Trademark Dilution Revision Act of 2006
Rep. Lamar Smith (R-TX)Legislative Activity
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Became Public Law No: 109-312.
October 6, 2006
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Introduced in House
February 9, 2005
Referred to the House Committee on the Judiciary.
February 9, 2005
Referred to the Subcommittee on Courts, the Internet, and Intellectual Property.
February 15, 2005
Subcommittee Hearings Held.
February 17, 2005
Subcommittee Consideration and Mark-up Session Held.
March 3, 2005
Forwarded by Subcommittee to Full Committee (Amended) by Voice Vote.
March 3, 2005
Reported (Amended) by the Committee on Judiciary. H. Rept. 109-23.
March 17, 2005
Placed on the Union Calendar, Calendar No. 9.
March 17, 2005
Mr. Sensenbrenner moved to suspend the rules and pass the bill, as amended.
April 19, 2005 • 2:56 PM
Considered under suspension of the rules. (consideration: CR H2121-2123)
April 19, 2005 • 2:56 PM
DEBATE - The House proceeded with forty minutes of debate on H.R. 683.
April 19, 2005 • 2:56 PM
At the conclusion of debate, the Yeas and Nays were demanded and ordered. Pursuant to the provisions of clause 8, rule XX, the Chair announced that further proceedings on the motion would be postponed.
April 19, 2005 • 3:08 PM
Considered as unfinished business. (consideration: CR H2125-2126)
April 19, 2005 • 6:32 PM
Passed/agreed to in House: On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 411 - 8 (Roll no. 109).(text: CR H2121-2122)
April 19, 2005 • 6:50 PM
On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 411 - 8 (Roll no. 109). (text: CR H2121-2122)
April 19, 2005 • 6:50 PM
Motion to reconsider laid on the table Agreed to without objection.
April 19, 2005 • 6:50 PM
Received in the Senate and Read twice and referred to the Committee on the Judiciary.
April 20, 2005
Committee on the Judiciary. Committee consideration and Mark Up Session held.
November 3, 2005
Committee on the Judiciary. Ordered to be reported with an amendment in the nature of a substitute favorably.
February 16, 2006
Committee on the Judiciary. Reported by Senator Specter with an amendment in the nature of a substitute. Without written report.
February 27, 2006
Placed on Senate Legislative Calendar under General Orders. Calendar No. 366.
February 27, 2006
Passed Senate with an amendment by Unanimous Consent. (consideration: CR S1921-1923; text as passed Senate: CR S1921-1923)
March 8, 2006
Message on Senate action sent to the House.
March 8, 2006
Mr. Sensenbrenner moved that the House suspend the rules and agree to the Senate amendment.
September 25, 2006 • 4:08 PM
DEBATE - The House proceeded with forty minutes of debate on the motion to suspend the rules and agree to the Senate amendment to H.R. 683.
September 25, 2006 • 4:08 PM
Resolving differences -- House actions: On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote.(consideration: CR H6963-6965; text as House agreed to Senate amendment: CR H6963-6964)
September 25, 2006
On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote. (consideration: CR H6963-6965; text as House agreed to Senate amendment: CR H6963-6964)
September 25, 2006 • 4:16 PM
Motion to reconsider laid on the table Agreed to without objection.
September 25, 2006 • 4:16 PM
Presented to President.
September 29, 2006
Signed by President.
October 6, 2006
Became Public Law No: 109-312.
October 6, 2006
Voting History
1 vote recorded • Roll call available
Floor Debate
16 membersWhat members said about H.R. 683 on the floor
+11
Floor Debate
16 membersWhat members said about H.R. 683 on the floor
Mr. President, I ask Unanimous consent that the Committee on Agriculture, Nutrition and Forestry be authorized to conduct a business meeting during the session of the Senate on Thursday, October 6,…
Mr. President, I ask unanimous consent that the Committee on Banking, Housing, and Urban Affairs be authorized to meet during the session of the Senate on October 20, 2005, at 10 a.m. to conduct a…
Mr. President, I ask unanimous consent that the Committee on Armed Services be authorized to meet during the session of the Senate on February 16, 2006, at 9:30 a.m., in open session to receive…
Mr. President, I ask unanimous consent that the Committee on Agriculture, Nutrition, and Forestry be authorized to conduct a hearing during the session of the Senate on Thursday, November 17, 2005 at…
Mr. President, I ask unanimous consent that the Committee on Armed Services be authorized to meet during the session of the Senate on September 29, 2005, at 9:30 a.m., in open session to receive…
Show 8 more
Mr. President, I ask unanimous consent that the Committee on Armed Services be authorized to meet during the session of the Senate on October 27, 2005, at 9:30 a.m., in closed session to mark up S.…
Mr. Speaker, I move to suspend the rules and pass the bill (H.R. 683) to amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment, as amended. Mr. Speaker, I ask unanimous…
Mr. Speaker, I rise in strong opposition to H.R. 683, the Trademark Dilution Revision Act. Trademark law emanates from the commerce clause. It was originally about consumer protection, ensuring…
Mr. Speaker, I rise once again to oppose the Trademark Dilution Revision Act. Trademark law was originally about consumer protection, ensuring consumers were not confused or harmed by the misuse of a…
Mr. Speaker, I move to suspend the rules and concur in the Senate amendment to the bill (H.R. 683) to amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment. Mr. Speaker,…
Mr. Speaker, I yield myself such time as I may consume. I rise in support of House passage of H.R. 683. This bill makes important changes designed to protect famous trademark owners against the use…
Mr. Speaker, I thank the chairman of the Committee on the Judiciary for yielding me this time. Mr. Speaker, trademark law is relevant to the life of every consumer in America. Trademarks give…
Mr. President, I ask unanimous consent that the Committee on Banking, Housing, and Urban Affairs be authorized to meet during the session of the Senate on November 3, 2005, at a time to be…
Show 8 more
Mr. Speaker, I thank the gentleman from Wisconsin (Mr. Sensenbrenner), the chairman of the Judiciary Committee, for yielding me this time. Mr. Speaker, trademark law is relevant to the life of every…
Mr. President, I am pleased that today the Senate is going to pass an important piece of legislation, the Trademark Dilution Revision Act, HR 683. The principal purpose of this law is to clarify…
Mr. Speaker, I yield myself such time as I may consume. Mr. Speaker, I support House passage of this measure, H.R. 683, as amended and passed by the Senate. An almost identical version of this bill…
Mr. Speaker, on the evening of April 19, I missed three Rollcall votes. I respectfully request the opportunity to record my position on Rollcall votes. It was my intention to vote ``yes'' on Rollcall…
Mr. Speaker, the fair use exception is of great Importance to ensure that the threat of dilution claims does not chill the exercise of free speech, particularly in expressive works of authorship.…
Mr. President, I ask unanimous consent that the Senate proceed to the immediate consideration of Calendar No. 366, H.R. 683. Mr. President, I ask unanimous consent that the committee- reported…
Mr. Speaker, I was absent from votes in the House on Tuesday, April 19, due to a previous and unavoidable commitment. Therefore, I was unable to vote on H.R. 683 (rollcall No. 109), H.J. Res. 19…
Mr. Speaker, on rollcall No. 109 I was inadvertantly detained. Had I been present, I would have voted ``yea.''
Bill Text
8 versions available
[Congressional Bills 109th Congress]
[From the U.S. Government Publishing Office]
[H.R. 683 Enrolled Bill (ENR)]
H.R.683
One Hundred Ninth Congress
of the
United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Tuesday,
the third day of January, two thousand and six
An Act
To amend the Trademark Act of 1946 with respect to dilution by blurring
or tarnishment.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
(a) Short Title.--This Act may be cited as the ``Trademark Dilution
Revision Act of 2006''.
(b) References.--Any reference in this Act to the Trademark Act of
1946 shall be a reference to the Act entitled ``An Act to provide for
the registration and protection of trademarks used in commerce, to
carry out the provisions of certain international conventions, and for
other purposes'', approved July 5, 1946 (15 U.S.C. 1051 et seq.).
SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.
Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is
amended--
(1) by striking subsection (c) and inserting the following:
``(c) Dilution by Blurring; Dilution by Tarnishment.--
``(1) Injunctive relief.--Subject to the principles of equity,
the owner of a famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time after the
owner's mark has become famous, commences use of a mark or trade
name in commerce that is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of competition,
or of actual economic injury.
``(2) Definitions.--(A) For purposes of paragraph (1), a mark
is famous if it is widely recognized by the general consuming
public of the United States as a designation of source of the goods
or services of the mark's owner. In determining whether a mark
possesses the requisite degree of recognition, the court may
consider all relevant factors, including the following:
``(i) The duration, extent, and geographic reach of
advertising and publicity of the mark, whether advertised or
publicized by the owner or third parties.
``(ii) The amount, volume, and geographic extent of sales
of goods or services offered under the mark.
``(iii) The extent of actual recognition of the mark.
``(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
``(B) For purposes of paragraph (1), `dilution by blurring' is
association arising from the similarity between a mark or trade
name and a famous mark that impairs the distinctiveness of the
famous mark. In determining whether a mark or trade name is likely
to cause dilution by blurring, the court may consider all relevant
factors, including the following:
``(i) The degree of similarity between the mark or trade
name and the famous mark.
``(ii) The degree of inherent or acquired distinctiveness
of the famous mark.
``(iii) The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark.
``(iv) The degree of recognition of the famous mark.
``(v) Whether the user of the mark or trade name intended
to create an association with the famous mark.
``(vi) Any actual association between the mark or trade
name and the famous mark.
``(C) For purposes of paragraph (1), `dilution by tarnishment'
is association arising from the similarity between a mark or trade
name and a famous mark that harms the reputation of the famous
mark.
``(3) Exclusions.--The following shall not be actionable as
dilution by blurring or dilution by tarnishment under this
subsection:
``(A) Any fair use, including a nominative or descriptive
fair use, or facilitation of such 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 use in connection
with--
``(i) advertising or promotion that permits consumers
to compare goods or services; or
``(ii) identifying and parodying, criticizing, or
commenting upon the famous mark owner or the goods or
services of the famous mark owner.
``(B) All forms of news reporting and news commentary.
``(C) Any noncommercial use of a mark.
``(4) Burden of proof.--In a civil action for trade dress
dilution under this Act for trade dress not registered on the
principal register, the person who asserts trade dress protection
has the burden of proving that--
``(A) the claimed trade dress, taken as a whole, is not
functional and is famous; and
``(B) 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.
``(5) Additional remedies.--In an action brought under this
subsection, the owner of the famous mark shall be entitled to
injunctive relief as set forth in section 34. The owner of the
famous mark shall also be entitled to the remedies set forth in
sections 35(a) and 36, subject to the discretion of the court and
the principles of equity if--
``(A) the mark or trade name that is likely to cause
dilution by blurring or dilution by tarnishment was first used
in commerce by the person against whom the injunction is sought
after the date of enactment of the Trademark Dilution Revision
Act of 2006; and
``(B) in a claim arising under this subsection--
``(i) by reason of dilution by blurring, the person
against whom the injunction is sought willfully intended to
trade on the recognition of the famous mark; or
``(ii) by reason of dilution by tarnishment, the person
against whom the injunction is sought willfully intended to
harm the reputation of the famous mark.
``(6) Ownership of valid registration a complete bar to
action.--The ownership by a person of a valid registration under
the Act of March 3, 1881, or the Act of February 20, 1905, or on
the principal register under this Act shall be a complete bar to an
action against that person, with respect to that mark, that--
``(A)(i) is brought by another person under the common law
or a statute of a State; and
``(ii) seeks to prevent dilution by blurring or dilution by
tarnishment; or
``(B) asserts any claim of actual or likely damage or harm
to the distinctiveness or reputation of a mark, label, or form
of advertisement.
``(7) Savings clause.--Nothing in this subsection shall be
construed to impair, modify, or supersede the applicability of the
patent laws of the United States.''; and
(2) in subsection (d)(1)(B)(i)(IX), by striking ``(c)(1) of
section 43'' and inserting ``(c)''.
SEC. 3. CONFORMING AMENDMENTS.
(a) Marks Registrable on the Principal Register.--Section 2(f) of
the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--
(1) by striking the last two sentences; and
(2) by adding at the end the following: ``A mark which would be
likely to cause dilution by blurring or dilution by tarnishment
under section 43(c), may be refused registration only pursuant to a
proceeding brought under section 13. A registration for a mark
which would be likely to cause dilution by blurring or dilution by
tarnishment under section 43(c), may be canceled pursuant to a
proceeding brought under either section 14 or section 24.''.
(b) Opposition.--Section 13(a) of the Trademark Act of 1946 (15
U.S.C. 1063(a)) is amended in the first sentence by striking ``as a
result of dilution'' and inserting ``the registration of any mark which
would be likely to cause dilution by blurring or dilution by
tarnishment''.
(c) Cancellation.--Section 14 of the Trademark Act of 1946 (15
U.S.C. 1064) is amended, in the matter preceding paragraph (1) by
striking ``, including as a result of dilution under section 43(c),''
and inserting ``, including as a result of a likelihood of dilution by
blurring or dilution by tarnishment under section 43(c),''.
(d) Marks for the Supplemental Register.--The second sentence of
section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to
read as follows:
``Whenever any person believes that such person is or will be damaged
by the registration of a mark on the supplemental register--
``(1) for which the effective filing date is after the date on
which such person's mark became famous and which would be likely to
cause dilution by blurring or dilution by tarnishment under section
43(c); or
``(2) on grounds other than dilution by blurring or dilution by
tarnishment, such person may at any time, upon payment of the
prescribed fee and the filing of a petition stating the ground
therefor, apply to the Director to cancel such registration.''.
(e) Definitions.--Section 45 of the Trademark Act of 1946 (15
U.S.C. 1127) is amended by striking the definition relating to the term
``dilution''.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.