39–006 

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: 

2 

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—

3 

1Pub. L. No. 104–98 (1995). 

‘‘(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. 

4 

2The 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. 3 15 U.S.C. 1127 (1998). 

4 H.R. Rep. No. 104–364 (1995) reprinted in U.S.C.C.A.N. at 1029, 1030. 5See 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). 

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. 

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. 

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. 

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

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: 

• the degree of inherent or acquired distinctiveness of the 

mark; 

5 

7 15 U.S.C. § 1125(c). 8 123 S. Ct. 1115 (2003). 

9 537 U.S. 418 (2003). 

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). 

• the duration and extent of use of the mark in connection 

with the goods or services with which the mark is used; 

• the duration and extent of advertising and publicity of the 

mark; 

• the geographical extent of the trading area in which the 

mark is used; 

• the channels of trade for the goods or services with which 

the mark is used; 

• 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; and 

• the nature and extent of use of the same or similar marks 

by third parties.7

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

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. 

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 ‘‘tarnishVerDate Aug 04 2004 15:08 Mar 18, 2005 Jkt 039006 PO 00000 Frm 00005 Fmt 6659 Sfmt 6601 E:\HR\OC\HR023.XXX HR023
6 

12 Id. at 3–4. See also statement of William G. Barber on behalf of the American Intellectual 

Property Law Association at 2–3. 13Gundelfinger at 5. 

ment.’’ 12 The resulting problems were concisely summarized at the 

Subcommittee’s 2005 hearing as follows: 

[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

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 

7 

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 

8 

14 15 U.S.C. § 1117(a). 15 15 U.S.C. § 1118. 

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: 

• actual or likely confusion among the public; 

• competition between the owner and the person; or 

• actual economic injury to the owner. 

Under § 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: 

• the degree of similarity between the source designation and 

the famous mark; 

• the degree of inherent or acquired distinctiveness of the famous mark; and 

• the 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 § 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. 

Substantial portions of § 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, § 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 AmendVerDate Aug 04 2004 15:08 Mar 18, 2005 Jkt 039006 PO 00000 Frm 00008 Fmt 6659 Sfmt 6601 E:\HR\OC\HR023.XXX HR023
9 

ments 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. 

10 

øA 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 øas 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 

damagedø, 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. øWhenever any person believes that he is or will be damaged 

11 

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) * * * 

* * * * * * * 

ø(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—

ø(A) the degree of inherent or acquired distinctiveness of 

the mark; 

ø(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; 

ø(C) the duration and extent of advertising and publicity 

of the mark; 

ø(D) the geographical extent of the trading area in which 

the mark is used; 

ø(E) the channels of trade for the goods or services with 

which the mark is used; 

ø(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; 

ø(G) the nature and extent of use of the same or similar 

marks by third parties; and 

12 

ø(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. 

ø(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. 

ø(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. 

ø(4) The following shall not be actionable under this section: 

ø(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. 

ø(B) Noncommercial use of a mark. 

ø(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. 

13 

(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 

14 

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 ø(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. 

* * * * * * * 

øThe 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— ø(1) competition between the owner of the famous mark 

and other parties, or 

ø(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. 

15 

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:] 

16 

I

109TH CONGRESS

1ST SESSION H. R. 683

To amend the Trademark Act of 1946 with respect to dilution by blurring

or tarnishment.

IN THE HOUSE OF REPRESENTATIVES

FEBRUARY 9, 2005

Mr. SMITH of Texas introduced the following bill; which was referred to the

Committee on the Judiciary

A BILL

To amend the Trademark Act of 1946 with respect to

dilution by blurring or tarnishment.

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 (a) SHORT TITLE.—This Act may be cited as the

5 ‘‘Trademark Dilution Revision Act of 2005’’.

6 (b) REFERENCES.—Any reference in this Act to the

7 Trademark Act of 1946 shall be a reference to the Act

8 entitled ‘‘An Act to provide for the registration and protec9 tion of trademarks used in commerce, to carry out the pro10 visions of certain international conventions, and for other


683I.AAB
17 

2

•HR 683 IH

1 purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et

2 seq.).

3 SEC. 2. DILUTION BY BLURRING; DILUTION BY

4 TARNISHMENT.

5 Section 43 of the Trademark Act of 1946 (15 U.S.C.

6 1125) is amended—

7 (1) by striking subsection (c) and inserting the

8 following:

9 ‘‘(c) DILUTION BY BLURRING; DILUTION BY

10 TARNISHMENT.—

11 ‘‘(1) INJUNCTIVE RELIEF.—Subject to the prin12 ciples of equity, the owner of a famous mark that is

13 distinctive, inherently or through acquired distinc14 tiveness, shall be entitled to an injunction against

15 another person who, at any time after the owner’s

16 mark has become famous, commences use of a mark

17 or trade name in commerce as a designation of

18 source of the person’s goods or services that is likely

19 to cause dilution by blurring or dilution by

20 tarnishment, regardless of the presence or absence

21 of actual or likely confusion, of competition, or of ac22 tual economic injury.

23 ‘‘(2) DEFINITIONS.—(A) For purposes of para24 graph (1), a mark is famous if it is widely recog25 nized by the general consuming public of the United


683I.AAC
18 

3

•HR 683 IH

1 States as a designation of source of the goods or

2 services of the mark’s owner. In determining wheth3 er a mark possesses the requisite degree of recogni4 tion, the court may consider all relevant factors, in5 cluding the following:

6 ‘‘(i) The duration, extent, and geographic

7 reach of advertising and publicity of the mark,

8 whether advertised or publicized by the owner

9 or third parties.

10 ‘‘(ii) The amount, volume, and geographic

11 extent of sales of goods or services offered

12 under the mark.

13 ‘‘(iii) The extent of actual recognition of

14 the mark.

15 ‘‘(B) For purposes of paragraph (1), ‘dilution

16 by blurring’ is association arising from the similarity

17 between a designation of source and a famous mark

18 that impairs the distinctiveness of the famous mark.

19 In determining whether a designation of source is

20 likely to cause dilution by blurring, the court may

21 consider all relevant factors, including the following:

22 ‘‘(i) The degree of similarity between the

23 designation of source and the famous mark.

24 ‘‘(ii) The degree of inherent or acquired

25 distinctiveness of the famous mark.


683I.AAD
19 

4

•HR 683 IH

1 ‘‘(iii) The extent to which the owner of the

2 famous mark is engaging in substantially exclu3 sive use of the mark.

4 ‘‘(iv) The degree of recognition of the fa5 mous mark.

6 ‘‘(v) Whether the user of the designation of

7 source intended to create an association with

8 the famous mark.

9 ‘‘(vi) Any actual association between the

10 designation of source and the famous mark.

11 ‘‘(C) For purposes of paragraph (1), ‘dilution

12 by tarnishment’ is association arising from the simi13 larity between a designation of source and a famous

14 mark that harms the reputation of the famous mark.

15 ‘‘(3) EXCLUSIONS.—The following shall not be

16 actionable as dilution by blurring or dilution by

17 tarnishment under this subsection:

18 ‘‘(A) Fair use of a famous mark by an19 other person in comparative commercial adver20 tising or promotion to identify the competing

21 goods or services of the owner of the famous

22 mark.

23 ‘‘(B) Noncommercial use of a designation

24 of source.


683I.AAE
20 

5

•HR 683 IH

1 ‘‘(C) All forms of news reporting and news

2 commentary.

3 ‘‘(4) ADDITIONAL REMEDIES.—In an action

4 brought under this subsection, the owner of the fa5 mous mark shall be entitled only to injunctive relief

6 as set forth in section 34, except that, if—

7 ‘‘(A) the person against whom the injunc8 tion is sought did not use a mark or trade

9 name that is likely to cause dilution by blurring

10 or dilution by tarnishment as a designation of

11 source in commerce prior to the date of the en12 actment of the Trademark Dilution Revision

13 Act of 2005, and

14 ‘‘(B) in a claim arising under this

15 subsection—

16 ‘‘(i) by reason of dilution by blurring,

17 the person against whom the injunction is

18 sought willfully intended to trade on the

19 recognition of the famous mark, or

20 ‘‘(ii) by reason of dilution by

21 tarnishment, the person against whom the

22 injunction is sought willfully intended to

23 trade on the reputation of the famous

24 mark,


683I.AAF
21 

6

•HR 683 IH

1 the owner of the famous mark shall also be entitled

2 to the remedies set forth in sections 35(a) and 36,

3 subject to the discretion of the court and the prin4 ciples of equity.

5 ‘‘(5) OWNERSHIP OF VALID REGISTRATION A

6 COMPLETE BAR TO ACTION.—The ownership by a

7 person of a valid registration under the Act of

8 March 3, 1881, or the Act of February 20, 1905, or

9 on the principal register under this Act shall be a

10 complete bar to an action against that person, with

11 respect to that mark, that is brought by another

12 person under the common law or a statute of a

13 State and that seeks to prevent dilution by blurring

14 or dilution by tarnishment, or that asserts any claim

15 of actual or likely damage or harm to the distinctive16 ness or reputation of a mark, label, or form of ad17 vertisement.’’; and

18 (2) in subsection (d)(1)(B)(i)(IX), by striking

19 ‘‘(c)(1) of section 43’’ and inserting ‘‘(c)’’.

20 SEC. 3. CONFORMING AMENDMENTS.

21 (a) MARKS REGISTRABLE ON THE PRINCIPAL REG22 ISTER.—Section 2(f) of the Trademark Act of 1946 (15

23 U.S.C. 1052(f)) is amended—

24 (1) by striking the last two sentences; and


683I.AAG
22 

7

•HR 683 IH

1 (2) adding at the end the following: ‘‘A mark

2 which, when used as a designation of source for the

3 applicant’s goods or services, would be likely to

4 cause dilution by blurring or dilution by tarnishment

5 under section 43(c), may be refused registration only

6 pursuant to a proceeding brought under section 13.

7 A registration for a mark which, when used as a

8 designation of source for the registrant’s goods or

9 services, would be likely to cause dilution by blurring

10 or dilution by tarnishment under section 43(c), may

11 be canceled pursuant to a proceeding brought under

12 either section 14 or section 24.’’

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

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

15 sentence by striking ‘‘as a result of dilution’’ and inserting

16 ‘‘the registration of any mark which, when used as a des17 ignation of source for the applicant’s goods or services,

18 would be likely to cause dilution by blurring or

19 tarnishment’’.

20 (c) CANCELLATION.—Section 14 of the Trademark

21 Act of 1946 (15 U.S.C. 1064) is amended, in the matter

22 preceding paragraph (1)—

23 (1) by striking ‘‘, including as a result of dilu24 tion under section 43(c),’’; and


683I.AAH
23 

8

•HR 683 IH

1 (2) inserting ‘‘(A) for which the constructive

2 use date is after the date on which the petitioner’s

3 mark became famous and which, when used as a

4 designation of source for the registrant’s goods or

5 services, would be likely to cause dilution by blurring

6 or dilution by tarnishment under section 43(c), or

7 (B) on grounds other than dilution by blurring or di8 lution by tarnishment’’ after ‘‘February 20, 1905’’.

9 (d) MARKS FOR THE SUPPLEMENTAL REGISTER.—

10 The second sentence of section 24 of the Trademark Act

11 of 1946 (15 U.S.C. 1092) is amended to read as follows:

12 ‘‘Whenever any person believes that such person is or will

13 be damaged by the registration of a mark on the supple14 mental register—

15 ‘‘(1) for which the effective filing date is after

16 the date on which such person’s mark became fa17 mous and which, when used as a designation of

18 source for the registrant’s goods or services, would

19 be likely to cause dilution by blurring or dilution by

20 tarnishment under section 43(c), or

21 ‘‘(2) on grounds other than dilution by blurring

22 or dilution by tarnishment,

23 such person may at any time, upon payment of the pre24 scribed fee and the filing of a petition stating the ground


683I.AAI
24 

9

•HR 683 IH

1 therefor, apply to the Director to cancel such registra2 tion.’’.

3 (e) DEFINITIONS.—Section 45 of the Trademark Act

4 of 1946 (15 U.S.C. 1127) is amended by striking the defi5 nition relating to ‘‘dilution’’.

Æ


683I.AAJ
25 

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. 

26 

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:] 

27 H.L.C.

AMENDMENT IN THE NATURE OF A SUBSTITUTE

TO H.R. 683, AS REPORTED BY THE SUBCOMMITTEE ON COURTS, THE INTERNET, AND

INTELLECTUAL PROPERTY

Strike all after the enacting clause and insert the

following:

1 SECTION 1. SHORT TITLE.

2 (a) SHORT TITLE.—This Act may be cited as the

3 ‘‘Trademark Dilution Revision Act of 2005’’.

4 (b) REFERENCES.—Any reference in this Act to the

5 Trademark Act of 1946 shall be a reference to the Act

6 entitled ‘‘An Act to provide for the registration and protec7 tion of trademarks used in commerce, to carry out the pro8 visions of certain international conventions, and for other

9 purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et

10 seq.).

11 SEC. 2. DILUTION BY BLURRING; DILUTION BY

12 TARNISHMENT.

13 Section 43 of the Trademark Act of 1946 (15 U.S.C.

14 1125) is amended—

15 (1) by striking subsection (c) and inserting the

16 following:


683A.AAB
28 

2

H.L.C.

1 ‘‘(c) DILUTION BY BLURRING; DILUTION BY

2 TARNISHMENT.—

3 ‘‘(1) INJUNCTIVE RELIEF.—Subject to the prin4 ciples of equity, the owner of a famous mark that is

5 distinctive, inherently or through acquired distinc6 tiveness, shall be entitled to an injunction against

7 another person who, at any time after the owner’s

8 mark has become famous, commences use of a mark

9 or trade name in commerce that is likely to cause di10 lution by blurring or dilution by tarnishment of the

11 famous mark, regardless of the presence or absence

12 of actual or likely confusion, of competition, or of ac13 tual economic injury.

14 ‘‘(2) DEFINITIONS.—(A) For purposes of para15 graph (1), a mark is famous if it is widely recog16 nized by the general consuming public of the United

17 States as a designation of source of the goods or

18 services of the mark’s owner. In determining wheth19 er a mark possesses the requisite degree of recogni20 tion, the court may consider all relevant factors, in21 cluding the following:

22 ‘‘(i) The duration, extent, and geographic

23 reach of advertising and publicity of the mark,

24 whether advertised or publicized by the owner

25 or third parties.


683A.AAC
29 

3

H.L.C.

1 ‘‘(ii) The amount, volume, and geographic

2 extent of sales of goods or services offered

3 under the mark.

4 ‘‘(iii) The extent of actual recognition of

5 the mark.

6 ‘‘(B) For purposes of paragraph (1), ‘dilution

7 by blurring’ is association arising from the similarity

8 between a mark or trade name and a famous mark

9 that impairs the distinctiveness of the famous mark.

10 In determining whether a mark or trade name is

11 likely to cause dilution by blurring, the court may

12 consider all relevant factors, including the following:

13 ‘‘(i) The degree of similarity between the

14 mark or trade name and the famous mark.

15 ‘‘(ii) The degree of inherent or acquired

16 distinctiveness of the famous mark.

17 ‘‘(iii) The extent to which the owner of the

18 famous mark is engaging in substantially exclu19 sive use of the mark.

20 ‘‘(iv) The degree of recognition of the fa21 mous mark.

22 ‘‘(v) Whether the user of the mark or

23 trade name intended to create an association

24 with the famous mark.


683A.AAD
30 

4

H.L.C.

1 ‘‘(vi) Any actual association between the

2 mark or trade name and the famous mark.

3 ‘‘(C) For purposes of paragraph (1), ‘dilution

4 by tarnishment’ is association arising from the simi5 larity between a mark or trade name and a famous

6 mark that harms the reputation of the famous mark.

7 ‘‘(3) EXCLUSIONS.—The following shall not be

8 actionable as dilution by blurring or dilution by

9 tarnishment under this subsection:

10 ‘‘(A) Fair use of a famous mark by an11 other person in comparative commercial adver12 tising or promotion to identify the competing

13 goods or services of the owner of the famous

14 mark.

15 ‘‘(B) Fair use of a famous mark by an16 other person, other than as a designation of

17 source for the person’s goods or services, in18 cluding for purposes of identifying and paro19 dying, criticizing, or commenting upon the fa20 mous mark owner or the goods or services of

21 the famous mark owner.

22 ‘‘(C) All forms of news reporting and news

23 commentary.

24 ‘‘(4) ADDITIONAL REMEDIES.—In an action

25 brought under this subsection, the owner of the faVerDate Aug 04 2004 15:08 Mar 18, 2005 Jkt 039006 PO 00000 Frm 00030 Fmt 6659 Sfmt 6601 E:\HR\OC\HR023.XXX HR023

683A.AAE
31 

5

H.L.C.

1 mous mark shall be entitled only to injunctive relief

2 as set forth in section 34, except that, if—

3 ‘‘(A) the person against whom the injunc4 tion is sought did not use in commerce, prior to

5 the date of the enactment of the Trademark Di6 lution Revision Act of 2005, the mark or trade

7 name that is likely to cause dilution by blurring

8 or dilution by tarnishment, and

9 ‘‘(B) in a claim arising under this

10 subsection—

11 ‘‘(i) by reason of dilution by blurring,

12 the person against whom the injunction is

13 sought willfully intended to trade on the

14 recognition of the famous mark, or

15 ‘‘(ii) by reason of dilution by

16 tarnishment, the person against whom the

17 injunction is sought willfully intended to

18 harm the reputation of the famous mark,

19 the owner of the famous mark shall also be entitled

20 to the remedies set forth in sections 35(a) and 36,

21 subject to the discretion of the court and the prin22 ciples of equity.

23 ‘‘(5) OWNERSHIP OF VALID REGISTRATION A

24 COMPLETE BAR TO ACTION.—The ownership by a

25 person of a valid registration under the Act of


683A.AAF
32 

6

H.L.C.

1 March 3, 1881, or the Act of February 20, 1905, or

2 on the principal register under this Act shall be a

3 complete bar to an action against that person, with

4 respect to that mark, that is brought by another

5 person under the common law or a statute of a

6 State and that seeks to prevent dilution by blurring

7 or dilution by tarnishment, or that asserts any claim

8 of actual or likely damage or harm to the distinctive9 ness or reputation of a mark, label, or form of ad10 vertisement.’’; and

11 (2) in subsection (d)(1)(B)(i)(IX), by striking

12 ‘‘(c)(1) of section 43’’ and inserting ‘‘(c)’’.

13 SEC. 3. CONFORMING AMENDMENTS.

14 (a) MARKS REGISTRABLE ON THE PRINCIPAL REG15 ISTER.—Section 2(f) of the Trademark Act of 1946 (15

16 U.S.C. 1052(f)) is amended—

17 (1) by striking the last two sentences; and

18 (2) adding at the end the following: ‘‘A mark

19 which would be likely to cause dilution by blurring

20 or dilution by tarnishment under section 43(c), may

21 be refused registration only pursuant to a pro22 ceeding brought under section 13. A registration for

23 a mark which would be likely to cause dilution by

24 blurring or dilution by tarnishment under section


683A.AAG
33 

7

H.L.C.

1 43(c), may be canceled pursuant to a proceeding

2 brought under either section 14 or section 24.’’

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

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

5 sentence by striking ‘‘as a result of dilution’’ and inserting

6 ‘‘the registration of any mark which would be likely to

7 cause dilution by blurring or dilution by tarnishment’’.

8 (c) CANCELLATION.—Section 14 of the Trademark

9 Act of 1946 (15 U.S.C. 1064) is amended, in the matter

10 preceding paragraph (1)—

11 (1) by striking ‘‘, including as a result of dilu12 tion under section 43(c),’’; and

13 (2) inserting ‘‘(A) for which the constructive

14 use date is after the date on which the petitioner’s

15 mark became famous and which would be likely to

16 cause dilution by blurring or dilution by tarnishment

17 under section 43(c), or (B) on grounds other than

18 dilution by blurring or dilution by tarnishment’’

19 after ‘‘February 20, 1905’’.

20 (d) MARKS FOR THE SUPPLEMENTAL REGISTER.—

21 The second sentence of section 24 of the Trademark Act

22 of 1946 (15 U.S.C. 1092) is amended to read as follows:

23 ‘‘Whenever any person believes that such person is or will

24 be damaged by the registration of a mark on the supple25 mental register—


683A.AAH
34 

8

H.L.C.

1 ‘‘(1) for which the effective filing date is after

2 the date on which such person’s mark became fa3 mous and which would be likely to cause dilution by

4 blurring or dilution by tarnishment under section

5 43(c), or

6 ‘‘(2) on grounds other than dilution by blurring

7 or dilution by tarnishment,

8 such person may at any time, upon payment of the pre9 scribed fee and the filing of a petition stating the ground

10 therefor, apply to the Director to cancel such registra11 tion.’’.

12 (e) DEFINITIONS.—Section 45 of the Trademark Act

13 of 1946 (15 U.S.C. 1127) is amended by striking the defi14 nition relating to ‘‘dilution’’.


683A.AAI
35 

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.] 

Æ