IB 
Union Calendar No. 9
109TH CONGRESS 
1ST SESSION 
H. R. 683
[Report No. 109–23] 
To amend the Trademark Act of 1946 with respect to dilution by blurring 
or tarnishment. 
IN THE HOUSE OF REPRESENTATIVES 
FEBRUARY 9, 2005
Mr. SMITH of Texas introduced the following bill; which was referred to the 
Committee on the Judiciary 
MARCH 17, 2005
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 February 9, 2005] 
A BILL 
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,
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 enti-
tled ‘‘An Act to provide for the registration and protection 
of trademarks used in commerce, to carry out the provisions 
of certain international conventions, and for other pur-
poses’’, 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 distinctive-
ness, shall be entitled to an injunction against an-
other 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 dilution by 
blurring or dilution by tarnishment of the famous 
mark, regardless of the presence or absence of actual 
or likely confusion, of competition, or of actual eco-
nomic injury.
‘‘(2) DEFINITIONS.—(A) For purposes of para-
graph (1), a mark is famous if it is widely recognized 
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 whether a mark 
possesses the requisite degree of recognition, the court 
may consider all relevant factors, including the fol-
lowing: 
‘‘(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 like-
ly to cause dilution by blurring, the court may con-
sider 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 dis-
tinctiveness 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 another 
person in comparative commercial advertising or 
promotion to identify the competing goods or 
services of the owner of the famous mark.
‘‘(B) Fair use of a famous mark by another 
person, other than as a designation of source for 
the person’s goods or services, including for pur-
poses of identifying and parodying, criticizing, 
or commenting upon the famous 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 famous 
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 Dilu-
tion 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—
‘‘(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, sub-
ject to the discretion of the court and the principles 
of equity. 
‘‘(5) OWNERSHIP
OF
VALID
REGISTRATION
A 
COMPLETE BAR TO ACTION.—The ownership by a per-
son of a valid registration under the Act of March 3, 
1881, or the Act of February 20, 1905, or on the prin-
cipal 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 distinctiveness or rep-
utation of a mark, label, or form of advertisement.’’; 
and 
(2) in subsection (d)(1)(B)(i)(IX), by striking 
‘‘(c)(1) of section 43’’ and inserting ‘‘(c)’’.