On September 25, 2006 the U.S. Trademark Dilution Revision Act of 2006 was sent to the President who is expected to sign the bill in the next few weeks. According to the International Trademark Association, the Act is in "response to the ruling of the Supreme Court in Moseley v. Victoria Secret, as well as the many splits in the federal circuits relating to the current dilution statute and the protection of famous marks in the United States."
The act provides for injunctions (regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury) to the owner of a distinctive mark that has become famous before another person begins using the mark in a manner that is likely to cause dilution by blurring or tarnishment. Dilution by blurring and dilution by tarnishment will also be grounds for opposition and cancelation of a registration.
A mark is "famous" if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. A court may consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.
"Dilution by blurring" is an association arising from the similarity between the marks that impairs the distinctiveness of the famous mark. Again, a court may consider all relevant factors when determining whether a mark is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.
"Dilution by tarnishment" is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
Additional remedies are also available if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.
The Act also provides a new incentive for federal trademark registration. Ownership of a valid registration will be a complete bar to an action under a state statute or common law and either 1) seeks to prevent dilution by blurring or tarnishment or 2) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
For more information on this topic, please contact William F. Heinze (email@example.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.
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