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104TH CONGRESS

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.

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 ‘‘Federal Trademark

5 Dilution Act of 1995’’.

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

7 For purposes of this Act, the Act entitled ‘‘An Act

8 to provide for the registration and protection of trade9 marks used in commerce, to carry out the provisions of

10 certain international conventions, and for other purposes’’,
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1 approved July 5, 1946 (15 U.S.C. 1051 and following),

2 shall be referred to as the ‘‘Trademark Act of 1946’’.

3 SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.

4 (a) REMEDIES.—Section 43 of the Trademark Act of

5 1946 (15 U.S.C. 1125) is amended by adding at the end

6 the following new subsection:

7 ‘‘(c)(1) The registrant of a famous mark registered

8 under the Act of March 3, 1881, or the Act of February

9 20, 1905, or on the principal register shall be entitled,

10 subject to the principles of equity and upon such terms

11 as the court deems reasonable, to an injunction against

12 another person’s commercial use in commerce of a mark

13 or trade name, if such use begins after the registrant’s

14 mark becomes famous and causes dilution of the distinc15 tive quality of the registrant’s mark, and to obtain such

16 other relief as is provided in this subsection. In determin17 ing whether a mark is distinctive and famous, a court may

18 consider factors such as, but not limited to—

19 ‘‘(A) the degree of inherent or acquired distinc20 tiveness of the mark;

21 ‘‘(B) the duration and extent of use of the

22 mark in connection with the goods or services with

23 which the mark is used;

24 ‘‘(C) the duration and extent of advertising and

25 publicity of the mark;
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1 ‘‘(D) the geographical extent of the trading

2 area in which the mark is used;

3 ‘‘(E) the channels of trade for the goods or

4 services with which the mark is used;

5 ‘‘(F) the degree of recognition of the reg6 istrant’s mark in the trading areas and channels of

7 trade of the registrant and the person against whom

8 the injunction is sought; and

9 ‘‘(G) the nature and extent of use of the same

10 or similar marks by third parties.

11 ‘‘(2) In an action brought under this subsection, the

12 registrant shall be entitled only to injunctive relief unless

13 the person against whom the injunction is sought willfully

14 intended to trade on the registrant’s reputation or to

15 cause dilution of the registrant’s mark. If such willful in16 tent is proven, the registrant shall also be entitled to the

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

18 discretion of the court and the principles of equity.

19 ‘‘(3) The ownership by a person of a valid registra20 tion of a mark under the Act of March 3, 1881, or the

21 Act of February 20, 1905, or on the principal register

22 shall be a complete bar to an action against that person,

23 with respect to that mark, that is brought by another per24 son under the common law or a statute of a State and
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1 that seeks to prevent dilution of the distinctiveness of a

2 mark, label, or form of advertisement.

3 ‘‘(4) The following shall not be actionable under this

4 section:

5 ‘‘(A) Fair use of a registrant’s mark by another

6 person in comparative commercial advertising or

7 promotion to identify the registrant’s competing

8 goods or services.

9 ‘‘(B) Noncommercial use of a mark.’’.

10 (b) CONFORMING AMENDMENT.—The heading for

11 title VIII of the Trademark Act of 1946 is amended by

12 striking ‘‘AND FALSE DESCRIPTIONS’’ and inserting

13 ‘‘, FALSE DESCRIPTIONS, AND DILUTION’’.

14 SEC. 4. DEFINITION.

15 Section 45 of the Trademark Act of 1946 (15 U.S.C.

16 1127) is amended by inserting after the paragraph defin17 ing when a mark shall be deemed to be ‘‘abandoned’’ the

18 following:

19 ‘‘The term ‘dilution’ means the lessening of the ca20 pacity of a registrant’s mark to identify and distinguish

21 goods or services, regardless of the presence or absence

22 of—

23 ‘‘(1) competition between the registrant and

24 other parties, or
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1 ‘‘(2) likelihood of confusion, mistake, or decep2 tion.’’.

3 SEC. 5. EFFECTIVE DATE.

4 This Act and the amendments made by this Act shall

5 take effect on the date of the enactment of this Act.

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