Trademark Amendments Act of 1999
PL 106-43 (S.1259), enacted 08/05/1999

113 STAT. 218 
PUBLIC LAW 106-43—AUG. 5, 1999 
Public Law 106-43 
105th Congress 
An Act 
Aug. 5, 1999 
To amend the Trademark Act of 1946 relating to dilution of famous marks, and 
[S. 1259] 
for other.purposes. 
Be it enacted by the Senate and House of Representatives of 
Trademark 
the United States of America in Congress assembled, 
Amendments Act 
of 1999. 
SECTION 1. SHORT TITLE. 
15USC1051 
note. 
This Act may be cited as the "Trademark Amendments Act 
of 1999". 
SEC. 2. DILUTION AS A GROUNDS FOR OPPOSITION AND CANCELLA-
TION. 
(a) REGISTRABLE MARKS.—Section 2 of the Act entitled "An 
Act to provide for the registration and protection of trade-marks 
used in commerce, to carry out the provisions of certain inter-
national 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 section 43(c)," after "prin-
cipal 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 inserting ", including as a result of 
dilution under section 43(c)," after "damaged". 
(d) CANCELLATION.—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 section 43(c)," after "reg-
ister". 
15 use 1052 
(e) EFFECTIVE DATE AND APPLICATION.—^The amendments made 
note. 
by this section shall take effect on the date of enactment of this 
Act and shall apply only to any application for registration filed 
on or after January 16, 1996. 
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 "subsection (a) or (c) of section 43". 
PUBLIC LAW 106-43—AUG. 5, 1999 
113 STAT. 219 
(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 inserting "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 inserting "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 INFRINGE-
MENT AND DILUTION. 
(a) CIVIL ACTIONS.—Section 32 of the Trademark Act of 1946 
(15 U.S.C. 1114) is amended in the last undesignated paragraph 
in paragraph (1)— 
(1) in the first sentence by inserting after "includes" the 
following: "the United States, all agencies and instrumentalities 
thereof, and all individuals, firms, corporations, or other per-
sons acting for the United States and with the authorization 
and consent of the United States, and"; and 
(2) in the second sentence by striking "Any" and inserting 
"The United States, all agencies 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". 
(b) WAIVER OF SOVEREIGN IMMUNITY.—Section 40 of the Trade-
mark Act of 1946 (15 U.S.C. 1122) is amended— 
(1) by redesignating subsection (b) as subsection (c); 
(2) by striking "SEC. 40. (a) Any State" and inserting 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, corporations, 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 non-
governmental 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 violation described 
in that subsection" and inserting "subsection (a) or (b) 
for a violation described therein"; and 
(B) by inserting after "other than" the following: "the 
United States or any agency or instrumentality thereof, 
or any individual, firm, corporation, or other person acting 
for the United States and with authorization and consent 
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 following: 
113 STAT. 220 
PUBLIC LAW 106-43—AUG. 5, 1999 
"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 instrumen-
tality thereof, and any individual, firm, or corporation acting for 
the United States Eind 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 nongovernmental 
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 Eimended 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 principal register, the 
person who asserts trade dress protection has the burden of proving 
that the matter sought to be protected is not functionEd.". 
SEC. 6. TECHNICAL AMENDMENTS. 
(a) ASSIGNMENT OF MARKS.—Section 10 of the Trademark Act 
of 1946 (15 U.S.C. 1060) is amended— 
-* 
(1) by striking "subsequent purchase" in the second to 
last sentence and inserting "assignment"; 
(2) in the first sentence by striking "mark," and inserting 
"mark."; and 
(3) in the third sentence by striking the second period 
at the end. 
(b) ADDITIONAL CLERICAL AMENDMENTS.—The text and title 
15 use 1051 
of the Trademark Act of 1946 are gimended by striking "trade-
note, 1053,1054, 
marks" each place it appears and inserting "trademarks". 
1091, 1124, 1126, 
f 
ff 
& 
1127. 
Approved August 5, 1999. 
LEGISLATIVE HISTORY—S. 1259: 
CONGRESSIONAL RECORD, Vol. 145 (1999): 
July 1, considered and passed Senate. 
July 26, considered and passed House.