Trademark Dilution Act Passes U.S. House

On April 19, 2005, the Trademark Dilution Revision Act of 2005 (H.R. 683) was passed by the U.S. House of Representatives 411 - 8 (Roll no. 109).

The Act modifies provisions of the trademark law relating to dilution by allowing an owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, to an injunction against another person who commences use of a mark or trade name in commerce, after it has become famous, as a designation of source of the person's goods or services that is likely to cause dilution by blurring or tarnishment, regardless of the presence or absence of confusion, competition, or economic injury. The Act also

• Defines a mark as 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.
• Defines "dilution by blurring" as an association arising from the similarity between a designation of source and a famous mark that impairs the distinctiveness of the famous mark.
• Defines "dilution by tarnishment" as an association arising from the similarity between a designation of source and a famous mark that harms the reputation of the famous mark.
• Declares that certain acts are not actionable as dilution by blurring or dilution by tarnishment, including:

  (1) fair use of a famous mark by another person in comparative commercial
  advertising or promotion to identify the competing goods or services of the
  owner of the famous mark; (2) noncommercial use of a designation of source; and (3) all forms of news reporting and news commentary.

The legislation was in response to a 2003 Supreme Court decision against Victoria's Secret requiring proof of actual harm in order to prove dilution. "This is contrary to what Congress intended when it passed the dilution statute and is at odds with the concept of dilution," said Rep. Lamar Smith, R-Texas, reportedly told Associated Press. "Diluting needs to be stopped at the outset because actual damage can only be proven over time, after which the good will of a mark cannot be restored."