PUBLIC LAW 104–98—JAN. 16, 1996 109 STAT. 985

Public Law 104–98

104th Congress

An Act

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 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—

‘‘(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 mark in the trading

areas and channels of trade used by the marks’ owner and

the person against whom the injunction is sought;

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

marks by third parties; and

15 USC 1051

note.

Federal

Trademark

Dilution Act of

1995.

Jan. 16, 1996

[H.R. 1295]

109 STAT. 986 PUBLIC LAW 104–98—JAN. 16, 1996

‘‘(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.

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

of the famous mark shall be entitled only to injunctive relief 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.

‘‘(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.

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

‘‘(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) Noncommercial use of a mark.

‘‘(C) All forms of news reporting and news commentary.’’.

(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 famous mark to identify and distinguish goods or services, regardless of the presence or absence of—

‘‘(1) competition between the owner of the famous mark

and other parties, or

‘‘(2) likelihood of confusion, mistake, or deception.’’.

PUBLIC LAW 104–98—JAN. 16, 1996 109 STAT. 987

LEGISLATIVE HISTORY—H.R. 1295:

HOUSE REPORTS: No. 104–374 (Comm. on the Judiciary).

CONGRESSIONAL RECORD, Vol. 141 (1995):

Dec. 12, considered and passed House.

Dec. 29, considered and passed Senate.

Æ

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.

Approved January 16, 1996.

15 USC 1125

note.