I 

111TH CONGRESS 

1ST SESSION H. R. 3499 

To amend the Trademark Act of 1946 to allow civil actions against persons 

who use trademarks that are misleading as to the origin of goods in 

certain cases. 

IN THE HOUSE OF REPRESENTATIVES 

JULY 31, 2009 

Mr. MAFFEI introduced the following bill; which was referred to the 

Committee on the Judiciary 

A BILL 

To amend the Trademark Act of 1946 to allow civil actions 

against persons who use trademarks that are misleading 

as to the origin of goods in certain cases. 

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 Protection 

5 Act’’. 

6 SEC. 2. FINDINGS. 

7 The Congress finds the following: 

8 (1) Trademarks allow quick identification of a 

9 seller’s product, and can become an indicator of a 


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1 product’s quality. Thus, a trademarked good may 

2 command a premium in the marketplace because of 

3 its reputation. 

4 (2) Trademarks that describe some feature or 

5 quality of the goods or that are based on someone’s 

6 name or a geographic term are considered to be 

7 ‘‘weak’’, and thus are not protectable under trade8 mark law. However, once the trademark owner can 

9 demonstrate substantial sales, advertising, or other 

10 public awareness of a weak trademark, the trade11 mark will be considered distinctive and can be reg12 istered with the United States Patent and Trade13 mark Office (USPTO). 

14 (3) Syracuse China was an upstate New York 

15 manufacturer in the city of Syracuse. The company 

16 was founded in 1871 as the Onondaga Pottery Co. 

17 and was one of the last major china makers in the 

18 United States. On April 9, 2009, after more than 

19 130 years in business, Libbey Inc. (of Toledo, Ohio) 

20 halted production in Syracuse, eliminating 275 local 

21 jobs. Libbey plans to continue selling dinnerware 

22 under the name ‘‘Syracuse China’’ even after they 

23 stop production at the New York-based plant, but 

24 the company will manufacture the product in other 

25 countries and import them into the United States. 


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1 SEC. 3. AMENDMENTS TO TRADEMARK ACT. 

2 (a) FALSE DESIGNATIONS OF ORIGIN.—Section 

3 43(a)(1) of the Act entitled ‘‘An Act to provide for the 

4 registration and protection of trademarks used in com5 merce, to carry out the provisions of certain international 

6 conventions, and for other purposes’’, approved July 5, 

7 1946 (commonly referred to as the ‘‘Trademark Act of 

8 1946’’; 15 U.S.C. 1125(a)(1)), is amended— 

9 (1) in subparagraph (A), by striking ‘‘or’’ after 

10 the comma at the end; 

11 (2) by redesignating subparagraph (B) as sub12 paragraph (C); and 

13 (3) by inserting after subparagraph (A) the fol14 lowing: 

15 ‘‘(B) is misleadingly misdirective as to origin, 

16 or’’. 

17 (b) DEFINITIONS.—Section 45 of such Act (15 

18 U.S.C. 1127) is amended by inserting after the definition 

19 of ‘‘Internet’’ the following: 

20 ‘‘The term ‘misleadingly misdirective as to origin’ re21 fers to the use of a trademark, which has as an exclusive 

22 element the name of a State or municipality within a 

23 State, on or in connection with goods that are not or are 

24 no longer produced in whole or in part in such State or 

25 municipality or that do not contain a component produced 

26 in such State or municipality.’’. 


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1 SEC. 4. EFFECTIVE DATE. 

2 The amendments made by this Act apply to any civil 

3 action brought on or after the date of the enactment of 

4 this Act, with respect to any cause of action arising on 

5 or after that date. 

Æ 


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