Union Calendar No. 188
104TH CONGRESS
1ST SESSION
H. R. 1295
[Report No. 104–374]
A BILL
To amend the Trademark Act of 1946 to make cer-
tain revisions relating to the protection of famous
marks.
NOVEMBER 30, 1995
Reported with an amendment, committed to the Commit-
tee of the Whole House on the State of the Union, and
ordered to be printed
IB
Union Calendar No. 188
104TH CONGRESS
1ST SESSION
H. R. 1295
[Report No. 104–374]
To amend the Trademark Act of 1946 to make certain revisions relating
to the protection of famous marks.
IN THE HOUSE OF REPRESENTATIVES
MARCH 22, 1995
Mr. MOORHEAD (for himself, Mr. SENSENBRENNER, Mr. COBLE, Mr. CANADY
of Florida, Mr. GOODLATTE, Mr. BONO, and Mr. BOUCHER) introduced
the following bill; which was referred to the Committee on the Judiciary
NOVEMBER 30, 1995
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 March 22, 1995]
A BILL
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 Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Federal Trademark Di-
lution 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’’, ap-
proved 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 an-
other 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 distinc-
tiveness of the mark;
‘‘(B) the duration and extent of use of the mark
in connection 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 serv-
ices 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 in-
junction is sought;
‘‘(G) the nature and extent of use of the same or
similar marks by third parties; and
‘‘(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 injunc-
tive relief unless the person against whom the injunction
is sought willfully intended to trade on the owner’s reputa-
tion 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 advertise-
ment.
‘‘(4) The following shall not be actionable under this
section:
‘‘(A) Fair use of a famous mark by another per-
son in comparative commercial advertising or pro-
motion 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 com-
mentary.’’.
(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’’.