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THE TRADEMARK DILUTION REVISION ACT OF 2006

THE TRADEMARK DILUTION REVISION ACT OF 2006. Paul W. Reidl President, International Trademark Association and Associate General Counsel, E. & J. Gallo Winery November 20, 2006. Trademark Infringement. “Likelihood of consumer confusion.” Focuses on protecting the consumer.

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THE TRADEMARK DILUTION REVISION ACT OF 2006

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  1. THE TRADEMARK DILUTION REVISION ACT OF 2006 Paul W. Reidl President, International Trademark Association and Associate General Counsel, E. & J. Gallo Winery November 20, 2006

  2. Trademark Infringement • “Likelihood of consumer confusion.” • Focuses on protecting the consumer.

  3. Example: GALLO Beer

  4. Trademark Dilution • “Famous Marks.” • Blurs consumer identification with the mark or tarnishes its image. • Focuses on protecting the trademark itself.

  5. Example: GALLO Playing Cards • E. & J. Gallo Winery v. Pasatiempos Gallo S.A., 905 F.Supp. 1403 (E.D. CA 1994.)

  6. Previous Dilution Efforts • State laws (MA, NY, CA, TX, others.) • Stripped from the 1988 TLRA. • Unsuccessful effort in the early 1990’s. • Trademark Dilution Act of 1995.

  7. A Lack of Statutory Parallelism • Section 43 (a) of the Lanham Act (trademark infringement): “likelihood of confusion.” • Section 43 (c) of the Lanham Act (trademark dilution): “causes dilution.”

  8. Mosely v. V Secret Catalogue,537 U.S. 418 (2003) • The Court reads the “causes dilution” standard literally. • “This text unambiguously requires a showing of actual dilution, rather than a likelihood of dilution.”

  9. INTA Special Task Force • Decision 1: Reverse the Mosely holding. • Decision 2: Seek comprehensive reform.

  10. Specific Changes to the Law • “Likelihood of Dilution.” • All famous, distinctive marks may apply. • No “niche fame;” the mark must be “widely recognized by the general consuming public of the United States.” • Specific fame factors. • Defined dilution by blurring.

  11. Specific Changes to the Law • Dilution by blurring must be caused by the similarity of the two marks. • Dilution by tarnishment expressly defined. • Detailed defenses: parody, fair use, commentary, news reporting, noncommercial uses, etc. • No preemption of state laws.

  12. House Consideration • Opposition from “free speech” and public interest groups. • Minor modifications to defenses by the ACLU. • Passed on April 19, 2005, 411 – 8.

  13. Senate Issue #1 • Retailer objection to trade dress. • Solution: Section 43 (c) (4): • Applies to unregistered trade dress only. • The plaintiff has the burden of proof on non-functionality. • The trade dress itself must be famous sans any trademarks. • Patent laws unaffected (Section 43 (c) (7)).

  14. Senate Issue #2 • On-line providers desire express protection for those who facilitate “fair use.” • Language added to Section 43 (c)(3)(A).

  15. Senate Issue #3 • Old Section 43 (c) (4)(a): “The following shall not be actionable under this section.” • Proposed bill Section 43 (c) (3): “The following shall not be actionable … under this subsection.” • Bosley Medical Institute v. Kremer, 403 F.3d 672 (9th Cir. 2005.)

  16. Senate Issue #4 • ACLU changes its mind on defenses and original language re-inserted into the bill.

  17. The Senate Surprise • Section 43 (c) (6): “The ownership by a person of a valid registration … on the principal register … shall be a complete bar to an action against that person” for dilution by blurring or tarnishment. • Applies to state and federal causes of action.

  18. The Saga Continues in the House • Another run is made at the Section/subsection language. • The bill stalls for various reasons. • Extensive lobbying.

  19. Paul Eats Crow

  20. Cautions for Practitioners • Show restraint; don’t over-reach. • Respect the defenses. • Remember the special rules for unregistered trade dress. • Don’t be bashful about dilution claims; educate the Judge. • You now need to prove blurring; it will no longer be presumed.

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