Last week the House revised their version of the bill to comport with the proposed Senate amendments. Thus, the Trademark Dilution Revision Act of 2006 is now on its way for a to the president toisign.
Among the other changes to current trademark law, the Act overrules the Supreme Court decision of Moseley, where they held that a sucessful dilution claim must prove actual dilution. The Act establishes a “likelihood of dilution” standard when bringing a claim for dilution of a mark.
Likewise, as the Trademark Trial and Appeal Board has applied both an actual and likelihood standard when dealing with an allegedly diluting mark in actual use (as opposed to mere intention to use, where a likelihood standard was used), this ill put that issue to rest. The Act provides that the likelihood standard is to be used in hearings before the Trademark Trial and Appeal Board.
The lower “likelihood of dilution” standard will help more cases make it past summary judgement. I believe that, essentially, no (or only a handful) of cases have been able to be sustained by plaintiffs since the 2003 Moseley decision. The downside for plaintiffs is that the act also does away with being able to define a mark as having niche market fame (lawyers, boat buyers, etc), instead defines a famous mark as one that “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”
And there we are. I need to see which standard we are using in my IPLaw class final.
Filed under: Legislation, Trademark
