) by inserting after ‘‘other than’’ the fol4 lowing: ‘‘the United States or any agency or in5 strumentality thereof, or any individual, firm,

6 corporation, or other person acting for the

7 United States and with authorization and con8 sent of the United States, or’’.

9 (c) DEFINITION.—Section 45 of the Trademark Act

10 of 1946 (15 U.S.C. 1127) is amended by inserting be11 tween the 2 paragraphs relating to the definition of ‘‘per12 son’’ the following:

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

14 any agency or instrumentality thereof, or any individual,

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

16 the authorization and consent of the United States. The

17 United States, any agency or instrumentality thereof, and

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

19 States and with the authorization and consent of the

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

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

22 nongovernmental entity.’’.
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1 SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.

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

3 U.S.C. 1125(a)) is amended by adding at the end the fol4 lowing:

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

6 under this Act for trade dress not registered on the prin7 cipal register, the person who asserts trade dress protec8 tion has the burden of proving that the matter sought to

9 be protected is not functional.’’.

10 SEC. 6. TECHNICAL AMENDMENTS.

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

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

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

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

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

16 and inserting ‘‘mark.’’; and

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

18 period at the end.

19 (b) ADDITIONAL CLERICAL AMENDMENTS.—The text

20 and title of the Trademark Act of 1946 are amended by
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1 striking ‘‘trade-marks’’ each place it appears and inserting

2 ‘‘trademarks’’.

Passed the Senate July 1, 1999.

Attest:

Secretary.
106TH CONGRESS

1ST SESSION S. 1259

AN ACT

dilution of famous marks, and for other purposes.

To amend the Trademark Act of 1946 relating to