IIB 
109TH CONGRESS 
1ST SESSION 
H. R. 683 
IN THE SENATE OF THE UNITED STATES 
APRIL 20, 2005 
Received; read twice and referred to the Committee on the Judiciary 
AN ACT 
To amend the Trademark Act of 1946 with respect to 
dilution by blurring or tarnishment. 
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
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SECTION 1. SHORT TITLE. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Trademark Dilution Revision Act of 2005’’. 
(b) REFERENCES.—Any reference in this Act to the 
Trademark Act of 1946 shall be a reference to the Act 
entitled ‘‘An Act to provide for the registration and protec-
tion of trademarks used in commerce, to carry out the pro-
visions of certain international conventions, and for other 
purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et 
seq.). 
SEC. 
2. 
DILUTION 
BY 
BLURRING; 
DILUTION 
BY 
TARNISHMENT. 
Section 43 of the Trademark Act of 1946 (15 U.S.C. 
1125) is amended— 
(1) by striking subsection (c) and inserting the 
following: 
‘‘(c) DILUTION
BY
BLURRING; DILUTION
BY 
TARNISHMENT.— 
‘‘(1) INJUNCTIVE RELIEF.—Subject to the prin-
ciples of equity, the owner of a famous mark that is 
distinctive, inherently or through acquired distinc-
tiveness, shall be entitled to an injunction against 
another person who, at any time after the owner’s 
mark has become famous, commences use of a mark 
or trade name in commerce that is likely to cause di-
lution by blurring or dilution by tarnishment of the
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famous mark, regardless of the presence or absence 
of actual or likely confusion, of competition, or of ac-
tual economic injury. 
‘‘(2) DEFINITIONS.—(A) For purposes of para-
graph (1), a mark is famous if it is widely recog-
nized by the general consuming public of the United 
States as a designation of source of the goods or 
services of the mark’s owner. In determining wheth-
er a mark possesses the requisite degree of recogni-
tion, the court may consider all relevant factors, in-
cluding the following: 
‘‘(i) The duration, extent, and geographic 
reach of advertising and publicity of the mark, 
whether advertised or publicized by the owner 
or third parties. 
‘‘(ii) The amount, volume, and geographic 
extent of sales of goods or services offered 
under the mark. 
‘‘(iii) The extent of actual recognition of 
the mark. 
‘‘(B) For purposes of paragraph (1), ‘dilution 
by blurring’ is association arising from the similarity 
between a mark or trade name and a famous mark 
that impairs the distinctiveness of the famous mark. 
In determining whether a mark or trade name is
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likely to cause dilution by blurring, the court may 
consider all relevant factors, including the following: 
‘‘(i) The degree of similarity between the 
mark or trade name and the famous mark. 
‘‘(ii) The degree of inherent or acquired 
distinctiveness of the famous mark. 
‘‘(iii) The extent to which the owner of the 
famous mark is engaging in substantially exclu-
sive use of the mark. 
‘‘(iv) The degree of recognition of the fa-
mous mark. 
‘‘(v) Whether the user of the mark or 
trade name intended to create an association 
with the famous mark. 
‘‘(vi) Any actual association between the 
mark or trade name and the famous mark. 
‘‘(C) For purposes of paragraph (1), ‘dilution 
by tarnishment’ is association arising from the simi-
larity between a mark or trade name and a famous 
mark that harms the reputation of the famous mark. 
‘‘(3) EXCLUSIONS.—The following shall not be 
actionable as dilution by blurring or dilution by 
tarnishment under this subsection: 
‘‘(A) Fair use of a famous mark by an-
other person in comparative commercial adver-
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tising or promotion to identify the competing 
goods or services of the owner of the famous 
mark. 
‘‘(B) Fair use of a famous mark by an-
other person, other than as a designation of 
source for the person’s goods or services, in-
cluding for purposes of identifying and paro-
dying, criticizing, or commenting upon the fa-
mous mark owner or the goods or services of 
the famous mark owner. 
‘‘(C) All forms of news reporting and news 
commentary. 
‘‘(4) ADDITIONAL
REMEDIES.—In an action 
brought under this subsection, the owner of the fa-
mous mark shall be entitled only to injunctive relief 
as set forth in section 34, except that, if— 
‘‘(A) the person against whom the injunc-
tion is sought did not use in commerce, prior to 
the date of the enactment of the Trademark Di-
lution Revision Act of 2005, the mark or trade 
name that is likely to cause dilution by blurring 
or dilution by tarnishment, and 
‘‘(B) in a claim arising under this sub-
section—
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‘‘(i) by reason of dilution by blurring, 
the person against whom the injunction is 
sought willfully intended to trade on the 
recognition of the famous mark, or 
‘‘(ii) 
by 
reason 
of 
dilution 
by 
tarnishment, the person against whom the 
injunction is sought willfully intended to 
harm the reputation of the famous mark, 
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 prin-
ciples of equity. 
‘‘(5) OWNERSHIP OF VALID REGISTRATION A 
COMPLETE BAR TO ACTION.—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 under this Act 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 by blurring 
or dilution by tarnishment, or that asserts any claim 
of actual or likely damage or harm to the distinctive-
ness or reputation of a mark, label, or form of ad-
vertisement.’’; and