Congress Passes Trademark Dilution Revision Act of 2006
This week, the U.S. House approved the Senate version of H.R. 683, the Trademark Dilution Revision Act of 2006, which is expected to be signed by the President within the next few weeks. This bill, which was advocated by the International Trademark Association, reverses the 2003 U.S. Supreme Court decision in Moseley & Moseley v. V Secret Catalogue, Inc. That case, described in our CRB Update of March 4, 2003, held that “actual” dilution was required for a violation of the 1995 Federal Trademark Dilution Act. The Trademark Dilution Revision Act passed this week clarifies that a likelihood of dilution is all that is required to violate the Act.
Dilution is the protection of “famous” marks against similar marks, even if the similar marks are not used in connection with similar goods or services. In other words, a mark can “dilute” a famous mark even if there is no likelihood of confusion (the traditional test for trademark infringement) between the two marks. A mark may be considered “famous” if it is “widely recognized by the general consuming public . . . as a designation of source of the goods or services of the mark’s owner.”
Under the Trademark Dilution Revision Act, the owner of a famous mark is entitled to injunctive relief against the owner of another mark that is likely to cause dilution “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Monetary damages are also available if the dilution was intentional and if the mark causing dilution was first used after the effective date of the Revision Act (which will become immediately effective upon signing by the President). The Revision Act also clarifies that likelihood of dilution may be grounds for opposition of a federal trademark application or cancellation of a registration.
The Revision Act defines the two traditionally recognized types of dilution – “blurring” and “tarnishment.” Blurring is defined as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” By contrast, tarnishment is an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Excluded from the definition of actionable dilution is any fair use (including comparative advertising, parody, criticism or comment), news reporting or noncommercial use of a mark.
You can access a copy of the Trademark Dilution Revision Act here or you may contact us for additional information.