AMENDMENT IN THE NATURE OF A
SUBSTITUTE TO H.R. 683, AS REPORTED BY THE SUBCOMMITTEE ON COURTS, THE
INTERNET,
(or visit http://www.govtrack.us/congress/billtext.xpd?bill=h109-683
)
Strike all after the enacting clause and insert the following:
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 protection of trademarks used in
commerce, to carry out the provisions of certain international conventions, and
for other purposes", approved
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 confusion, 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 consuming public of
the
"(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 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)
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.
"(B) Fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous 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 famous
mark shall be entitled only to injunctive relief as set forth in section 34,
except that, if--
"(A) the person against
whom the injunction is sought did not use in commerce, prior to the date of the
enactment of the Trademark Dilution 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 principles 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
(2) in subsection (d)(1)(B)(i)(IX), by striking "(c)(1) of section 43" and inserting "(e)".
(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) 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)--
(1) by striking ",
including as a result of dilution under section 43(c),";
and
(2) 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 supplemental register--
"(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 registration.".
(e)
DEFINITIONS.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is
amended by striking the definition relating to "dilution".