Monday, February 06, 2006

The Trademark Dilution Revision Act of 2005: tread carefully

This item has been moved to a new blog specifically set up to keep track of the Trademark Dilution Revision Act of 2005. It apparently (as of 06/2005) is still in committee. The comment is still here, but I have provided a link to the comment from the new blog. The link for the blog is this.

Here is the March 4, 2003 Supreme Court ruling
http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf “Moseley et al. DBA Victoria’s Little Secret v. Secret Catalogue, Inc., et. al.”

The text of the act is this link: Trademark Dilution Revision Act of 2005

1 comment:

Bill Boushka said...

Posted by Jonathan Mark on Wednesday, February 22, 2006

Moran Was Among The Overwhelming Majority Of Congressmen Who Voted For This Bill

8th Districter Bill Boushka of billboushka.blogspot.com has alerted me to the controversy over H.R. 683, the "Trademark Dilution Revision Act Of 2005", which passed the house by a wide bipartisan majority last year. Moran was among those voting yes.
The bill is now in the Senate. Its most recent action is:

2/16/2006: Committee on the Judiciary. Ordered to be reported with an amendment in the nature of a substitute favorably.
wecanstopthebox.com critiques the Trademark Dilution bill as follows:
We Can Stop The Big Box Stores!
Stop The Box is an activist movement dedicated to increasing public awareness of HR 683, also known as the Trademark Dilution Revision Act of 2005.

In a devastating blow to small businesses everywhere, the House of Representatives passed HR 683, essentially allowing big box stores and retail conglomerates the ability to use copyright law in a blatant attempt to run their competition out of business without having to worry about the burden of proof.

Most small businesses remain unaware that HR 683 can have a potentially deadly effect on their business. They are also unaware that HR 683 has been referred to the Senate for final review before being accepted as law.

Stop The Box aims to stop these big-box corporate outfits from the systematic elimination of small business in the United States.

Bill Boushka as a constituent wrote to Moran last year communicating these concerns. Among his concerns:
If this bill is really necessary, I would suggest adding a couple more detail clarification items in the definition of "dilution by blurring." (The "tarnishment" provision seems straightforward.) To the "blurring" list I would add (vii) the use of weak wordmarks based on common standard English words or idioms, especially phrases with political connotation, generally will prevent a trademark holder from claiming that a similar mark using these everyday words blurs its mark (viii) generally, injunctive relief may not be sought among the different current (16 or so) distinct business categories recognized by existing trademark administrative and statutory law; entities in different lines of business may still use the same or similar wordmarks.
Here is Moran's response:
Reply from Mr. Moran, April 1, 2005
Dear Mr. Boushka

Thank you for contacting me with your concerns about the Trademark Dilution Revision Act (H.R. 863). I appreciate hearing from you on this issue, and I benefit from having your input.

As you may know, trademark rights are unique in that they are based on both federal as well as state laws, which have caused confusion in the application of owner and consumer rights. To address this issue, Congress passed the Federal Trademark Dilution Act (PL-104-98) in 1996 to promote uniformity in the law for “famous” trademarks. PL 104-98 protected famous trademarks against dilution, whereby the use of similar slogans, icons, or logos could harm the reputation of the authentic trademark or confuse customer.

Following enactment of the new federal law, several circuit courts of appeal offered mixed interpretations and applications of the law. Specifically, regional courts had diverse rulings on what constituted a “famous” mark and also if an owner had to prove actual harm to a mark before pursuing litigation.

One of your concerns that has been brought to my attention, an issue that you brought up in your letter, was that the current Trademark Dilution Revision Act would have the effect of curbing free expression and allow companies to bring forth lawsuits more easily. To address the first concern, the Subcommittee on Courts, the Internet, and Intellectual Property adopted an amendment to H.R. 683 that crafted separate exemptions from a dilution cause of action for parody, comment, and criticism. It is critical that Congress do everything to ensure that our First Amendment rights are safeguarded, and the amended H.R. 683 speaks to that end.

Second, with the interpreted strict burden of proof established by several circuit courts, by the time measurable damage to the mark could be proved, too much time will have passed and the damage to the mark will have been done. By easing the burden of proof, H.R. 683 squares with what Congress initially intended when it originally passed trademark protection. And, because of the costs associated with bringing trials to court, I sincerely don’t believe that the explicit language in H.R. 683 will lead to excessive litigation.

I deeply appreciate your interest in this issue, and although we may disagree on the intentions of H.R. 683, please continue sharing your thoughts on legislation. I benefit from having a broad perspective from my entire constituency. Also rest assured that I will keep your thoughts in mind should this bill reach a full vote in the House of Representatives.

Please feel free to visit my website http://www.moran.house.gov that contains information on other topics of interest or sign up for the Moran E-Digest to receive periodic email updates and issue alerts. Thank you again for contacting me.

Sincerely,

James P. Moran

Congress of the United States

8th District, Virginia

Years ago I read on the net a complaint by a man whose last name was Hathaway. He owned the Hathaway.com domain name and claimed that Hathaway Shirts was condescendingly rude to him and was trying to take away his domain.
More famously, a North Carolina engineer named Eli Toyota formerly owned Toyota.com and used it for his business. Toyota Motors was trying, without success, to get the domain.

Persons with a legitimate use for someone else's trademark, such as Messrs. Hathaway and Toyota, are quit different from domain name squatters who buy a famous domain name and then try to shake down the legitimate owner of the trademark.

It is unclear what impact the Trademark Dilution bill would have on such disputes.