Trademark Act of 1946 Amendment Relating to Remedies for Dilution

Floor Speech

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Mr. WATT. Mr. Speaker, I yield myself such time as I may consume.

Mr. Speaker, I rise in support of H.R. 6215, which is necessary to correct a technical error in the Trademark Dilution Revision Act of 2006 that inadvertently allowed the registration of a Federal trademark to be a complete bar to Federal trademark dilution claims.

The concept of dilution was initially a creature of State law. Massachusetts was the first State to enact a dilution statute in 1947. The purpose of the dilution law is to protect the value and uniqueness of the plaintiff's trademark without requiring evidence about the likelihood of confusion.

Over 50 years after the passage of the Massachusetts statute, the 1996 Federal Trademark Dilution Act provided nationwide injunctive relief ``against a use that causes dilution of the distinctive quality of the famous mark.'' In
2003, however, the Supreme Court in Moseley v. Victoria's Secret Catalog, Inc., considered the question of whether objective proof of actual injury to the economic value of a famous mark--that is, actual dilution--is required to obtain relief under the Federal Trademark Dilution Act. The Court decided that evidence of actual dilution was required, not simply a showing of likely dilution.

The Trademark Dilution Revision Act of 2006 amended the law in an attempt to reverse the Victoria's Secret decision and to expand the scope of State dilution claims banned under the Federal statute. During consideration of the Trademark Dilution Revision Act, however, the provision allowing a Federal registration defense to dilution claims brought under State law was reorganized in such a way as to result in an unintended substantive change in the provision. As a result, the Federal registration defense is available not only against State dilution claims, but also against Federal dilution claims.

The legislative history makes clear that Congress did not intend to allow a Federal trademark registration to bar a Federal dilution claim. H.R. 6215 corrects this error and has broad support in the intellectual property community and bipartisan support on the Judiciary Committee.

I urge my colleagues to support the legislation that ensures that the will of the Congress, as originally intended, is not undermined by an inadvertent drafting error.

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