Trademark Dilution Revision Act of 2006
PL 109-312 (H.R.683), enacted 10/06/2006

120 STAT. 1730
PUBLIC LAW 109–312—OCT. 6, 2006
Public Law 109–312
109th Congress
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 Representatives 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 2006’’.
(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 protection of trademarks used in
commerce, to carry out the provisions 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 principles of equity,
the owner of a famous mark that is distinctive, inherently
or through acquired distinctiveness, 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 dilution
by blurring or dilution by tarnishment of the famous mark,
regardless of the presence or absence of actual or likely confu-
sion, of competition, or of actual economic injury.
‘‘(2) DEFINITIONS.—(A) For purposes of paragraph (1), a
mark is famous if it is widely recognized by the general con-
suming 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.
Trademark
Dilution Revision
Act of 2006.
15 USC 1051
note.
Oct. 6, 2006
[H.R. 683]
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120 STAT. 1731
PUBLIC LAW 109–312—OCT. 6, 2006
‘‘(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 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 exclusive use of the
mark.
‘‘(iv) The degree of recognition of the famous 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 similarity 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 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
connection with—
‘‘(i) advertising or promotion that permits con-
sumers to compare goods or services; or
‘‘(ii) identifying and parodying, criticizing, or com-
menting 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 proving 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 register, the unregistered
matter, taken as a whole, 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—
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120 STAT. 1732
PUBLIC LAW 109–312—OCT. 6, 2006
‘‘(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 injunc-
tion is sought after the date of enactment of the Trademark
Dilution Revision Act of 2006; 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 per-
son against whom the injunction is sought willfully
intended to harm the reputation of the famous mark.
‘‘(6) 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—
‘‘(A)(i) is brought by another person under the common
law or a statute of a State; and
‘‘(ii) seeks to prevent dilution by blurring or dilution
by tarnishment; or
‘‘(B) asserts any claim of actual or likely damage or
harm to the distinctiveness or reputation of a mark, label,
or form of advertisement.
‘‘(7) SAVINGS CLAUSE.—Nothing in this subsection shall be
construed to impair, modify, or supersede the applicability of
the patent laws of the United States.’’; 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 REGISTER.—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 proceeding 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) by striking ‘‘, including as a result of dilution under section
43(c),’’ and inserting ‘‘, including as a result of a likelihood of
dilution by blurring or dilution by tarnishment under section 43(c),’’.
(d) MARKS FOR THE SUPPLEMENTAL REGISTER.—The second sen-
tence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092)
is amended to read as follows:
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120 STAT. 1733
PUBLIC LAW 109–312—OCT. 6, 2006
LEGISLATIVE HISTORY—H.R. 683:
HOUSE REPORTS: No. 109–23 (Comm. on the Judiciary).
CONGRESSIONAL RECORD:
Vol. 151 (2005): Apr. 19, considered and passed House.
Vol. 152 (2006): Mar. 8, considered and passed Senate, amended.
Sept. 25, House concurred in Senate amendment.
‘‘Whenever any person believes that such person is or will be
damaged by the registration of a mark on the supplemental reg-
ister—
‘‘(1) for which the effective filing date is after the date
on which such person’s mark became famous 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 prescribed 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 definition relating
to the term ‘‘dilution’’.
Approved October 6, 2006.
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