Trademark Dilution Revision Act of 2005

The Supreme Court's decision in Moseley v. V. Secret Catalogue, Inc., in 2003, mandated a showing of "actual dilution" in order for a famous mark to be protected under the Federal Trademark Dilution Act (FTDA) from blurring of its distinctive character or tarnishment through the indiscriminate use by parties unaffiliated with its owner. See report in WRF's July 2004 Trademark Alert.

In Moseley, the Supreme Court attempted to reconcile differing interpretations by lower courts of the evidentiary showing required under the FTDA for injunctive relief but succeeded merely, in the opinion of observers, in rendering the statute unworkable. Counsel wondered just how they were supposed to "prove" actual dilution of a famous mark before irreparable, perhaps fatal, harm had been done to it.

The Moseley decision caused Congress to hold hearings in 2004 on possible revisions to the FTDA and these hearings resumed again before the 109th Congress in 2005. The Trademark Dilution Revision Act, HR 683, was reported to the floor of the U.S. House of Representatives on March 9, 2005, from the House Judiciary Committee. The bill, sponsored by Rep. Lamar Smith (R-TX), chairman of the House Subcommittee on Courts, the Internet and Intellectual Property, provides a more precise definition of "fame" that would qualify a mark for protection from dilution and sets forth an explicit "likelihood of dilution" standard intended to supplant the "actual dilution" requirement announced in Moseley. A fair use defense would remain available to a defendant upon a showing that the challenged use is not as a designation of product source, but is a descriptive use, or a use intended as parody, commentary or criticism.

The bill was passed by the House of Representatives on April 19, 2005, and now goes to the Senate.