On October 6, the President signed into law the Trademark Dilution Revision Act of 2006. The new law allows owners of famous marks to get injunctive relief against the use of any mark or trade name in commerce that 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.
The new law clarifies that actionable dilution under the federal trademark statute includes dilution by either blurring or tarnishment. Dilution by blurring is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Dilution by tarnishment is an association that harms the reputation of the famous mark.
The new law is in response to the U.S. Supreme Court's decision Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), in which the Court, addressing a circuit split, stated that the Federal Trademark Dilution Act required the owner of a famous mark to show actual dilution rather than likelihood of dilution. The new law, which requires a showing of only likely not actual dilution, will make it easier for owners of famous marks to obtain injunctions.
At the same time, the new law may make it more difficult for a trademark owner to show that its mark is a famous mark that deserves protection from dilution. Under the new law, to be a famous mark, the mark must be widely recognized by the general consuming public of the United States. Prior to the new law, some courts had found that marks that were known only in niche markets could be considered famous marks. Thus, under the new law, a higher degree of fame will be required to qualify for protection from dilution.
Recognizing the need to balance First Amendment freedom of expression concerns, Congress included specific exceptions to liability under the new law. Congress recognized exceptions from liability for fair use, comparative advertising, news reporting and commentary, and any noncommercial use of a mark.
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