Hearings held to amend Federal Trademark Dilution Act

In light of the Supreme Court's decision in Moseley v V Secret Catalogue Inc, the US House of Representatives Subcommittee on Courts, the Internet and Intellectual Property of the Committee on the Judiciary has held a hearing on proposed amendments to the US Federal Trademark Dilution Act.

The suggested amendments include:

• clarifying that actual harm is not a prerequisite for injunctive relief;
  
  
• defining blurring and tarnishment;
  
  
• enumerating specific defences to a dilution action;
  
  
• increasing the threshold for the fame of a trademark while denying protection for marks that are famous only in niche markets; and
  
  
• specifying that state remedies for dilution are not pre-empted.

Four witnesses testified before the subcommittee on the proposed amendments:

• Jacqueline A Leimer, President of the International Trademark Association;
  
  
• Robert W Sacoff, Chair of the American Bar Association IP Section;
  
  
• Marvin J Johnson, Legislative Counsel for the American Civil Liberties Union; and
  
  
• David C Stimson, Chief Trademark Counsel for Eastman Kodak Company.

The subcommittee will now have an opportunity to further consider the proposed amendments in light of the comments made by the four witnesses. At present, there is no pending legislation in the House of Representatives to amend the Federal Trademark Dilution Act.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC