IB
Union Calendar No. 144
106TH CONGRESS
1ST SESSION
H. R. 1565
[Report No. 106–250]
To amend the Trademark Act of 1946 relating to dilution of famous marks,
and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
APRIL 27, 1999
Mr. COBLE introduced the following bill; which was referred to the Committee
on the Judiciary
JULY 22, 1999
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 April 27, 1999]
A BILL
To amend the Trademark Act of 1946 relating to dilution
of famous marks, and for other purposes.
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 ‘‘Trademark Amendments
Act of 1999’’.
SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND
CANCELATION.
(a) REGISTRABLE MARKS.—Section 2 of the Act enti-
tled ‘‘An Act to provide for the registration and protection
of trade-marks used in commerce, to carry out the provi-
sions of certain international conventions, and for other
purposes’’ (in this Act referred to as the ‘‘Trademark Act
of 1946’’) (15 U.S.C. 1052) is amended by adding at the
end the following flush sentences: ‘‘A mark which when used
would cause dilution under section 43(c) may be refused
registration only pursuant to a proceeding brought under
section 13. A registration for a mark which when used
would cause dilution 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 inserting ‘‘, including as a result of dilution under sec-
tion 43(c),’’ after ‘‘principal register’’.
(c) PETITIONS TO CANCEL REGISTRATIONS.—Section
14 of the Trademark Act of 1946 (15 U.S.C. 1064) is
amended in the matter preceding paragraph (1) by insert-
ing ‘‘, including as a result of dilution under section 43(c),’’
after ‘‘damaged’’.
(d) CANCELATION.—Section 24 of the Trademark Act
of 1946 (15 U.S.C. 1092) is amended in the second sentence
by inserting ‘‘, including as a result of dilution under sec-
tion 43(c),’’ after ‘‘register’’.
SEC. 3. REMEDIES IN CASES OF DILUTION OF FAMOUS
MARKS.
(a) INJUNCTIONS.—(1) Section 34(a) of the Trademark
Act of 1946 (15 U.S.C. 1116(a)) is amended in the first
sentence by striking ‘‘section 43(a)’’ and inserting ‘‘sub-
section (a) or (c) of section 43’’.
(2) Section 43(c)(2) of the Trademark Act of 1946 (15
U.S.C. 1125(c)(2)) is amended in the first sentence by in-
serting ‘‘as set forth in section 34’’ after ‘‘relief’’.
(b) DAMAGES.—Section 35(a) of the Trademark Act
of 1946 (15 U.S.C. 1117(a)) is amended in the first sentence
by striking ‘‘or a violation under section 43(a),’’ and insert-
ing ‘‘a violation under section 43(a), or a willful violation
under section 43(c),’’.
(c) DESTRUCTION OF ARTICLES.—Section 36 of the
Trademark Act of 1946 (15 U.S.C. 1118) is amended in
the first sentence—
(1) by striking ‘‘or a violation under section
43(a),’’ and inserting ‘‘a violation under section
43(a), or a willful violation under section 43(c),’’;
and
(2) by inserting after ‘‘in the case of a violation
of section 43(a)’’ the following: ‘‘or a willful violation
under section 43(c)’’.
SEC. 4. LIABILITY OF GOVERNMENTS FOR TRADEMARK IN-
FRINGEMENT AND DILUTION.
(a) CIVIL ACTIONS.—Section 32 of the Trademark Act
of 1946 (15 U.S.C. 1114) is amended—
(1) by amending the last undesignated para-
graph in paragraph (1) to read as follows:
‘‘As used in this subsection, the term ‘any person’ also
includes the United States, all agencies and instrumental-
ities thereof, and all individuals, firms, corporations, or
other persons acting for the United States and with the au-
thorization and consent of the United States, and any
State, any instrumentality of a State, and any officer or
employee of a State or instrumentality of a State acting
in his or her official capacity. The United States, all agen-
cies and instrumentalities thereof, and all individuals,
firms, corporations, other persons acting for the United
States and with the authorization and consent of the United
States, and any State, any instrumentality of a State, and
any officer or employee of a State or instrumentality of a
State, shall be subject to the provisions of this Act in the
same manner and to the same extent as any nongovern-
mental entity.’’.
(b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40 of
the Trademark Act of 1946 (15 U.S.C. 1122) is amended—
(1) in subsection (b), by striking ‘‘(b) In a suit’’
and inserting ‘‘(c) AVAILIBILITY OF REMEDIES.—In
a suit’’;
(2) by striking ‘‘SEC. 40. (a) Any State’’ and in-
serting the following:
‘‘SEC. 40. (a) WAIVER OF SOVEREIGN IMMUNITY BY
THE UNITED STATES.—The United States, all agencies and
instrumentalities thereof, and all individuals, firms, cor-
porations, other persons acting for the United States and
with the authorization and consent of the United States,
shall not be immune from suit in Federal or State court
by any person, including any governmental or nongovern-
mental entity, for any violation under this Act.
‘‘(b) WAIVER OF SOVEREIGN IMMUNITY BY STATES.—
Any State’’; and
(3) in the first sentence of subsection (c), as so
redesignated—
(A) by striking ‘‘subsection (a) for a viola-
tion described in that subsection’’ and inserting
‘‘subsection (a) or (b) for a violation described
therein’’; and
(B) by inserting after ‘‘other than’’ the fol-
lowing: ‘‘the United States or any agency or in-
strumentality thereof, or any individual, firm,
corporation, or other person acting for the
United States and with authorization and con-
sent of the United States, or’’.
(c) DEFINITION.—Section 45 of the Trademark Act of
1946 (15 U.S.C. 1127) is amended by inserting between the
2 paragraphs relating to the definition of ‘‘person’’ the fol-
lowing:
‘‘The term ‘person’ also includes the United States,
any agency or instrumentality thereof, or any individual,
firm, or corporation acting for the United States and with
the authorization and consent of the United States. The
United States, any agency or instrumentality thereof, and
any individual, firm, or corporation acting for the United
States and with the authorization and consent of the United
States, shall be subject to the provisions of this Act in the
same manner and to the same extent as any nongovern-
mental entity.’’.
SEC. 5. CIVIL ACTIONS FOR TRADE DRESS INFRINGEMENT.
Section 43(a) of the Trademark Act of 1946 (15 U.S.C.
1125(a)) is amended by adding at the end the following:
‘‘(3) In a civil action for trade dress infringement
under this Act for trade dress not registered on the prin-
cipal register, the person who asserts trade dress protection
‘‘(2) make and adopt a constitution, bylaws,
rules, and regulations for the use of its certification
mark;
‘‘(3) from time to time repeal or amend its con-
stitution, bylaws, rules, and regulations not incon-
sistent with the laws of the United States or any of
the States thereof; and
‘‘(4) provide for the safe-keeping and manage-
ment of its property and funds.
‘‘(b) CERTIFICATION MARK.—The Association shall es-
tablish and have the sole and exclusive rights to its certifi-
cation mark for use in carrying out its purposes. No powers
or privileges granted by this chapter shall interfere or con-
flict with established or vested rights.
‘‘§ 250104. Standards for use of certification mark
‘‘The Association shall establish the standards for those
entertainers who may use its certification mark. Such
standards shall include, but are not limited to, the following
criteria:
‘‘(1) At least one performer in any group dis-
playing or using in its advertising the certification
mark must have been a member of the original group
that performed under the same or similar name.
‘‘(2) Any advertising for such group shall not be
false or misleading with respect to the membership or
history of the group.
Any additional standards must be consistent with para-
graphs (1) and (2).
‘‘§ 250105. Rights of Performers
‘‘It shall not be a violation of the Trademark Act of
1946 or the statutes or common law of any State for an
individual who has been a member of a performing group
to be able to use the certification mark of the Association
and represent that such individual had been a member of
such a group in any promotions, advertisements, or per-
forming of the same services as those performed by such
group, if such representation meets the standards in section
250104 and does not deceive or confuse as to the nature,
characteristics, qualities, or sponsorship of such services.’’.
(b) CONFORMING AMENDMENT.—The item relating to
chapter 2501 in the table of chapters for subtitle II of title
36, United States Code, is amended to read as follows:
‘‘2501. ASSOCIATION TO PROVIDE AUTHENTICITY OF MUSI-
CAL GROUPS .......................................................................................
250101’’.
Union Calendar No. 144
106TH CONGRESS
1ST SESSION
H. R. 1565
[Report No. 106–250]
A BILL
To amend the Trademark Act of 1946 relating to
dilution of famous marks, and for other purposes.
JULY 22, 1999
Reported with an amendment, committed to the Com-
mittee of the Whole House on the State of the Union,
and ordered to be printed