Trademark Dilution Revision Act signed into law

The US Congress has passed the Trademark Dilution Revision Act of 2006. The act, which was signed into law on October 6 2006, will replace the Federal Trademark Dilution Act (FTDA).

Unlike the FTDA, the new act makes it clear that an owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to seek injunctive relief against a person who adopts a mark or trade name after the owner's mark has become famous which:

"is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

In addition, the act permits owners of famous marks to seek profits, damages and costs, and the destruction of infringing articles, subject to the discretion of the court, for marks or trade names likely to cause dilution by blurring or tarnishment first used in commerce after enactment of the act where the other party wilfully intended to trade on the recognition of the famous mark or wilfully intended to harm the reputation of the famous mark.

The act was enacted in response to the US Supreme Court ruling in Moseley v V Secret Catalogue Inc, which interpreted the FTDA. In Moseley, the court concluded that owners of famous marks are required by the FTDA to prove actual dilution of their marks rather than a likelihood of dilution in order to obtain relief.

The act makes other clarifications to anti-dilution law which were absent in the FTDA. For example, it expressly sets forth that trade dress dilution is actionable for trade dress not registered on the principal US trademark register, where the party seeking protection proves that the claimed trade dress is not functional, is famous, and, if the trade dress includes any mark or marks registered on the principal register, that the unregistered matter is famous separate and apart from any fame of the registered marks.

The act also expands upon the fair use exclusion set out in the FTDA. It expressly excludes from actionable dilution claims, fair use in parody, criticism, and comments upon the famous mark owner or the goods or services of the famous mark owner.

Alan Dalinka, DLA Piper, Chicago

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