SEE NOTE AT END OF THIS FILE (AND BLOG REFERENCE) OF PASSAGE OF BILL IN 2006

 

Dear Rep. Moran:

 

I am concerned about the new bill H.R. 683, the “Trademark Dilution Revision Act of 2005.”

 

My understanding is this bill is motivated by the claim of trademark holders that they need injunctive relief from infringers before actual financial or market share losses occur because of alleged brand infringement.

 

You are probably aware by now of claims that the bill could target small businesses or individuals with small pockets and no “real life” credible threats to holders of “famous” trademarks. The legislation would appear to invite frivolous or “zero tolerance” litigation seeking injunctive relief.

 

If this bill is really necessary, I would suggest adding a couple more detail clarification items in the definition of “dilution by blurring.” (The “tarnishment” provision seems straightforward.) To the “blurring” list I would add (vii) the use of weak wordmarks based on common standard English words or idioms, especially phrases with political connotation, generally will prevent a trademark holder from claiming that a similar mark using these everyday words blurs its mark (viii) generally, injunctive relief may not be sought among the different current (16 or so) distinct business categories recognized by existing trademark administrative and statutory law; entities in different lines of business may still use the same or similar wordmarks. 

 

I would agree that provision (v) (intentional association with a current mark) does help as (by negation) an affirmative defense to a claim for injunctive relief. Furthermore, it appears from the wording of the bill that the new law would act prospectively only. It would not affect possible conflicting wordmark usages already in place.

 

Please write to me and share your thoughts on the purpose and provisions of the bill and on what is likely to happen.

 

I do want to share a couple of other tangential suggestions.

 

First, we should recognize that there is some public confusion about the relationships among Internet domain names (which apply globally), legal assumed names and business names for licenses (administered within localities or states, and this can even include home occupation permits), and trademarks or wordmarks. The likelihood of confusion increases as technology offers small business entrepreneurs or even filmmakers and writers new low-capital opportunities with little consideration of possible downstream legal conflicts. ICANN could help by rethinking further its strategy for the use of TLD’s (top-level-domain names). There have occurred some litigation events where upstart domain owners, even those acting in good faith by ICANN standards, have been pursued by trademark holders that they could not find out about, where the original holders had not established an effective presence on the World Wide Web first.  In some cases, a domain with a lot of free static text content may be found by search engines more rapidly than a similarly named site from a business that practices commercial transactions but offers little content, and this might lead to some claims of “dilution by blurring” with the proposed legislation. The lazy overuse of  .com” is part of the problem. ICANN could consider offering TLD’s along the lines of USPTO business lines, or it could consider limiting the TLD’s used by individuals or sole proprietorships (.name or something like .pro, for example). It could even consider limiting individuals to (domain prefixes) using only variations of their own names unless they register their business names in a proper manner. Are you aware of any discussions in Congressional committees along these lines?

 

Second, claims about trademark dilution are related to the general level of public education about intellectual property issues. Businesses, with their bottom line focus and fiduciary responsibility to stakeholders, must sometimes market along the lines of “the lowest common denominator.”  Confusion in real markets is less likely with a public that understands how the Internet works and how the tension among global and local entities can evolve. I would suggest that public high schools should, in their government or civics classes, begin to educate students on the meaning of copyright, trademark, patent, domain name, and assumed name. This would also provide the opportunity to provide instruction on the ethical, legal and practical problems in copyright infringement, plagiarism, and some forms of file-sharing. (I’ll add that I am watching the MGM v. Grokster case, to be argued before the Supreme Court on March 29, very closely because of the possible consequences of the downstream liability issue.) Business would, in the long run, benefit from such education in the public school systems. As someone who has recently been as substitute teacher myself  in northern Virginia, I can imagine job opportunities in doing just this.

 

Thank you.

John W Boushka

BUSINESS ADDRESS

4201 Wilson Blvd #110-688

Arlington VA 22203-1859

571-334-6107

JBoushka@aol.com

 

March 18, 2005

 

Note: Beside domain names, the potential for dilution claims could occur with book titles or films, although these generally can be trademarked only when they are series or “franchises.”

 

Reply from Mr. Moran, April 1, 2005

 

Dear Mr. Boushka

 

Thank you for contacting me with your concerns about the Trademark Dilution Revision Act (H.R. 863).  I appreciate hearing from you on this issue, and I benefit from having your input.

 

As you may know, trademark rights are unique in that they are based on both federal as well as state laws, which have caused confusion in the application of owner and consumer rights. To address this issue, Congress passed the Federal Trademark Dilution Act (PL-104-98) in 1996 to promote uniformity in the law for “famous” trademarks. PL 104-98 protected famous trademarks against dilution, whereby the use of similar slogans, icons, or logos could harm the reputation of the authentic trademark or confuse customer.

 

Following enactment of the new federal law, several circuit courts of appeal offered mixed interpretations and applications of the law. Specifically, regional courts had diverse rulings on what constituted a “famous” mark and also if an owner had to prove actual harm to a mark before pursuing litigation.

 

One of your concerns that has been brought to my attention, an issue that you brought up in your letter, was that the current Trademark Dilution Revision Act would have the effect of curbing free expression and allow companies to bring forth lawsuits more easily. To address the first concern, the Subcommittee on Courts, the Internet, and Intellectual Property adopted an amendment to H.R. 683 that crafted separate exemptions from a dilution cause of action for parody, comment, and criticism. It is critical that Congress do everything to ensure that our First Amendment rights are safeguarded, and the amended H.R. 683 speaks to that end.

 

Second, with the interpreted strict burden of proof established by several circuit courts, by the time measurable damage to the mark could be proved, too much time will have passed and the damage to the mark will have been done. By easing the burden of proof,  H.R. 683 squares with what Congress initially intended when it originally passed trademark protection. And, because of the costs associated with bringing trials to court, I sincerely don’t believe that the explicit language in H.R. 683 will lead to excessive litigation.

 

I deeply appreciate your interest in this issue, and although we may disagree on the intentions of H.R. 683, please continue sharing your thoughts on legislation. I benefit from having a broad perspective from my entire constituency. Also rest assured that I will keep your thoughts in mind should this bill reach a full vote in the House of Representatives.

 

Please feel free to visit my website http://www.moran.house.gov that contains information on other topics of interest or sign up for the Moran E-Digest to receive periodic email updates and issue alerts. Thank you again for contacting me.

 

Sincerely,

 

James P. Moran

Congress of the United States

8th District, Virginia

 

A reader, Jonathan Mark, made a comment about this letter at http://www.goodbyejim.com/1138046501/index_html  I’m not sure I agree, you can judge for yourself.

 

More links on this bill:  http://www.publicknowledge.org/issues/tmdilution 

The Supreme Court limited the concept of trademark dilution somewhat with a Dec 9 2004 ruling (New York Times archive)

 

http://thomas.loc.gov/cgi-bin/query/z?c109:H.R.+683:

http://thomas.loc.gov/cgi-bin/bdquery/z?d109:h.r.00683:

 

http://commdocs.house.gov/committees/judiciary/hju98924.000/hju98924_0f.htm

 

The most recent activity that I can find myself is

11/3/2005

Senate committee/subcommittee actions: Committee on the Judiciary. Committee consideration and Mark Up Session held.

 

Please visit my blogspot entry on this issue: http://billboushka.blogspot.com/2006/02/trademark-dilution-revision-act-of.html

 

I understand that the Senate reported this bill “favorably” on Feb. 16, 2006. Here is the link: http://www.blogger.com/comment.g?blogID=21219705&postID=113927246303181902   Also, it was reported out of a Senate committee favorably on Feb 16 2006 with some revision (substitute wording) that would strengthen "fair use" defenses particularly with non-commercial comment and reporting and probably strengthen the requirements that plaintiffs properly register their marks first. As of 3/1/2006 the Senate had not yet published this bill.

 

Visit http://www.wecanstopthebox.com  (“We can stop the big box stores”)   This site reports that the bill has passed the House of Representatives.

 

Here is the March 4, 2003 Supreme Court ruling

http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf  “Moseley et al. DBA Victoria’s Little Secret v. Secret Catalogue, Inc., et. al.”

 

Also, note well: In early 2006, it appears that trademark searching technology has been advancing rapidly. Some ISPs (such as Verio) now offer much more comprehensive trademark research facilities to subscribers (some of them without extra fees) than before. One such service is ActiveIP . NameProtect (SearchSmart), both of which are themselves trademarks and servicemarks. You can learn more at http://www.activeip.com/about.html . These services can do USPTO searches but aslo search internet content, and can also (for fees) do international searches. Again, you can also do reasonable searches at http://www.uspto.gov/ and follow the links; generally the information is current within about a month and is updated most mornings Tue-Sat.

 

Important 2007 about trademark namesake dispute with domain names (Keith Urban the singer v Keith Urban the painter; http://billboushkatd.blogspot.com/2007/02/new-domain-nametrademark-dispute-when.html )

 

Note: The Trademark Dilution Revision Act of 2006 (still HR 683) passed in early Oct. 2006. My blog entry is here:

http://billboushkatd.blogspot.com/2007/06/trademark-dilution-revision-act-of-2006.html  (The original case had been Moseley v. Secret Catalogue, Inc.)

 

The text of the final act his here (PDF): http://www.govtrack.us/data/us/bills.text/109/h/h683.pdf 

 

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