H. R. 1295
One Hundred Fourth Congress
of the
United States of America
AT THE FIRST SESSION
Begun and held at the City of Washington on Wednesday,
the fourth day of January, one thousand nine hundred and ninety-five
An Act
To amend the Trademark Act of 1946 to make certain revisions relating to the
protection of famous marks.
Be it enacted by the Senate and House of Representatives of
the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Federal Trademark Dilution
Act of 1995’’.
SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.
For purposes of this Act, the Act entitled ‘‘An Act to provide
for the registration and protection of trade-marks used in commerce,
to carry out the provisions of certain international conventions,
and for other purposes’’, approved July 5, 1946 (15 U.S.C. 1051
and following), shall be referred to as the ‘‘Trademark Act of 1946’’.
SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.
(a) REMEDIES.—Section 43 of the Trademark Act of 1946 (15
U.S.C. 1125) is amended by adding at the end the following new
subsection:
‘‘(c)(1) The owner of a famous mark shall be entitled, subject
to the principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person’s commercial
use in commerce of a mark or trade name, if such use begins
after the mark has become famous and causes dilution of the
distinctive quality of the mark, and to obtain such other relief
as is provided in this subsection. In determining whether a mark
is distinctive and famous, a court may consider factors such as,
but not limited to—
‘‘(A) the degree of inherent or acquired distinctiveness of
the mark;
‘‘(B) the duration and extent of use of the mark in connec-
tion with the goods or services with which the mark is used;
‘‘(C) the duration and extent of advertising and publicity
of the mark;
‘‘(D) the geographical extent of the trading area in which
the mark is used;
‘‘(E) the channels of trade for the goods or services with
which the mark is used;
‘‘(F) the degree of recognition of the mark in the trading
areas and channels of trade used by the marks’ owner and
the person against whom the injunction is sought;
‘‘(G) the nature and extent of use of the same or similar
marks by third parties; and
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‘‘(H) whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
‘‘(2) In an action brought under this subsection, the owner
of the famous mark shall be entitled only to injunctive relief unless
the person against whom the injunction is sought willfully intended
to trade on the owner’s reputation or to cause dilution of the
famous mark. If such willful intent is proven, 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 principles of equity.
‘‘(3) 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 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 of the distinctiveness of a mark,
label, or form of advertisement.
‘‘(4) The following shall not be actionable under this section:
‘‘(A) Fair use of a famous mark by another person in
comparative commercial advertising or promotion to identify
the competing goods or services of the owner of the famous
mark.
‘‘(B) Noncommercial use of a mark.
‘‘(C) All forms of news reporting and news commentary.’’.
(b) CONFORMING AMENDMENT.—The heading for title VIII of
the Trademark Act of 1946 is amended by striking ‘‘AND FALSE
DESCRIPTIONS’’ and inserting ‘‘, FALSE DESCRIPTIONS, AND
DILUTION’’.
SEC. 4. DEFINITION.
Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127)
is amended by inserting after the paragraph defining when a mark
shall be deemed to be ‘‘abandoned’’ the following:
‘‘The term ‘dilution’ means the lessening of the capacity of
a famous mark to identify and distinguish goods or services, regard-
less of the presence or absence of—
‘‘(1) competition between the owner of the famous mark
and other parties, or
‘‘(2) likelihood of confusion, mistake, or deception.’’.
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SEC. 5. EFFECTIVE DATE.
This Act and the amendments made by this Act shall take
effect on the date of the enactment of this Act.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.