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February 28, 2005

The Honorable Lamar S. Smith
Chairman
Subcommittee on the Courts, the Internet and Intellectual Property Committee on the Judiciary
House of Representatives
Washington, DC 20515

The Honorable Howard Berman
Subcommittee on the Courts, the Internet and Intellectual Property Committee on the Judiciary
House of Representatives
Washington, DC 20515

Dear Mr. Chairman and Ranking Member Berman,

     We are writing on behalf of the International Trademark Association (INTA) and the American Intellectual Property Law Association (AIPLA) to communicate our support of proposed changes to H.R. 683, the “Trademark Dilution Improvement Act of 2005.”

     Following the hearing on this legislation of February 17th, we were asked by your staffs to meet, along with a representative of the American Civil Liberties Union (ACLU), to address the concerns that had been raised at the hearing.  This meeting was very constructive and resulted in the attached proposed amendments to H.R. 683 that both INTA and AIPLA can support. The crux of the amendments are (a) to delete the requirement that a person must use a famous mark as a “designation of source” for his or her own goods or services before that use can be actionable as a diluting use and (b) to significantly strengthen the fair use exclusion for the use of a famous mark for parody or criticism in response to the First Amendment concerns raised by the ACLU, including incorporation of the “designation of source” requirement into this defense. The fair use exclusion was further strengthened and clarified after the meeting in response to a request by the ACLU. A text of the proposed amendments agreed upon by INTA and AIPLA is attached. While we cannot speak for ACLU, it is clearly our understanding that they are in agreement also.

     As you well know, H.R. 683 offers important and necessary improvements to the federal dilution statute.  It will narrow and better focus dilution protection, providing famous mark owners a provable cause of action, while at the same time protecting free speech.  Specifically, it would amend the statute to provide relief where the trademark owner can show a “likelihood of dilution” of its famous mark, thus relieving trademark owners of the unreasonable burden of proving “actual dilution” as required by the Supreme Court’s interpretation of the current statute in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003).  Second, it would clarify that famous marks lacking inherent distinctiveness but that have acquired distinctiveness through use are potentially protectable against dilution, thus overruling an unfortunate line of decisions from the Second Circuit holding that such marks are categorically ineligible for dilution protection under the FTDA.  Third, it would clarify that dilution by tarnishment is actionable under the statute, removing the doubt created on this issue by dicta in the Supreme Court’s Moseley decision.  Fourth, it would define the term “famous” in such a manner that only marks that are “widely recognized by the general consuming public” would be eligible for protection, thus overruling decisions that have accorded dilution protection to marks known only in a “niche” market.  And finally, as noted above, it provides strong fair use defenses protecting parody, criticism, commentary and comparative advertising.

     We appreciate your willingness to consider our views on improving this significant piece of legislation.  We would also like to recognize the hard work of your staffs, especially Blaine Merritt and Shanna Winters, who were instrumental in crafting such a balanced compromise.  We stand ready to give assistance to the Committee in any manner which may be beneficial in making H.R. 683 become law.

Sincerely,

Michael K. Kirk
Executive Director
AIPLA

Alan C. Drewsen
Executive Director
INTA

Attachment

Attachment

109th CONGRESS
1st Session
H. R. 683

To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment.

IN THE HOUSE OF REPRESENTATIVES

February 9, 2005

Mr. SMITH of Texas introduced the following bill; which was referred to the Committee on the Judiciary

A BILL

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 Americain Congress assembled,

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 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 as a designation of source of the person's goods or services 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.

`(B) For purposes of paragraph (1), `dilution by blurring' is association arising from the similarity between a designation of source mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a designation of source 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 designation of source 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 designation of source mark or trade name intended to create an association with the famous mark.

`(vi) Any actual association between the designation of source 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 designation of source 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 its goods or services.

`(B) Noncommercial use of a designation of source.

`(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 enactment of the Trademark Dilution Revision Act of 2005, a mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment,  as a designation of source in commerce prior to the date of the enactment of the Trademark Dilution Revision Act of 2005, 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 trade on 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 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 is brought by another person under the common law or a statute of a State and that seeks to prevent dilution by blurring or dilution by tarnishment, or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.'; 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) adding at the end the following: `A mark which, when used as a designation of source for the applicant's goods or services, 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, when used as a designation of source for the registrant's goods or services, 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, when used as a designation of source for the applicant's goods or services, would be likely to cause dilution by blurring or 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 , when used as a designation of source for the registrant's goods or services, 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, when used as a designation of source for the registrant's goods or services, 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'.

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