Trademark Act of 1946 Amendment Relating to Remedies for Dilution

Floor Speech

By:  Lamar Smith
Date: Sept. 11, 2012
Location: Washington, DC


Mr. SMITH of Texas. Mr. Speaker, I ask unanimous consent that all Members may have 5 legislative days within which to revise and extend their remarks and include extraneous materials on H.R. 6215, as amended, currently under consideration.

The SPEAKER pro tempore. Is there objection to the request of the gentleman from Texas?

There was no objection.

Mr. SMITH of Texas. I yield myself such time as I may consume.

Mr. Speaker, the purpose of the Federal Trademark Dilution Act of 1995 is to protect famous trademarks from uses that blur the distinctiveness of the trademark or tarnish or disparage it. Dilution does not rely upon the standard test of infringement, that is, likelihood of confusion, deception, or mistake. Rather, it applies when the unauthorized use of a famous trademark reduces the public's perception that the trademark signifies something unique, singular, or particular.

Dilution can result in the loss of the trademark's distinctiveness and possibly the owner's rights in it.

Congress enacted amendments to the original dilution statute in 2006. Last year, two law professors discovered a technical problem with one of the 2006 changes.

During Senate consideration of the House bill, the section that provides a Federal registration defense to a dilution action was reorganized. This produced an unexpected and unintended change to the law.

As originally drafted in the House, the provision was designed to encourage Federal registration of trademarks. This is a worthy policy goal that prevents State laws from interfering with federally protected trademarks and ensures that registered trademarks are protected nationwide.

The House version promoted this goal and barred a State action for dilution against a federally registered trademark. However, the Senate reformatted the House text in such a way as to create a bar against State action for dilution as well as a State or Federal action based on a claim of actual or likely damage or harm to the distinctiveness or reputation of a trademark. This means the Federal registration defense is available to both State sand Federal dilution claims.

Congress did not intend such an outcome. If all dilution claims, including Federal claims, are barred by registration, it becomes difficult to cancel a diluting trademark that is registered. This encourages illegitimate trademark holders to register diluting trademarks, which forces legitimate trademark holders to expend greater resources to monitor registrations, as well as other trademarks being used in commerce. That is why I introduced H.R. 6215 to amend the Federal Trademark Dilution Act.

This bill simply reformats the affected provision to clarify that Federal registration only constitutes a complete bar to a State claim based on dilution, or actual or likely damage or harm to the distinctiveness or reputation of a trademark. The change applies prospectively.

This bill ensures that the trademark community is protected from those who seek to use this loophole as a way to disparage legitimate trademarks and cost their owners time and money.

The only change to the bill, as reported, is a technical correction to a boilerplate reference regarding the date of enactment of the Trademark Act of 1946. The reported version inaccurately identifies the date of enactment as July 6, 1946. The correct date is July 5, 1946.

I urge my colleagues to support H.R. 6214, and I reserve the balance of my time.


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