2006 Dilution Act
 
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2006 Dilution Act

Below is the all new October 6, 2006 Trademark Dilution Act. Congress was once more totally bamboozled or "bought" by lobbyists on "K"-Street. Acts like these are bad for the consumers in that they function anti-competitive and monopolistic and hurt the economy as a whole. The winners: Large corporations and lawyers that can litigate small companies into oblivion. One wonders whether congress is ignorant or corrupt, or maybe both?

Here is the act:

[DOCID: f:publ312.109]

[[Page 1729]]

                 TRADEMARK DILUTION REVISION ACT OF 2006

[[Page 120 STAT. 1730]]

Public Law 109-312
109th Congress

                                 An Act


.
To amend the Trademark Act of 1946 with respect to dilution by blurring
          or tarnishment. <<NOTE: Oct. 6, 2006 -  [H.R. 683]>>

    Be it enacted by the Senate and House of Representatives of the
United States of America in Congress <<NOTE: Trademark Dilution Revision
Act of 2006. 15 USC 1051 note.>> 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
        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 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
        following:
                    ``(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.

[[Page 120 STAT. 1731]]

                    ``(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
                      consumers to compare goods or services; or
                          ``(ii) identifying and parodying, criticizing,
                      or commenting 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--

[[Page 120 STAT. 1732]]

                    ``(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
                injunction 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 person 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 sentence of
section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to
read as follows:

[[Page 120 STAT. 1733]]

``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 registration.''.

    (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.

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.

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