II

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.

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 CANCELLATION.

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 SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN9 FRINGEMENT AND DILUTION.

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

11 Act of 1946 (15 U.S.C. 1114) is amended in the last un12 designated paragraph in paragraph (1)—

13 (1) in the first sentence by inserting after ‘‘in14 cludes’’ the following: ‘‘the United States, all agen15 cies and instrumentalities thereof, and all individ16 uals, firms, corporations, or other persons acting for

17 the United States and with the authorization and

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

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

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

21 instrumentalities thereof, and all individuals, firms,

22 corporations, other persons acting for the United

23 States and with the authorization and consent of the

24 United States, and any’’.
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1 (b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40

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

3 amended—

4 (1) by redesignating subsection (b) as sub5 section (c);

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

7 inserting the following:

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

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

10 and instrumentalities thereof, and all individuals, firms,

11 corporations, other persons acting for the United States

12 and with the authorization and consent of the United

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

14 court by any person, including any governmental or non15 governmental entity, for any violation under this Act.

16 ‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY

17 STATES.—Any State’’; and

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

19 redesignated—

20 (A) by striking ‘‘subsection (a) for a viola21 tion described in that subsection’’ and inserting

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

23 therein’’; and

24 (B) by inserting after ‘‘other than’’ the fol25 lowing: ‘‘the United States or any agency or in-
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1 strumentality thereof, or any individual, firm,

2 corporation, or other person acting for the

3 United States and with authorization and con4 sent of the United States, or’’.

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

6 of 1946 (15 U.S.C. 1127) is amended by inserting be7 tween the 2 paragraphs relating to the definition of ‘‘per8 son’’ the following:

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

10 any agency or instrumentality thereof, or any individual,

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

12 the authorization and consent of the United States. The

13 United States, any agency or instrumentality thereof, and

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

15 States and with the authorization and consent of the

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

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

18 nongovernmental entity.’’.

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

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

21 U.S.C. 1125(a)) is amended by adding at the end the fol22 lowing:

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

24 under this Act for trade dress not registered on the prin25 cipal register, the person who asserts trade dress protec-
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1 tion has the burden of proving that the matter sought to

2 be protected is not functional.’’.

3 SEC. 6. TECHNICAL AMENDMENTS.

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

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

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

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

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

9 and inserting ‘‘mark.’’; and

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

11 period at the end.

12 (b) ADDITIONAL CLERICAL AMENDMENTS.—The text

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

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

15 ‘‘trademarks’’.
Calendar No. 195

106TH CONGRESS

1ST SESSION S. 1259

A BILL

dilution of famous marks, and for other purposes.

To amend the Trademark Act of 1946 relating to

JULY 1, 1999

Reported without amendment