Pub.L. 104-99 Making appropriations for fiscal year 1996 to make a downpayment toward a balanced budget, and for other purposes. <> ...

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Public Law 104-98
104th Congress

                                 An Act


 
To amend the Trademark Act of 1946 to make certain revisions relating to 
 the protection of famous marks. <<NOTE: Jan. 16, 1996 -  [H.R. 1295]>> 

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled, <<NOTE: Federal 
Trademark Dilution Act of 1995.>> 

SECTION 1. <<NOTE: 15 USC 1051 note.>> SHORT TITLE.

    This Act may be cited as the ``Federal Trademark Dilution Act of 
1995''.

SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

    For purposes of this Act, the Act entitled ``An Act to provide for 
the registration and protection of trade-marks 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 and following), 
shall be referred to as the ``Trademark Act of 1946''.

SEC. 3. REMEDIES FOR DILUTION OF FAMOUS MARKS.

    (a) Remedies.--Section 43 of the Trademark Act of 1946 (15 U.S.C. 
1125) is amended by adding at the end the following new subsection:
    ``(c)(1) The owner of a famous mark shall be entitled, subject to 
the principles of equity and upon such terms as the court deems 
reasonable, to an injunction against another person's commercial use in 
commerce of a mark or trade name, if such use begins after the mark has 
become famous and causes dilution of the distinctive quality of the 
mark, and to obtain such other relief as is provided in this subsection. 
In determining whether a mark is distinctive and famous, a court may 
consider factors such as, but not limited to--
            ``(A) the degree of inherent or acquired distinctiveness of 
        the mark;
            ``(B) the duration and extent of use of the mark in 
        connection with the goods or services with which the mark is 
        used;
            ``(C) the duration and extent of advertising and publicity 
        of the mark;
            ``(D) the geographical extent of the trading area in which 
        the mark is used;
            ``(E) the channels of trade for the goods or services with 
        which the mark is used;
            ``(F) the degree of recognition of the mark in the trading 
        areas and channels of trade used by the marks' owner and the 
        person against whom the injunction is sought;
            ``(G) the nature and extent of use of the same or similar 
        marks by third parties; and

[[Page 109 STAT. 986]]

            ``(H) whether the mark was registered under the Act of March 
        3, 1881, or the Act of February 20, 1905, or on the principal 
        register.

    ``(2) In an action brought under this subsection, the owner of the 
famous mark shall be entitled only to injunctive relief unless the 
person against whom the injunction is sought willfully intended to trade 
on the owner's reputation or to cause dilution of the famous mark. If 
such willful intent is proven, 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.
    ``(3) 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 shall be a complete bar to an action against that 
person, with respect to that mark, that is brought by another person 
under the common law or a statute of a State and that seeks to prevent 
dilution of the distinctiveness of a mark, label, or form of 
advertisement.
    ``(4) The following shall not be actionable under this section:
            ``(A) 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.
            ``(B) Noncommercial use of a mark.
            ``(C) All forms of news reporting and news commentary.''.

    (b) Conforming Amendment.--The heading for title VIII of the 
Trademark Act of 1946 is amended by striking ``AND FALSE DESCRIPTIONS'' 
and inserting ``, FALSE DESCRIPTIONS, AND DILUTION''.

SEC. 4. DEFINITION.

    Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended 
by inserting after the paragraph defining when a mark shall be deemed to 
be ``abandoned'' the following:
    ``The term `dilution' means the lessening of the capacity of a 
famous mark to identify and distinguish goods or services, regardless of 
the presence or absence of--
            ``(1) competition between the owner of the famous mark and 
        other parties, or
            ``(2) likelihood of confusion, mistake, or deception.''.

[[Page 109 STAT. 987]]

SEC. 5. <<NOTE: 15 USC 1125 note.>> EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect on 
the date of the enactment of this Act.

    Approved January 16, 1996.

LEGISLATIVE HISTORY--H.R. 1295:
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HOUSE REPORTS: No. 104-374 (Comm. on the Judiciary).
CONGRESSIONAL RECORD, Vol. 141 (1995):
            Dec. 12, considered and passed House.
            Dec. 29, considered and passed Senate.

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