PUBLIC LAW 109–312—OCT. 6, 2006

TRADEMARK DILUTION REVISION ACT OF

2006

120 STAT. 1730 PUBLIC LAW 109–312—OCT. 6, 2006

Public Law 109–312

109th Congress

An Act

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

tarnishment.

Be it enacted by the Senate and House of Representatives of

the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

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

Dilution Revision Act of 2006’’.

(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.

Trademark

Dilution Revision

Act of 2006.

15 USC 1051

note.

Oct. 6, 2006

[H.R. 683]

PUBLIC LAW 109–312—OCT. 6, 2006 120 STAT. 1731

‘‘(iv) Whether the mark was registered under the Act

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

on the principal register.

‘‘(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) Any fair use, including a nominative or descriptive

fair use, or facilitation of such fair use, of a famous mark

by another person other than as a designation of source

for the person’s own goods or services, including use in

connection with—

‘‘(i) advertising or promotion that permits consumers to compare goods or services; or

‘‘(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods

or services of the famous mark owner.

‘‘(B) All forms of news reporting and news commentary.

‘‘(C) Any noncommercial use of a mark.

‘‘(4) BURDEN OF PROOF.—In a civil action for trade dress

dilution 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—

‘‘(A) the claimed trade dress, taken as a whole, is

not functional and is famous; and

‘‘(B) if the claimed trade dress includes any mark or

marks registered on the principal register, the unregistered

matter, taken as a whole, is famous separate and apart

from any fame of such registered marks.

‘‘(5) ADDITIONAL REMEDIES.—In an action brought under

this subsection, the owner of the famous mark shall be entitled

to injunctive relief as set forth in section 34. 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 if—

120 STAT. 1732 PUBLIC LAW 109–312—OCT. 6, 2006

‘‘(A) the mark or trade name that is likely to cause

dilution by blurring or dilution by tarnishment was first

used in commerce by the person against whom the injunction is sought after the date of enactment of the Trademark

Dilution Revision Act of 2006; 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.

‘‘(6) 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—

‘‘(A)(i) is brought by another person under the common

law or a statute of a State; and

‘‘(ii) seeks to prevent dilution by blurring or dilution

by tarnishment; or

‘‘(B) asserts any claim of actual or likely damage or

harm to the distinctiveness or reputation of a mark, label,

or form of advertisement.

‘‘(7) SAVINGS CLAUSE.—Nothing in this subsection shall be

construed to impair, modify, or supersede the applicability of

the patent laws of the United States.’’; 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) by striking ‘‘, including as a result of dilution under section

43(c),’’ and inserting ‘‘, including as a result of a likelihood of

dilution by blurring or dilution by tarnishment under section 43(c),’’.

(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:

PUBLIC LAW 109–312—OCT. 6, 2006 120 STAT. 1733

LEGISLATIVE HISTORY—H.R. 683:

HOUSE REPORTS: No. 109–23 (Comm. on the Judiciary).

CONGRESSIONAL RECORD:

Vol. 151 (2005): Apr. 19, considered and passed House.

Vol. 152 (2006): Mar. 8, considered and passed Senate, amended.

Sept. 25, House concurred in Senate amendment.

Æ

‘‘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 the term ‘‘dilution’’.

Approved October 6, 2006.