Free Reply in Support of Motion - District Court of Arizona - Arizona

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I 2 3 43(c), ntay be caDceld Dursuart to h llroceedirs bronght under eiiher seclion14 or seetion 24." (b) OpposlrloN.-Sectim 13(a) of thc Tradcnarh the first

4 ,Art of 1946 (15 I-'.S.C.1063(a))is anende(l

5 seuteffe br strikirg "as a rcsult of dilution" and inserting 6 "the rcgistrntion of any nmrk {'bich q'ould b likeh' ro 7 cause dilution by bluning or dihrtirDby tarnishuent". 8 (c) (-1.\NcELLArIoN.-SectioD of ihe Tra(lcnmrk 14

9 Act of 1946 (15 ILS.C. 1064) is amendd, the matrcr in l0 preceding pnrA$'aph(1)ll 12 13 14 !5 16 17 18 19 20 . (1) by shiking ", includins as a .esult of.tiluti(,n llnder sectn,n 43G),"; and (2) insefths "(A) fu rlhich the con$tructive use dAte i$ after the d'rte on which the pctitioner,s rnark becamefarnousand ihich would be tikeh. to causdililutnrn Ly Llurrins or ilihinrn Uy tarnishment under section43(c), or (B) on srounds oiher than diluiion by blurring or dilurion by rnrnishDeDr,' after "Februarv 20, 1905". kl) llur(s !'ot't,tu) Su|r'rrltntuN't'AL RD(lsl,Dn,-

2 I The secondsentence seciim 24 of tho Tm(lemark Ad of 22 ot l91t], (15 tl.S.C. 1092) is amonded rc ,t as fi,l1,tr$, r, 23 "\\'henerer anv pelsonhelielcsthdt snetrpelsonis or Nill 24 l)o dnnragod thr, rccistrati,)D a nHrk (,Dthc sut)l)l{bv of 25 rnentalregister-

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84 8
I 2 3 4 5 6 7 "(1) for $'hich ttrc effecfi frlins date i$ after the dete on Nhich such l)rson's mirL became fRrnous snd *hich would be likeb'to 0auseclilutiou by bluning or dilution by tftmishment under section 43(c), or "(2) or gmunds otler thAD clilution bl'blurring or dilutioD by tarnishrDent,

8 such penon nlay nt any time, upon payment of the pre9 scribed fee ard the 6ling of a petition rtatillg the gn)u]rd 10 theEfor, apply to the Dircctor to cnocel such registral1 tion.". 12 (e) DEnNIrroNs.-SdrtioD 45 of thc Trademrrk Act

l3 ,)f 1946(15 II.S.O.1127)is amenderl strikinsthe .lelibv 14 nition rlAtinst! "diiution".

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chairman sENsENBnElrN"". ell ,,orv ,,'itltout objection, the prevrous questronis orderedon reporting che bills favorably wrth H.R. 683 beinc reponed favorablv as amended. And the vote will be uakenat ihe fime that a repoiting quo"um appears. flntervenins business.l If Chairman SrnseNBRllrNER. there are no further amendments, without objection, the previous question is ordered favombly reDortine Senate 167. ' We are still one shon of a reponins quorum.I would ask the Members p.esent to be patient, and as eo;n as we rcund up-here we eo. ThCvhave been rounded up. tlauahtr.j Tf,e prer;rousquestion hes been ordeied on repoi,ing favorably billarSenate167,H.R.683,H.R. 1036,H.R. 1037and rhe followrne H.R. 1038. So many as are in favor of reportmg [hese bills favorably will say aye. Oooosed. no? Tfri aye6 appear to have it. The ayeB have it, and the bills ale reDorted favorably. Without obiecti;n. rhosebills which were amendedhere. meaninp H.R. 683. be reDoned favorablv to the House rn the form of a ".i[ incorporaling the sinsle amendftentiir the natureof a substrtute, amendmentsadoptedhere today. That unanimous consent request al.o includesSenate 167 as amended. Is tlere any objection? Untewenins business.l all Chai"manStNseNsneNNER. Okay. Wirhout objection. Members will be given 2 days as provided by House rules, in which to submit additional dissenting supplementalor minority views, and without.objection the stafT tu directed to make any technical and co ormmgrnanges. unrcrvenrng Dus'ness.l Chairman SENSENBRENNER. beins no further business to There comebeforethe Commrttee.the Commrtte;stands adjourned. was adjou"ned.] at a.m.,the Committee lwhereupon. 10r17

o

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PUBLIC LAW 109-312-OCT.6. 2006

TRADEMARK DILUTIONRE\iISION ACT OF 2006

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120STAT.1730

PUBLICLAW 109-312-OCT.6, 2006

Public Law 109-312 109th Congress An Act
To anend the Tradenark Act of 1946with respecito drlution by bluring or

tlI.R 683]
Be it enacted. by the Senate and. House of Representdtiues the United Stat6 of Americd in ConSrcss assenbled, of

l5 usc 1051

SECTION 1. SHORT TIILE.

(a) SrIoRr TITLE.-This Act may be citd as th "Trademark Dilution Revision Act of 2006". (b) REFERENCES.-Anyreference in this Act to the Trademark Act ot 1946 shall be a reference to th Act entitled "An Act to provide for the registration and prctectior of trademarks used in commerce, to carry out the pmvisioN of cerlain intemational conventions,and for other purposes",approved JuIy 5, 1946 (r5 U.S.C.1051et Beq.). SEC.2. DIL(IIION EYBLURRINC| DILUTIONBY TARMSEMENI. Section 43 of the Tmdemark Act of 1946 (15 U.S.C. 1125) (1) by striking subsection (c) and inserting the following: '(c) DLU'rroN By BLURRTNG: DILU'rIoN By TaRr.rrsIn!,rENT. "(1) INJUNcTnt RELTEF.-Subject tlle principlesofequity, to th owner of a famous mark that is distinctive. inherentlv or through acquired distinoiveness, shall be entirled ro a; irdunction agaimt another person who, at any time after th ormer's mark has becomefamous, commncs use ol a mark or trade nam in commercethat is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardlessof the presence absence actual or likely confuor of sion, ofcompetition,or ofactual economrc mJury. "(2) DEFrMrIoNs. {A) For puryoses of paragraph (l), a mark is famous if it tu widely recognizedby the general conEuming 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 possesgesthe requisite degree of recognition, t}le court may consider all relevant factors, including the fol, lowmg: "(i) The duration, extent, and geographic reach of adveftising and publicity of the mark, whethr advertised or publicizedby the owner or third parties. "(ii) The amount, volume, and seographic extent of salesofgoodsor senices offrcdunder the mark. "(iii) The extent of actual recoa.nitionol the mark.

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PUBLICLAW 109-312-OCT.6, 2006

120 STAT. 1731

"(iv) Wheiher the inark was resisiered under the Act of March 3, 1881, or the Act of February 20, 1905, or on ihe principal register. "(B) For purposesof paragraph (1), 'dilution by bluring' is associationarisins from the similarity between a mark or trad name and a famous mark that impairs the distinctiveness of the famous mark. In deteminins whether a mark or trade name is likely to cause dilution by bluring, th court may considerall relevant factors,includins the fouowing: "(i) Th degreeofsimilaity betweenthe mark or trade name and the famoffi mark. "(ii) The desreeof 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 th "(iv) The degree of recognition of the famous mark. "(v) Wlether the user of the mark or hade name intended to create an associationwith the famous mark. betweenthe mark oi tlade "(vi) Ary actual association name and the famousmark. "(C) For purposes of paragraph (1), 'dilution by tarnishment' is association arising from the similarity between a mark or tmde name and a famous mark that harms the reputation of the famousmark. "(3) Excl,usroNs.-The following shall not be actionabl as dilution by bluring o. dilution by tarnishment under this "(A) Ary fair use, includins a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by anothr pe$on other than as a desigDationof source for the pefton's own goods or ervices,includins use in connection with"(i) advertising ol promotion that permits consumem ro comparegooosor sen'lces; or "(ii) idntifying and psrodyine, criticizing, or com, menting upon the famous mark owner or the goods or services ofthe famousma* owner. "(B) All forrnsof news repolting and news commentary. "(C) Anv noncommercial ofa mark. use "(4) BURDEN pRooF.-In a civii action for trade dress oF dilution under this Act for trade dress not rcisterd on the pnncipalregister, pprson the who assefls tradeJressproreoron has the burden of proving that"(A) the claimed trade drcss, taken as a whole, is not functional and is famous;and "(B) if the claimed trsde d.ess includes ary mark or marks resisteredon the principal register. the unregis(ered matrer. laken as a whole,is famousseparsteand apan from any fqme ofsuch registeredmarks. REMEDIES.-Inan action brousht under "(5) ADDITIoNAT thr. subsection, ownerofthe famous rhe mark shall b'eenrrrled to iniunctive relief as set forth in section 34. The owner of the famous mark shall also be entitled to the remedies set forlh in sections 35(a) and 36, subject to the discretion of the court and the principlesofequity if

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120 STAT. 1732

PUBLIC LAW 109-312-OCT. 6,2006

"(A) the mark or trade name that is iikeiy to cause dilution by blurfing or dilution by tarnishment was first used in commerce the person against whom the inJunc' by tion is sousht after the date of enactmntofthe Trademark Dilution R;vision Act of2006; snd "(B) in a claim arisins under this subsection"(i) by reason of dilution by bluring, the peNon iniunciion is sought willlully against whom 'he of intendedlo lrade on ihe recosnitron Lhe famous rnark;or .(ii) by reason of dilution by tarnishment, the per son asainsl whom Ihe injunctionis sought willfull) inLendedto hann th reDutatronof the famous mark. .t6) OWNERSHIP VAI-IDfiECISII{ATION I O\{PLETLBA-R OF A To AcrloN.-The ownership by a Dersonof a !alid reqisrration under the Act of March i, 1881,or lhe Acl of Febiuary 20, 1905, or on the principal register under this Act shall be a completebEr lo an action against that person.with re"pe(t to that mark, that"(A)(i) iE brought by another person under the common law or a statute ofa State; and "(ii) seeks to prevent dilution by btur ns or dilution bv tarnishment: or " "(B) asserli any claim of actul or likely damage or harm to the distinctivenessor reputation of a mark, 1abel, or form of advenisement. cl-AltsE.-Nothins in this subsectionshall ba "(7) SAVINeS conslrued impeir, modify.or .uper.eaethc applicabrlit)of to the paient laws;fth; Uniied States:";and (2) in subsection (d)(1)(B)(i)(Ix), st kins "(cX1)ofsection by 43" and insertins "(c)". SEC. CONFORMING 9. AMENDMENTS. (a) MAIty,s REGTSTMBLE THE PRINCTPA! oN REcIsTDR.-Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(0)is amended(1) by striking the last two Bentencesj and r2l by adding at the end the follo\ring: A mark which would be Lkely to causedilution by bJurring or drlutron by tamishment uirder section43{c,.m;y be retuscd regi"rrarioir only pursuant to a proceeding brought undcr s"clion 13. A regislration a mark which wouldbe likely ro cau"ed:lution lor by bluffing or dilution by tarnishment under section 43(c), purcuant to a proceeding may be canceled brought under aither section14 or section24.". (b) OPPoslrloN.-Section 13(a) of the Trademark Act of 1946 ,15 US.C. I063\a, i. amendedin rhe firsr scnrence srnkrns by -as a result of drluflon and rnserrinsthe resistreli;n ol ani mark rrhich would be likely to causedilution by biurrine or dilutio;r by tarnishment". (c) CANcELLATIoN.-Section of the T.ademaik Act of 1946 14 (15 U.S.C. 1064) is amended,in the matter precedins paracraph (1) by striking ", including as a result of dilution under section 43(c)," and insertins ", inctudins as a result of : likolihood of dilution by blurring or dilution by tarnishment under section43(c),". (d) MARKS FoRTHESUPPLEMENTAL REcIsTER,-The secondsentence of section 24 of the Tradema.k Act of 1946 (15 U.S.C. 1092r is amendedto read as follows:

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PUBLIC LAW 109-312-OCT.6. 2006

120STAT.1?33

''Wtenever anv oerson believes that such Derson is or will be daftaged by tlie iegiskadon of a mark on tfie supplemental reg"(1) for which the effective filing date is after the date orr which such per:son'smark became faDous and which would be Iikely to cause drlution by blurring or dilution by tamishment under section43(c);or "(2) on srounds other than ditution by blurring or dilution by tamishment, Buch peffon may at any tim, upon paymnt of the prescribed fee and the filing of a ptition stating the ground therefor, apply to th Director to cancel such registra(e) DEFINITIoNS.-Section 45 of tl}e Tmdemark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition rclating to the term "dilution". Appmved October6, 2006.

LEGISLATIVE HISTORY_H.R. 683: R!!9&T9: No 10s-23 (conm- on rre Judiciary). 4qlj! CONCRES9IONAL RECORD: vol. lsl \2005JArr. 19,@nsidered D$!ed Houe and vol. Isr '2006':Mar.8, ronsidred p;E*d Snrra, and anndd SeDt. Hous 26, concwd in Senare amendnent, -

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