II

104TH CONGRESS

1ST SESSION S. 1513

To amend the Trademark Act of 1946 to make certain revisions relating

to the protection of famous marks.

IN THE SENATE OF THE UNITED STATES

DECEMBER 29, 1995

Mr. HATCH introduced the following bill; which was read twice and 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’’,
2

•S 1513 IS

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 owner of a famous mark shall be entitled,

8 subject to the principles of equity and upon such terms

9 as the court deems reasonable, to an injunction against

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

11 or trade name, if such use begins after the mark becomes

12 famous and causes dilution of the distinctive quality of

13 the famous mark, and to obtain such other relief as is

14 provided in this subsection. In determining whether a

15 mark is distinctive and famous, a court may consider fac16 tors such as, but not limited to—

17 ‘‘(A) the degree of inherent or acquired distinc18 tiveness of the mark;

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

20 mark in connection with the goods or services with

21 which the mark is used;

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

23 publicity of the mark;

24 ‘‘(D) the geographical extent of the trading

25 area in which the mark is used;
3

•S 1513 IS

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

2 services with which the mark is used;

3 ‘‘(F) the degree of recognition of the mark in

4 the trading areas and channels of trade of the

5 mark’s owner and the person against whom the in6 junction is sought;

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

8 or similar marks by third parties; and

9 ‘‘(H) the existence of a registration under the

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

11 1905, or on the principal register.

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

13 owner of a famous mark shall be entitled only to injunctive

14 relief unless the person against whom the injunction is

15 sought willfully intended to trade on the owner’s reputa16 tion or to cause dilution of the famous mark. If such will17 ful intent is proven, the owner of a famous mark shall

18 also be entitled to the remedies set forth in sections 35(a)

19 and 36, subject to the discretion of the court and the prin20 ciples of equity.

21 ‘‘(3) The ownership by a person of a valid registra22 tion under the Act of March 3, 1881, or the Act of Feb23 ruary 20, 1905, or on the principal register shall be a com24 plete bar to an action against that person, with respect

25 to that mark, that is brought by another person under
4

•S 1513 IS

1 the common law or statute of a State and that seeks to

2 prevent dilution of the distinctiveness of a mark, label, or

3 form of advertisement.

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

5 section:

6 ‘‘(A) Fair use of a famous mark by another

7 person in comparative commercial advertising or

8 promotion to identify the competing goods or serv9 ices of the owner of the famous mark.

10 ‘‘(B) Noncommercial use of a mark.

11 ‘‘(C) All forms of news reporting and news

12 commentary.’’.

13 (b) CONFORMING AMENDMENT.—The heading for

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

15 striking ‘‘AND FALSE DESCRIPTIONS’’ and inserting

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

17 SEC. 4. DEFINITION.

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

19 1127) is amended by inserting after the paragraph defin20 ing when a mark shall be deemed to be ‘‘abandoned’’ the

21 following:

22 ‘‘The term ‘dilution’ means the lessening of the ca23 pacity of a famous mark to identify and distinguish goods

24 or services, regardless of the presence or absence of—
5

•S 1513 IS

1 ‘‘(1) competition between the owner of the fa2 mous mark and other parties, or

3 ‘‘(2) likelihood of confusion, mistake, or decep4 tion.’’.

5 SEC. 5. EFFECTIVE DATE.

6 This Act and the amendments made by this Act shall

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

Æ