News & Events

On October 6, President Bush signed into law H.R. 683, the “Trademark Dilution Revision Act of 2006.”  This Act was crafted by a committee of experts convened by the International Trademark Association (INTA) to clarify the current Trademark Dilution Act and resolve splits that have arisen in the circuits.  These splits were partially in response to the Supreme Court’s ruling in Moseley v. Victoria’s Secret. That case had interpreted the original Dilution statute as requiring a showing of actual dilution, rather than of a likelihood of dilution.  The new Act also rejects the “actual economic injury” standard applied by other courts of appeal.

This Act ensures that owners of famous trademarks will be able to protect and prevent dilution of these famous marks and will not have to delay seeking protection until there has been actual damage to do so

The Revision changes the Dilution Act in the following respects:

1.  Specifies that likelihood of dilution suffices to meet the requirements for proving violation of the Dilution Act

2.  Specifies that anti-dilution protection applies not only to marks which are inherently distinctive, but also to marks that have acquired distinctiveness, provided they have attained sufficiently “famous” status to otherwise be eligible for protection.

3.  Specifies that only marks that are famous to the “general consuming public,” are entitled to protection against dilution, eliminating protection for marks that are “famous” only in niche markets.

4.  Elaborates on some of the relevant factors for determining whether a mark has sufficient public recognition to be considered “famous,” including the “amount, volume and geographic extent of sales.”

5.  Expressly recognizes the existence of two types of dilution: dilution by blurring and dilution by tarnishment.  It also specifies some types of evidence which the courts should consider in determining whether one or the other type of dilution is likely

6.  Refines the definition of “fair use” to include “nominative or descriptive fair use,” including uses that identify, parody, or comments upon the famous mark.

7.  Provides for the possibility that unregistered trade dress may be entitled to anti-dilution protection, but places the burden of proof on the party asserting the trade dress to prove that it is not functional and is famous, and that the fame is not based on the use of a printed mark on the goods.

8.  Allows for monetary remedies, if the diluting mark is used after the enactment date of the Revision Act and the diluting use can is willful.

Regarding the passage of this Act, Paul W. Reidl of E&J Gallo and INTA President, stated “INTA views the passage of the bill as a very important achievement in the protection of famous and well-known trademarks.  This gives brand owners a powerful tool for protecting the trademarks they have worked so hard to build.”

The House Bill was sponsored by Rep. Lamar Smith (R-Tex.), while Senators Arlen Specter (R-UT), Orrin Hatch (R-UT), and Patrick Leahy (D-VT) backed the Senate Act.

Please contact a Marshall, Gerstein & Borun attorney in our Trademark Practice Group for further information or to discuss the content and ramifications of this new Act.

Sources:  Federal Register and INTA Bulletin, October 15, 2006