Trademark Dilution Revision Act of 2006

Bill: 109-hr-683
Sponsor: Rep. Smith, Lamar [R-TX-21]
Introduced: 2005-02-09 in the House
Policy area: Commerce
Subjects: Advertising
Civil actions and liability
Evidence (Law)
Government Operations and Politics
Injunctions
Intellectual property
Journalism
Law
Reporters and reporting
State laws
Trademarks

Summary:
action_date: 2005-02-09
text: 
Trademark Dilution Revision Act of 2005 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution. Entitles an owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, to an injunction against another person who commences use of a mark or trade name in commerce, after it has become famous, as a designation of source of the person's goods or services that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of confusion, competition, or economic injury.
 
Defines a mark as 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. 
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a designation of source and a famous mark that impairs the distinctiveness of the famous mark. Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a designation of source and a famous mark that harms the reputation of the famous mark.
 
Declares that certain acts are not actionable as dilution by blurring or dilution by tarnishment, including: (1) 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; (2) noncommercial use of a designation of source; and (3) all forms of news reporting and news commentary.

action_date: 2005-03-17
text: 
Trademark Dilution Revision Act of 2005 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
 
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
 
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; and (3) the extent of actual recognition of the mark.
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
 
Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 
 
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) 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; (2) fair use of a famous mark by another person other than as a designation of source for the person's good or services, including for identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; and (3) all forms of news reporting and news commentary.
 
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) did not use the mark or name that is likely to cause dilution by blurring or tarnishment in commerce prior to the date of this Act; and (2) willfully intended to trade on the recognition of the famous mark or harm its reputation by reason of dilution by blurring or tarnishment.
 
Declares that ownership of a valid registration is a complete bar to an action under State common law or statute that seeks to prevent dilution by blurring or tarnishment or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

action_date: 2005-04-19
text: 

(This measure has not been amended since it was reported to the House on March 17, 2005. The summary of that version is repeated here.)

 
Trademark Dilution Revision Act of 2005 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
 
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
 
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; and (3) the extent of actual recognition of the mark.
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
 
Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 
 
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) 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; (2) fair use of a famous mark by another person other than as a designation of source for the person's good or services, including for identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; and (3) all forms of news reporting and news commentary.
 
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) did not use the mark or name that is likely to cause dilution by blurring or tarnishment in commerce prior to the date of this Act; and (2) willfully intended to trade on the recognition of the famous mark or harm its reputation by reason of dilution by blurring or tarnishment.
 
Declares that ownership of a valid registration is a complete bar to an action under State common law or statute that seeks to prevent dilution by blurring or tarnishment or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

action_date: 2006-02-27
text: 
Trademark Dilution Revision Act of 2006 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
 
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
 
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
 
Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 
 
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) any fair use of a famous mark by another person other than as a designation of source for the person's own goods or services, including for advertising or promotion that permits consumers to compare goods or services, or identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; (2) all forms of news reporting and news commentary; and (3) any noncommercial use of a mark.
 
Requires the person who asserts trade dress protection for trade dress not registered on the principal register in a civil action for trade dress dilution to prove that: (1) the claimed trade dress, taken as a whole, is not functional and is famous; and (2) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
 
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.
 
Declares that ownership of a valid registration is a complete bar to an action under state common law or statute that seeks to prevent dilution by blurring or tarnishment or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
 


action_date: 2006-03-08
text: 

(This measure has not been amended since it was reported to the Senate on February 27, 2006. The summary of that version is repeated here.)

 
Trademark Dilution Revision Act of 2006 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
 
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
 
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
 
Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 
 
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) any fair use of a famous mark by another person other than as a designation of source for the person's own goods or services, including for advertising or promotion that permits consumers to compare goods or services, or identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; (2) all forms of news reporting and news commentary; and (3) any noncommercial use of a mark.
 
Requires the person who asserts trade dress protection for trade dress not registered on the principal register in a civil action for trade dress dilution to prove that: (1) the claimed trade dress, taken as a whole, is not functional and is famous; and (2) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
 
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.
 
Declares that ownership of a valid registration is a complete bar to an action under state common law or statute that seeks to prevent dilution by blurring or tarnishment or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
 


action_date: 2006-10-06
text: 

(This measure has not been amended since it was reported to the Senate on February 27, 2006. The summary of that version is repeated here.)

 
Trademark Dilution Revision Act of 2006 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
 
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
 
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
 
Defines &quot;dilution by blurring&quot; as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
 
Defines &quot;dilution by tarnishment&quot; as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 
 
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) any fair use of a famous mark by another person other than as a designation of source for the person's own goods or services, including for advertising or promotion that permits consumers to compare goods or services, or identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; (2) all forms of news reporting and news commentary; and (3) any noncommercial use of a mark.
 
Requires the person who asserts trade dress protection for trade dress not registered on the principal register in a civil action for trade dress dilution to prove that: (1) the claimed trade dress, taken as a whole, is not functional and is famous; and (2) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
 
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.
 
Declares that ownership of a valid registration is a complete bar to an action under state common law or statute that seeks to prevent dilution by blurring or tarnishment or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.


Legislative actions:
action_date: 2006-10-06
text: Became Public Law No: 109-312.
action_date: 2006-10-06
text: Became Public Law No: 109-312.
action_date: 2006-10-06
text: Signed by President.
action_date: 2006-10-06
text: Signed by President.
action_date: 2006-09-29
text: Presented to President.
action_date: 2006-09-29
text: Presented to President.
action_date: 2006-09-25
text: Motion to reconsider laid on the table Agreed to without objection.
action_date: 2006-09-25
text: On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote. (consideration: CR H6963-6965; text as House agreed to Senate amendment: CR H6963-6964)
action_date: 2006-09-25
text: Resolving differences -- House actions: On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote.(consideration: CR H6963-6965; text as House agreed to Senate amendment: CR H6963-6964)
action_date: 2006-09-25
text: DEBATE - The House proceeded with forty minutes of debate on the motion to suspend the rules and agree to the Senate amendment to H.R. 683.
action_date: 2006-09-25
text: Mr. Sensenbrenner moved that the House suspend the rules and agree to the Senate amendment.
action_date: 2006-03-08
text: Message on Senate action sent to the House.
action_date: 2006-03-08
text: Passed Senate with an amendment by Unanimous Consent. (consideration: CR S1921-1923; text as passed Senate: CR S1921-1923)
action_date: 2006-03-08
text: Passed/agreed to in Senate: Passed Senate with an amendment by Unanimous Consent.(consideration: CR S1921-1923; text as passed Senate: CR S1921-1923)
action_date: 2006-02-27
text: Placed on Senate Legislative Calendar under General Orders. Calendar No. 366.
action_date: 2006-02-27
text: Committee on the Judiciary. Reported by Senator Specter with an amendment in the nature of a substitute. Without written report.
action_date: 2006-02-27
text: Committee on the Judiciary. Reported by Senator Specter with an amendment in the nature of a substitute. Without written report.
action_date: 2006-02-16
text: Committee on the Judiciary. Ordered to be reported with an amendment in the nature of a substitute favorably.
action_date: 2005-11-03
text: Committee on the Judiciary. Committee consideration and Mark Up Session held.
action_date: 2005-04-20
text: Received in the Senate and Read twice and referred to the Committee on the Judiciary.
action_date: 2005-04-19
text: Motion to reconsider laid on the table Agreed to without objection.
action_date: 2005-04-19
text: On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 411 - 8 (Roll no. 109). (text: CR H2121-2122)
action_date: 2005-04-19
text: Passed/agreed to in House: On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 411 - 8 (Roll no. 109).(text: CR H2121-2122)
action_date: 2005-04-19
text: Considered as unfinished business. (consideration: CR H2125-2126)
action_date: 2005-04-19
text: At the conclusion of debate, the Yeas and Nays were demanded and ordered. Pursuant to the provisions of clause 8, rule XX, the Chair announced that further proceedings on the motion would be postponed.
action_date: 2005-04-19
text: DEBATE - The House proceeded with forty minutes of debate on H.R. 683.
action_date: 2005-04-19
text: Considered under suspension of the rules. (consideration: CR H2121-2123)
action_date: 2005-04-19
text: Mr. Sensenbrenner moved to suspend the rules and pass the bill, as amended.
action_date: 2005-03-17
text: Placed on the Union Calendar, Calendar No. 9.
action_date: 2005-03-17
text: Reported (Amended) by the Committee on Judiciary. H. Rept. 109-23.
action_date: 2005-03-17
text: Reported (Amended) by the Committee on Judiciary. H. Rept. 109-23.
action_date: 2005-03-09
text: Ordered to be Reported (Amended) by Voice Vote.
action_date: 2005-03-09
text: Committee Consideration and Mark-up Session Held.
action_date: 2005-03-03
text: Forwarded by Subcommittee to Full Committee (Amended) by Voice Vote.
action_date: 2005-03-03
text: Subcommittee Consideration and Mark-up Session Held.
action_date: 2005-02-17
text: Subcommittee Hearings Held.
action_date: 2005-02-15
text: Referred to the Subcommittee on Courts, the Internet, and Intellectual Property.
action_date: 2005-02-09
text: Referred to the House Committee on the Judiciary.
action_date: 2005-02-09
text: Introduced in House
action_date: 2005-02-09
text: Introduced in House

Enacted as: number: 109-312