I

106TH CONGRESS

1ST SESSION H. R. 1565

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

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 Amend5 ments Act of 1999’’.

6 SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND

7 CANCELATION.

8 (a) REGISTRABLE MARKS.—Section 2 of the Act en9 titled ‘‘An Act to provide for the registration and protec10 tion of trade-marks used in commerce, to carry out the
2

•HR 1565 IH

1 provisions of certain international conventions, and for

2 other purposes’’ (in this Act referred to as the ‘‘Trade3 mark Act of 1946’’) (15 U.S.C. 1052) is amended by add4 ing at the end the following flush sentences: ‘‘A mark

5 which when used would cause dilution under section 43(c)

6 may be refused registration only pursuant to a proceeding

7 brought under section 13. A registration for a mark which

8 when used would cause dilution under section 43(c) may

9 be canceled pursuant to a proceeding brought under either

10 section 14 or section 24.’’.

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

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

13 sentence by inserting ‘‘, including as a result of dilution

14 under section 43(c),’’ after ‘‘principal register’’.

15 (c) PETITIONS TO CANCEL REGISTRATIONS.—Sec16 tion 14 of the Trademark Act of 1946 (15 U.S.C. 1064)

17 is amended in the matter preceding paragraph (1) by in18 serting ‘‘, including as a result of dilution under section

19 43(c),’’ after ‘‘damaged’’.

20 (d) CANCELATION.—Section 24 of the Trademark

21 Act of 1946 (15 U.S.C. 1092) is amended in the second

22 sentence by inserting ‘‘, including as a result of dilution

23 under section 43(c),’’ after ‘‘register’’.
3

•HR 1565 IH

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

2 MARKS.

3 (a) INJUNCTIONS.—(1) Section 34(a) of the Trade4 mark Act of 1946 (15 U.S.C. 1116(a)) is amended in the

5 first sentence by striking ‘‘section 43(a)’’ and inserting

6 ‘‘subsection (a) or (c) of section 43’’.

7 (2) Section 43(c)(2) of the Trademark Act of 1946

8 (15 U.S.C. 1125(c)(2)) is amended in the first sentence

9 by inserting ‘‘as set forth in section 34’’ after ‘‘relief’’.

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

11 of 1946 (15 U.S.C. 1117(a)) is amended in the first sen12 tence by striking ‘‘or a violation under section 43(a),’’ and

13 inserting ‘‘a violation under section 43(a), or a willful vio14 lation under section 43(c),’’.

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

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

17 the first sentence—

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

19 43(a),’’ and inserting ‘‘a violation under section

20 43(a), or a willful violation under section 43(c),’’;

21 and

22 (2) by inserting after ‘‘in the case of a violation

23 of section 43(a)’’ the following: ‘‘or a willful viola24 tion under section 43(c)’’.
4

•HR 1565 IH

1 SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN2 FRINGEMENT AND DILUTION.

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

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

5 (1) by amending the last undesignated para6 graph in paragraph (1) to read as follows:

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

8 also includes the United States, all agencies and instru9 mentalities thereof, and all individuals, firms, corpora10 tions, or other persons acting for the United States and

11 with the authorization and consent of the United States,

12 and any State, any instrumentality of a State, and any

13 officer or employee of a State or instrumentality of a State

14 acting in his or her official capacity. The United States,

15 all agencies and instrumentalities thereof, and all individ16 uals, firms, corporations, other persons acting for the

17 United States and with the authorization and consent of

18 the United States, and any State, any instrumentality of

19 a State, and any officer or employee of a State or instru20 mentality of a State, shall be subject to the provisions of

21 this Act in the same manner and to the same extent as

22 any nongovernmental entity.’’.

23 (b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40

24 of the Trademark Act of 1946 (15 U.S.C. 1122) is

25 amended—
5

•HR 1565 IH

1 (1) by redesignating subsection (b) as sub2 section (c);

3 (2) by striking ‘‘SEC. 40. (a) Any State’’ and

4 inserting the following:

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

6 THE UNITED STATES.—The United States, all agencies

7 and instrumentalities thereof, and all individuals, firms,

8 corporations, other persons acting for the United States

9 and with the authorization and consent of the United

10 States, shall not be immune from suit in Federal or State

11 court by any person, including any governmental or non12 governmental entity, for any violation under this Act.

13 ‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY

14 STATES.—Any State’’; and

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

16 redesignated—

17 (A) by striking ‘‘subsection (a) for a viola18 tion described in that subsection’’ and inserting

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

20 therein’’; and

21 (B) by inserting after ‘‘other than’’ the fol22 lowing: ‘‘the United States or any agency or in23 strumentality thereof, or any individual, firm,

24 corporation, or other person acting for the
6

•HR 1565 IH

1 United States and with authorization and con2 sent of the United States, or’’.

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

4 of 1946 (15 U.S.C. 1127) is amended by inserting be5 tween the 2 paragraphs relating to the definition of ‘‘per6 son’’ the following:

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

8 any agency or instrumentality thereof, or any individual,

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

10 the authorization and consent of the United States. The

11 United States, any agency or instrumentality thereof, and

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

13 States and with the authorization and consent of the

14 United States, shall be subject to the provisions of this

15 Act in the same manner and to the same extent as any

16 nongovernmental entity.’’.

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

18 Section 43(a) of the Trademark Act of 1946 (15

19 U.S.C. 1125(a)) is amended by adding at the end the fol20 lowing:

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

22 under this Act for trade dress not registered on the prin23 cipal register, the person who asserts trade dress protec24 tion has the burden of proving that the matter sought to

25 be protected is not functional.’’.
7

•HR 1565 IH

1 SEC. 6. TECHNICAL AMENDMENTS.

2 (a) ASSIGNMENT OF MARKS.—Section 10 of the

3 Trademark Act of 1946 (15 U.S.C. 1060) is amended—

4 (1) by striking ‘‘subsequent purchase’’ in the

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

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

7 and inserting ‘‘mark.’’; and

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

9 period at the end.

10 (b) ADDITIONAL CLERICAL AMENDMENTS.—The text

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

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

13 ‘‘trademarks’’.

Æ