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Union Calendar No. 144

106TH CONGRESS

1ST SESSION H. R. 1565

[Report No. 106–250]

To amend the Trademark Act of 1946 relating to dilution of famous marks,

and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

APRIL 27, 1999

Mr. COBLE introduced the following bill; which was referred to the Committee

on the Judiciary

JULY 22, 1999

Reported with an amendment, committed to the Committee of the Whole

House on the State of the Union, and ordered to be printed

[Strike out all after the enacting clause and insert the part printed in italic]

[For text of introduced bill, see copy of bill as introduced on April 27, 1999]

A BILL

To amend the Trademark Act of 1946 relating to dilution

of famous marks, and for other purposes.

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 ‘‘Trademark Amendments

5 Act of 1999’’.
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1 SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND

2 CANCELATION.

3 (a) REGISTRABLE MARKS.—Section 2 of the Act enti4 tled ‘‘An Act to provide for the registration and protection

5 of trade-marks used in commerce, to carry out the provi6 sions of certain international conventions, and for other

7 purposes’’ (in this Act referred to as the ‘‘Trademark Act

8 of 1946’’) (15 U.S.C. 1052) is amended by adding at the

9 end the following flush sentences: ‘‘A mark which when used

10 would cause dilution under section 43(c) may be refused

11 registration only pursuant to a proceeding brought under

12 section 13. A registration for a mark which when used

13 would cause dilution under section 43(c) may be canceled

14 pursuant to a proceeding brought under either section 14

15 or section 24.’’.

16 (b) OPPOSITION.—Section 13(a) of the Trademark Act

17 of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence

18 by inserting ‘‘, including as a result of dilution under sec19 tion 43(c),’’ after ‘‘principal register’’.

20 (c) PETITIONS TO CANCEL REGISTRATIONS.—Section

21 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is

22 amended in the matter preceding paragraph (1) by insert23 ing ‘‘, including as a result of dilution under section 43(c),’’

24 after ‘‘damaged’’.

25 (d) CANCELATION.—Section 24 of the Trademark Act

26 of 1946 (15 U.S.C. 1092) is amended in the second sentence
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1 by inserting ‘‘, including as a result of dilution under sec2 tion 43(c),’’ after ‘‘register’’.

3 SEC. 3. REMEDIES IN CASES OF DILUTION OF FAMOUS

4 MARKS.

5 (a) INJUNCTIONS.—(1) Section 34(a) of the Trademark

6 Act of 1946 (15 U.S.C. 1116(a)) is amended in the first

7 sentence by striking ‘‘section 43(a)’’ and inserting ‘‘sub8 section (a) or (c) of section 43’’.

9 (2) Section 43(c)(2) of the Trademark Act of 1946 (15

10 U.S.C. 1125(c)(2)) is amended in the first sentence by in11 serting ‘‘as set forth in section 34’’ after ‘‘relief’’.

12 (b) DAMAGES.—Section 35(a) of the Trademark Act

13 of 1946 (15 U.S.C. 1117(a)) is amended in the first sentence

14 by striking ‘‘or a violation under section 43(a),’’ and insert15 ing ‘‘a violation under section 43(a), or a willful violation

16 under section 43(c),’’.

17 (c) DESTRUCTION OF ARTICLES.—Section 36 of the

18 Trademark Act of 1946 (15 U.S.C. 1118) is amended in

19 the first sentence—

20 (1) by striking ‘‘or a violation under section

21 43(a),’’ and inserting ‘‘a violation under section

22 43(a), or a willful violation under section 43(c),’’;

23 and
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1 (2) by inserting after ‘‘in the case of a violation

2 of section 43(a)’’ the following: ‘‘or a willful violation

3 under section 43(c)’’.

4 SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN5 FRINGEMENT AND DILUTION.

6 (a) CIVIL ACTIONS.—Section 32 of the Trademark Act

7 of 1946 (15 U.S.C. 1114) is amended—

8 (1) by amending the last undesignated para9 graph in paragraph (1) to read as follows:

10 ‘‘As used in this subsection, the term ‘any person’ also

11 includes the United States, all agencies and instrumental12 ities thereof, and all individuals, firms, corporations, or

13 other persons acting for the United States and with the au14 thorization and consent of the United States, and any

15 State, any instrumentality of a State, and any officer or

16 employee of a State or instrumentality of a State acting

17 in his or her official capacity. The United States, all agen18 cies and instrumentalities thereof, and all individuals,

19 firms, corporations, other persons acting for the United

20 States and with the authorization and consent of the United

21 States, and any State, any instrumentality of a State, and

22 any officer or employee of a State or instrumentality of a

23 State, shall be subject to the provisions of this Act in the

24 same manner and to the same extent as any nongovern25 mental entity.’’.
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1 (b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40 of

2 the Trademark Act of 1946 (15 U.S.C. 1122) is amended—

3 (1) in subsection (b), by striking ‘‘(b) In a suit’’

4 and inserting ‘‘(c) AVAILIBILITY OF REMEDIES.—In

5 a suit’’;

6 (2) by striking ‘‘SEC. 40. (a) Any State’’ and in7 serting the following:

8 ‘‘SEC. 40. (a) WAIVER OF SOVEREIGN IMMUNITY BY

9 THE UNITED STATES.—The United States, all agencies and

10 instrumentalities thereof, and all individuals, firms, cor11 porations, other persons acting for the United States and

12 with the authorization and consent of the United States,

13 shall not be immune from suit in Federal or State court

14 by any person, including any governmental or nongovern15 mental entity, for any violation under this Act.

16 ‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY STATES.—

17 Any State’’; and

18 (3) in the first sentence of subsection (c), as so

19 redesignated—

20 (A) by striking ‘‘subsection (a) for a viola21 tion described in that subsection’’ and inserting

22 ‘‘subsection (a) or (b) for a violation described

23 therein’’; and

24 (B) by inserting after ‘‘other than’’ the fol25 lowing: ‘‘the United States or any agency or in-
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1 strumentality thereof, or any individual, firm,

2 corporation, or other person acting for the

3 United States and with authorization and con4 sent of the United States, or’’.

5 (c) DEFINITION.—Section 45 of the Trademark Act of

6 1946 (15 U.S.C. 1127) is amended by inserting between the

7 2 paragraphs relating to the definition of ‘‘person’’ the fol8 lowing:

9 ‘‘The term ‘person’ also includes the United States,

10 any agency or instrumentality thereof, or any individual,

11 firm, or corporation acting for the United States and with

12 the authorization and consent of the United States. The

13 United States, any agency or instrumentality thereof, and

14 any individual, firm, or corporation acting for the United

15 States and with the authorization and consent of the United

16 States, shall be subject to the provisions of this Act in the

17 same manner and to the same extent as any nongovern18 mental entity.’’.

19 SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.

20 Section 43(a) of the Trademark Act of 1946 (15 U.S.C.

21 1125(a)) is amended by adding at the end the following:

22 ‘‘(3) In a civil action for trade dress infringement

23 under this Act for trade dress not registered on the prin24 cipal register, the person who asserts trade dress protection
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1 has the burden of proving that the matter sought to be pro2 tected is not functional.’’.

3 SEC. 6. TECHNICAL AMENDMENTS.

4 (a) ASSIGNMENT OF MARKS.—Section 10 of the Trade5 mark Act of 1946 (15 U.S.C. 1060) is amended—

6 (1) by striking ‘‘subsequent purchaser’’ in the

7 second to last sentence and inserting ‘‘assignment’’;

8 (2) in the first sentence by striking ‘‘mark,’’ and

9 inserting ‘‘mark’’; and

10 (3) in the third sentence by striking the second

11 period at the end.

12 (b) ADDITIONAL CLERICAL AMENDMENTS.—The text

13 and title of the Trademark Act of 1946 are amended by

14 striking ‘‘trade-marks’’ each place it appears and inserting

15 ‘‘trademarks’’.

16 SEC. 7. RIGHTS OF PERFORMERS OF MUSICAL GROUPS.

17 (a) IN GENERAL.—Part A of subtitle II title 36,

18 United States Code, is amended by inserting after chapter

19 2401 the following new chapter:

20 ‘‘CHAPTER 2501—ASSOCIATION TO PRE21 SERVE AUTHENTICITY OF MUSICAL

22 GROUPS

‘‘Sec.

‘‘250101. Association established.

‘‘250102. Objects and purposes.

‘‘250103. Powers.

‘‘250104. Standards for use of certification mark.

‘‘250105. Rights of performers.
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1 ‘‘§ 250101. Association established

2 ‘‘There shall be established a body corporate which

3 shall be known as the ‘Association to Preserve the Authen4 ticity of Musical Groups’. The Association shall have per5 petual succession and the powers and limitations contained

6 in this chapter. The Association shall appoint its chair7 person.

8 ‘‘§ 250102. Objects and purposes

9 ‘‘The objects and purposes of the Association shall be—

10 ‘‘(1) to benefit entertainers and performers who

11 have performed with original entertainment groups;

12 ‘‘(2) to promote, develop, and assist in pre13 serving and protecting the rights of entertainers and

14 performers; and

15 ‘‘(3) to educate the public concerning the history

16 of performing groups and the names of the actual per17 formers in those groups.

18 To aid in its purposes, the Association shall promote and

19 use the certification mark it establishes under this chapter

20 and allow performers to use the certification mark of the

21 Association in accordance with the chapter.

22 ‘‘§ 250103. Powers

23 ‘‘(a) IN GENERAL.—The Association may—

24 ‘‘(1) sue and be sued, collect dues, claim and de25 fend in any court its rights and its members rights

26 in its certification mark;
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1 ‘‘(2) make and adopt a constitution, bylaws,

2 rules, and regulations for the use of its certification

3 mark;

4 ‘‘(3) from time to time repeal or amend its con5 stitution, bylaws, rules, and regulations not incon6 sistent with the laws of the United States or any of

7 the States thereof; and

8 ‘‘(4) provide for the safe-keeping and manage9 ment of its property and funds.

10 ‘‘(b) CERTIFICATION MARK.—The Association shall es11 tablish and have the sole and exclusive rights to its certifi12 cation mark for use in carrying out its purposes. No powers

13 or privileges granted by this chapter shall interfere or con14 flict with established or vested rights.

15 ‘‘§ 250104. Standards for use of certification mark

16 ‘‘The Association shall establish the standards for those

17 entertainers who may use its certification mark. Such

18 standards shall include, but are not limited to, the following

19 criteria:

20 ‘‘(1) At least one performer in any group dis21 playing or using in its advertising the certification

22 mark must have been a member of the original group

23 that performed under the same or similar name.
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1 ‘‘(2) Any advertising for such group shall not be

2 false or misleading with respect to the membership or

3 history of the group.

4 Any additional standards must be consistent with para5 graphs (1) and (2).

6 ‘‘§ 250105. Rights of Performers

7 ‘‘It shall not be a violation of the Trademark Act of

8 1946 or the statutes or common law of any State for an

9 individual who has been a member of a performing group

10 to be able to use the certification mark of the Association

11 and represent that such individual had been a member of

12 such a group in any promotions, advertisements, or per13 forming of the same services as those performed by such

14 group, if such representation meets the standards in section

15 250104 and does not deceive or confuse as to the nature,

16 characteristics, qualities, or sponsorship of such services.’’.

17 (b) CONFORMING AMENDMENT.—The item relating to

18 chapter 2501 in the table of chapters for subtitle II of title

19 36, United States Code, is amended to read as follows:

‘‘2501. ASSOCIATION TO PROVIDE AUTHENTICITY OF MUSICAL GROUPS ....................................................................................... 250101’’.

Union Calendar No. 144

106TH CONGRESS

1ST SESSION H. R. 1565

[Report No. 106–250]

A BILL

dilution of famous marks, and for other purposes.

To amend the Trademark Act of 1946 relating to

JULY 22, 1999

Reported with an amendment, committed to the Comand ordered to be printed mittee of the Whole House on the State of the Union,