109TH CONGRESS
1ST SESSION
H. R. 683
AN ACT
To amend the Trademark Act of 1946 with respect
to dilution by blurring or tarnishment.
109TH CONGRESS
1ST SESSION
H. R. 683
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-
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
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.
‘‘(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-
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
subsection—
‘‘(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,
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—
(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
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’’.
Passed the House of Representatives April 19, 2005.
Attest:
Clerk.