II 
Calendar No. 366 
109TH CONGRESS 
2D 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 
FEBRUARY 27, 2006 
Reported by Mr. SPECTER, with an amendment 
[Strike out all after the enacting clause and insert the part printed in italic] 
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, 
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-
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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 
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 
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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 
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. 
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‘‘(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-
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-
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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— 
‘‘(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 
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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 
(2) in subsection (d)(1)(B)(i)(IX), by striking 
‘‘(c)(1) of section 43’’ and inserting ‘‘(c)’’. 
SEC. 3. CONFORMING AMENDMENTS. 
(a) MARKS REGISTRABLE ON THE PRINCIPAL REG-
ISTER.—Section 2(f) of the Trademark Act of 1946 (15 
U.S.C. 1052(f)) is amended— 
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(1) by striking the last two sentences; and 
(2) by adding at the end the following: ‘‘A mark 
which would be likely to cause dilution by blurring 
or dilution by tarnishment under section 43(c), may 
be refused registration only pursuant to a pro-
ceeding brought under section 13. A registration for 
a mark which would be likely to cause dilution by 
blurring or dilution by tarnishment under section 
43(c), may be canceled pursuant to a proceeding 
brought under either section 14 or section 24.’’. 
(b) OPPOSITION.—Section 13(a) of the Trademark 
Act of 1946 (15 U.S.C. 1063(a)) is amended in the first 
sentence by striking ‘‘as a result of dilution’’ and inserting 
‘‘the registration of any mark which would be likely to 
cause dilution by blurring or dilution by tarnishment’’. 
(c) CANCELLATION.—Section 14 of the Trademark 
Act of 1946 (15 U.S.C. 1064) is amended, in the matter 
preceding paragraph (1)— 
(1) by striking ‘‘, including as a result of dilu-
tion under section 43(c),’’; and 
(2) by inserting ‘‘(A) for which the constructive 
use date is after the date on which the petitioner’s 
mark became famous and which would be likely to 
cause dilution by blurring or dilution by tarnishment 
under section 43(c), or (B) on grounds other than 
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dilution by blurring or dilution by tarnishment’’ 
after ‘‘February 20, 1905’’. 
(d) MARKS FOR THE SUPPLEMENTAL REGISTER.— 
The second sentence of section 24 of the Trademark Act 
of 1946 (15 U.S.C. 1092) is amended to read as follows: 
‘‘Whenever any person believes that such person is or will 
be damaged by the registration of a mark on the supple-
mental register— 
‘‘(1) for which the effective filing date is after 
the date on which such person’s mark became fa-
mous and which would be likely to cause dilution by 
blurring or dilution by tarnishment under section 
43(c), or 
‘‘(2) on grounds other than dilution by blurring 
or dilution by tarnishment, 
such person may at any time, upon payment of the pre-
scribed fee and the filing of a petition stating the ground 
therefor, apply to the Director to cancel such registra-
tion.’’. 
(e) DEFINITIONS.—Section 45 of the Trademark Act 
of 1946 (15 U.S.C. 1127) is amended by striking the defi-
nition relating to ‘‘dilution’’. 
SECTION 1. SHORT TITLE. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Trademark Dilution Revision Act of 2006’’. 
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(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. 
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‘‘(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. 
‘‘(iv) Whether the mark was registered 
under the Act of March 3, 1881, or the Act of 
February 20, 1905, or on the principal register. 
‘‘(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-
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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) Any fair use, including a nominative 
or descriptive fair use, or facilitation of such fair 
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use, of a famous mark by another person other 
than as a designation of source for the person’s 
own goods or services, including use in connec-
tion with— 
‘‘(i) advertising or promotion that per-
mits consumers to compare goods or serv-
ices; or 
‘‘(ii) identifying and parodying, criti-
cizing, or commenting upon the famous 
mark owner or the goods or services of the 
famous mark owner. 
‘‘(B) All forms of news reporting and news 
commentary. 
‘‘(C) Any noncommercial use of a mark. 
‘‘(4) BURDEN OF PROOF.—In a civil action for 
trade dress dilution under this Act for trade dress not 
registered on the principal register, the person who 
asserts trade dress protection has the burden of prov-
ing that— 
‘‘(A) the claimed trade dress, taken as a 
whole, is not functional and is famous; and 
‘‘(B) if the claimed trade dress includes any 
mark or marks registered on the principal reg-
ister, the unregistered matter, taken as a whole, 
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is famous separate and apart from any fame of 
such registered marks. 
‘‘(5) ADDITIONAL
REMEDIES.—In an action 
brought under this subsection, the owner of the famous 
mark shall be entitled to injunctive relief as set forth 
in section 34. 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 if— 
‘‘(A) the mark or trade name that is likely 
to cause dilution by blurring or dilution by 
tarnishment was first used in commerce by the 
person against whom the injunction is sought 
after the date of enactment of the Trademark Di-
lution Revision Act of 2006; 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. 
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