`[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1259 Reported in Senate (RS)]






                                                       Calendar No. 195
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

                              July 1, 1999

                Reported by Mr. Hatch, without amendment

_______________________________________________________________________

                                 A BILL


 
   To amend the Trademark Act of 1946 relating to dilution of famous 
                     marks, and for other purposes.

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

SECTION 1. SHORT TITLE.

    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) 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''.
    (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:
    ``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 are amended by striking ``trade-marks'' each 
place it appears and inserting ``trademarks''.




                                                       Calendar No. 195

106th CONGRESS

  1st Session

                                S. 1259

_______________________________________________________________________

                                 A BILL

   To amend the Trademark Act of 1946 relating to dilution of famous 
                     marks, and for other purposes.

_______________________________________________________________________

                              July 1, 1999

                       Reported without amendment`