19–006 

112TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 2d Session 112–647 

TO AMEND THE TRADEMARK ACT OF 1946 TO CORRECT 

AN ERROR IN THE PROVISIONS RELATING TO REMEDIES FOR DILUTION 

SEPTEMBER 10, 2012.—Committed to the Committee of the Whole House on the 

State of the Union and ordered to be printed 

Mr. SMITH of Texas, from the Committee on the Judiciary, 

submitted the following 

R E P O R T 

[To accompany H.R. 6215] 

[Including cost estimate of the Congressional Budget Office] 

The Committee on the Judiciary, to whom was referred the bill 

(H.R. 6215) to amend the Trademark Act of 1946 to correct an 

error in the provisions relating to remedies for dilution, having considered the same, report favorably thereon without amendment and 

recommend that the bill do pass. 

CONTENTS 

Page 

Purpose and Summary ............................................................................................ 1 

Background and Need for the Legislation ............................................................. 2 

Hearings ................................................................................................................... 3 

Committee Consideration ........................................................................................ 3 

Committee Votes ...................................................................................................... 3 

Committee Oversight Findings ............................................................................... 4 

New Budget Authority and Tax Expenditures ...................................................... 4 

Congressional Budget Office Cost Estimate .......................................................... 4 

Performance Goals and Objectives ......................................................................... 5 

Advisory on Earmarks ............................................................................................. 5 

Section-by-Section Analysis .................................................................................... 5 

Changes in Existing Law Made by the Bill, as Reported ..................................... 6 


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1Pub. L. 109–312. 

2Pub. L. 104–98. 

3 537 U.S. 418 (2003). 

Purpose and Summary 

The purpose of H.R. 6215 is to correct a drafting error in the 

Trademark Dilution Revision Act of 2006 1 to ensure that Federal 

registration of a trademark does not constitute a defense to a claim 

of federal dilution asserted against that trademark. This clarification will prevent the proliferation of bogus diluting trademarks 

that otherwise cost legitimate trademark owners time and money 

spent monitoring registrations and other marks used in commerce. 

Background and Need for the Legislation 

THE FEDERAL TRADEMARK DILUTION ACT (‘‘FTDA’’): 2

ABRIDGED HISTORY, 1995–2005

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) likelihood of confusion, mistake, or deception.’’ Courts have defined dilution as either the blurring of a mark’s product identification or the 

tarnishing of the affirmative associations a mark has come to convey. 

Dilution does not rely upon the standard test of infringement; 

that is, likelihood of confusion, deception, or mistake. Rather, it applies when the unauthorized use of a famous mark reduces the 

public’s perception that the mark signifies something unique, singular, or particular. 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. 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. It specifies a 

number of factors that a court may consider, but is not limited to, 

in determining whether a mark is distinctive and famous. 

MOSELY V. V SECRET CATALOGUE, INC.,3 AND THE

TRADEMARK DILUTION REVISION ACT OF 2006

Following passage of the FTDA, the circuit courts of appeals 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. 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 


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4See Timothy A. Lemper & Joshua R. Bruce, The Dilution Defense Congress Never Meant to 

Create (And Needs to Fix), 101 Trademark Rep. 1580 (2011); and Lemper & Bruce, Beware of 

the Scrivener’s Error: Curing the Drafting Error in the Federal Registration Defense to Trademark Dilution Claims, 19 Tex. Intell. Prop. L.J. 169 (2011). 

Court determined that the FTDA ‘‘. . . unambiguously requires a 

showing of actual dilution, rather than a likelihood of dilution.’’ 

The Mosely decision upset the American trademark community, 

whose members argued that requiring a mark holder to demonstrate actual damage in a dilution case would only guarantee 

that the value of a mark would be compromised and lost. In response, the 109th Congress enacted H.R. 683, the Trademark Dilution Revision Act of 2006 (‘‘Revision Act’’). The amendments to the 

FTDA clarify, in addition to other refinements, that a mark holder 

need not prove actual dilution. 

TECHNICAL ERROR IDENTIFIED

In 2011, two law professors identified a technical problem with 

the FTDA as amended.4 During Senate consideration of H.R. 683, 

a section providing a Federal registration defense to a dilution action was reorganized, producing an unexpected and unintended 

change to the law. 

As originally drafted in the House of Representatives, the provision was designed to encourage Federal registration of trademarks, 

a worthy policy goal that prevents state laws from interfering with 

federally-protected marks and ensures that registered marks are 

protected nationwide. The House draft promoted this goal by barring a state action for dilution against a federally-registered mark. 

However, and without explanation, the Senate reformatted the 

House text in such a way as to create a bar against state action 

for dilution as well as a state or Federal action based on a claim 

of actual or likely damage or harm to the distinctiveness or reputation of a mark. This means the federal-registration defense is available not only to state dilution claims, but Federal dilution claims 

as well. 

Congress could not have intended such an outcome. If all dilution 

claims, including Federal claims, are barred by registration, it becomes difficult to cancel a diluting mark that is registered. This 

only encourages illegitimate mark holders to register diluting 

marks, which forces legitimate mark holders to expend greater resources monitoring registrations as well as other marks being used 

in commerce. 

Hearings 

The Committee on the Judiciary held no hearings on H.R. 6215. 

Committee Consideration 

On August 1, 2012, the Committee met in open session and ordered the bill H.R. 6215 favorably reported without amendment, by 

voice vote, a quorum being present. 

Committee Votes 

In compliance with clause 3(b) of rule XIII of the Rules of the 

House of Representatives, the Committee advises that there were 


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no recorded votes during the Committee’s consideration of H.R. 

6215. 

Committee Oversight Findings 

In compliance with clause 3(c)(1) of rule XIII of the Rules of the 

House of Representatives, the Committee advises 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. 6215, the following estimate and comparison prepared 

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, August 23, 2012. 

Hon. LAMAR SMITH, 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. 6215, a bill to amend the 

Trademark Act of 1946 to correct an error in the provisions relating to remedies for dilution. 

If you wish further details on this estimate, we will be pleased 

to provide them. The CBO staff contact is Susan Willie, who can 

be reached at 226–2860. 

Sincerely, 

DOUGLAS W. ELMENDORF, 

DIRECTOR. 

Enclosure 

cc: Honorable John Conyers, Jr. 

Ranking Member 

H.R. 6215—A bill to amend the Trademark Act of 1946 to 

correct an error in the provisions relating to remedies for 

dilution. 

As ordered reported by the House Committee on the Judiciary 

on August 1, 2012. 

CBO estimates that implementing H.R. 6215 would have no significant cost to the Federal Government. Further, enacting H.R. 


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5 15 USC 1125(c)(6). 

6215 would not affect direct spending or revenues; therefore, payas-you-go procedures do not apply. 

H.R. 6215 would amend provisions of trademark law that relate 

to a trademark owner’s ability to be sued for diluting another 

trademark. Under current law, the owner of a famous trademark 

can bring a suit against another trademark owner alleging dilution 

when the other trademark impairs the distinctiveness or harms the 

reputation of the famous trademark. For example, the owner of a 

trademark for a famous handbag could sue another company that 

begins using the trademark to refer to laundry detergent. However, 

certain dilution claims are disallowed in both Federal and State 

courts if the person being sued holds a registered trademark. H.R. 

6215 would continue the prohibition of those claims in State courts, 

but allow the claims to go forward in Federal court. Based on information from the Patent and Trademark Office, CBO estimates that 

implementing H.R. 6215 would have no significant cost to the Federal Government because of the small number of cases likely to be 

affected. 

H.R. 6215 contains no intergovernmental or private-sector mandates as defined in the Unfunded Mandates Reform Act and would 

not affect the budgets of State, local, or tribal governments. 

The CBO staff contacts for this estimate are Susan Willie (for 

Federal costs) and Paige Piper/Bach (for the private-sector impact). 

The estimate was approved by Peter H. Fontaine, Assistant Director for Budget Analysis. 

Performance Goals and Objectives 

The Committee states that pursuant to clause 3(c)(4) of rule XIII 

of the Rules of the House of Representatives, H.R. 6215 clarifies 

that Federal registration of a trademark does not constitute a defense that bars a claim of Federal dilution against that trademark. 

Advisory on Earmarks 

In accordance with clause 9 of rule XXI of the Rules of the House 

of Representatives, H.R. 6215 does not contain any congressional 

earmarks, limited tax benefits, or limited tariff benefits as defined 

in clause 9(e), 9(f), or 9(g) of Rule XXI. 

Section-by-Section Analysis 

The following discussion describes the bill as reported by the 

Committee. 

Sec. 1. Remedies for dilution. Subsection (a) cures the scrivener’s 

error regarding Federal registration of a mark as a defense to a 

claim of Federal dilution. It reformats Section 43(c)(6) of the 

Lanham Act 5 to clarify that Federal registration only constitutes 

a complete bar to a state claim based on dilution, or actual or likely 

damage or harm to the distinctiveness or reputation of a mark. 

Subsection (b) applies the fix to any action commenced on or 

after the date of enactment of the Act. 


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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 italic, 

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 

Be it enacted by the Senate and House of Representatives of the 

United States of America in Congress assembled, 

* * * * * * * 

TITLE VIII—FALSE DESIGNATIONS OF ORIGIN, FALSE 

DESCRIPTIONS, AND DILUTION FORBIDDEN 

SEC. 43. (a) * * * 

* * * * * * * 

(c) DILUTION BY BLURRING; DILUTION BY TARNISHMENT.— 

(1) * * * 

* * * * * * * 

(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— 

ø(A)(i) is brought by another person under the common law or a statute of a State; and 

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

by tarnishment; or 

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

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

or form of advertisement.¿ 

(A) is brought by another person under the common 

law or a statute of a State; and 

(B)(i) seeks to prevent dilution by blurring or dilution 

by tarnishment; or 

(ii) asserts any claim of actual or likely damage or 

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

or form of advertisement. 

* * * * * * * 

Æ 


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