Clerk session vote number: 109
Description: Trademark Dilution Revision Act
Bill summary: (This measure has not been amended since it was reported to the Senate on February 27, 2006. The summary of that version is repeated here.)
Trademark Dilution Revision Act of 2006 - Amends the Trademark Act of 1946 to revise provisions relating to trademark dilution.
Entitles an owner of a famous mark that is distinctive to an injunction against another person who commences use of a mark of trade name, after it has become famous, in commerce in a manner that is likely to cause dilution by
blurring or tarnishment, regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury.
Defines a mark as famous if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. Allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
Defines "dilution by blurring" 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. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
Defines "dilution by tarnishment" as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
Declares that certain acts are not actionable as dilution by blurring or tarnishment, including: (1) any 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 for advertising or promotion that permits consumers to compare goods or services, or identifying and parodying, criticizing, or commenting upon the famous mark owner or the owner's goods or services; (2) all forms of news reporting and news commentary; and (3) any noncommercial use of a mark.
Requires the person who asserts trade dress protection for trade dress not registered on the principal register in a civil action for trade dress dilution to prove that: (1) the claimed trade dress, taken as a whole, is not functional and is famous; and (2) 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.
Allows the owner of a famous mark to seek additional remedies in an action under this Act if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.
Declares that ownership of a valid registration is a complete bar to an action under state common law or statute that seeks to prevent dilution by blurring or 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.
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Bill titles: To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment.
Links for more info on the vote: congress.gov