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[Congressional Bills 104th Congress]
[From the U.S. Government Publishing Office]
[H.R. 1295 Introduced in House (IH)]

  1st Session
                                H. R. 1295

 To amend the Trademark Act of 1946 to make certain revisions relating 
                   to the protection of famous marks.

_______________________________________________________________________

                    IN THE HOUSE OF REPRESENTATIVES

                             March 22, 1995

Mr. Moorhead (for himself, Mr. Sensenbrenner, Mr. Coble, Mr. Canady of 
   Florida, Mr. Goodlatte, Mr. Bono, and Mr. Boucher) introduced the 
  following bill; which was referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL

 
 To amend the Trademark Act of 1946 to make certain revisions relating 
                   to the protection of famous marks.

    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 ``Federal Trademark Dilution Act of 
1995''.

SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

    For purposes of this Act, 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'', approved July 5, 1946 (15 U.S.C. 1051 and following), 
shall be referred to as the ``Trademark Act of 1946''.

SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.

    (a) Remedies.--Section 43 of the Trademark Act of 1946 (15 U.S.C. 
1125) is amended by adding at the end the following new subsection:
    ``(c)(1) The registrant of a famous mark registered under the Act 
of March 3, 1881, or the Act of February 20, 1905, or on the principal 
register 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 registrant's mark becomes famous and causes 
dilution of the distinctive quality of the registrant's 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--
            ``(A) the degree of inherent or acquired distinctiveness of 
        the mark;
            ``(B) the duration and extent of use of the mark in 
        connection with the goods or services with which the mark is 
        used;
            ``(C) the duration and extent of advertising and publicity 
        of the mark;
            ``(D) the geographical extent of the trading area in which 
        the mark is used;
            ``(E) the channels of trade for the goods or services with 
        which the mark is used;
            ``(F) the degree of recognition of the registrant's mark in 
        the trading areas and channels of trade of the registrant and 
        the person against whom the injunction is sought; and
            ``(G) the nature and extent of use of the same or similar 
        marks by third parties.
    ``(2) In an action brought under this subsection, the registrant 
shall be entitled only to injunctive relief unless the person against 
whom the injunction is sought willfully intended to trade on the 
registrant's reputation or to cause dilution of the registrant's mark. 
If such willful intent is proven, the registrant 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.
    ``(3) The ownership by a person of a valid registration of a mark 
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.
    ``(4) The following shall not be actionable under this section:
            ``(A) Fair use of a registrant's mark by another person in 
        comparative commercial advertising or promotion to identify the 
        registrant's competing goods or services.
            ``(B) Noncommercial use of a mark.''.
    (b) Conforming Amendment.--The heading for title VIII of the 
Trademark Act of 1946 is amended by striking ``AND FALSE DESCRIPTIONS'' 
and inserting ``, FALSE DESCRIPTIONS, AND DILUTION''.

SEC. 4. DEFINITION.

    Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended 
by inserting after the paragraph defining when a mark shall be deemed 
to be ``abandoned'' the following:
    ``The term `dilution' means the lessening of the capacity of a 
registrant's mark to identify and distinguish goods or services, 
regardless of the presence or absence of--
            ``(1) competition between the registrant and other parties, 
        or
            ``(2) likelihood of confusion, mistake, or deception.''.

SEC. 5. EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect on 
the date of the enactment of this Act.
                                 <all>
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