The bill was introduced in the wake of a ruling
by the Supreme Court which said that in order to succeed in a
dilution action, a trade mark owner had to show evidence that a
competitor caused actual harm by using a "sound-alike" or "knockoff
name."
The case concerned lingerie retailer Victoria's Secret, which
had brought an action against a small Kentucky-based sex shop
called "Victor's Little Secret," claiming that the name diluted its
trade mark.
Ultimately, the Supreme Court found that use of the name
"neither confused any customers or potential customers, nor was
likely to do so."
Trade mark owners were not pleased with the ruling, and as a
result legislators are now seeking to change the law.
The proposed Trademark Dilution Revision Act of 2005 therefore
amends the 1995 Federal Trademark Dilution Act by providing
that:
- likely rather than actual dilution is necessary – creating a
lower burden of proof for trade mark owners;
- claimants do not need to show economic injury, competition or
"actual or likely confusion";
- the senior mark must be shown to be famous among the US public
in general, rather than in a particular location, or market
sector;
- both blurring (where the distinctiveness of the famous mark is
reduced) and 'tarnishment' (where the reputation of the famous mark
is harmed) are covered by the Act; and
- free speech rights – for news reporting or parodies, for
example – are specifically protected.
The bill will now be considered by the Senate.
