Chapter 22, Subchapter III, Section 1125, Subsection (c) · 15 U.S.C. Chapter 22

Contents

(c)

(1)Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2)

(A)For purposes of paragraph (1), a mark is famous if it 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. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i)The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii)The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii)The extent of actual recognition of the mark.

(iv)Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B)For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i)The degree of similarity between the mark or trade name and the famous mark.

(ii)The degree of inherent or acquired distinctiveness of the famous mark.

(iii)The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv)The degree of recognition of the famous mark.

(v)Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi)Any actual association between the mark or trade name and the famous mark.

(C)For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3)The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A)Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i)advertising or promotion that permits consumers to compare goods or services; or

(ii)identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B)All forms of news reporting and news commentary.

(C)Any noncommercial use of a mark.

(4)In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that—

(A)the claimed trade dress, taken as a whole, is not functional and is famous; and

(B)if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

(5)In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if—

(A)the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and

(B)in a claim arising under this subsection—

(i)by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or

(ii)by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.

(6)The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that—

(A)is brought by another person under the common law or a statute of a State; and

(B)

(i)seeks to prevent dilution by blurring or dilution by tarnishment; or

(ii)asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

(7)Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.

United States Government work; public domain under 17 U.S.C. § 105.

Defined terms · 39

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any person
includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity.
basic application
means the application for the registration of a mark that has been filed with an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that mark.
basic registration
means the registration of a mark that has been granted by an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that mark.
certification mark
means any word, name, symbol, or device, or any combination thereof— (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
collective mark
means a trademark or service mark— (1) used by the members of a cooperative, an association, or other collective group or organization, or (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization.
colorable imitation
includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
commerce
means all commerce which may lawfully be regulated by Congress.
Contracting Party
means any country or inter-governmental organization that is a party to the Madrid Protocol.
counterfeit mark
means— but such term does not include any mark or designation used on or in connection with goods or services of which the manufacture 1 or producer was, at the time of the manufacture or production in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.
date of recordal
means the date on which a request for extension of protection, filed after an international registration is granted, is recorded on the International Register.
declaration of bona fide intention to use the mark in commerce
means a declaration that is signed by the applicant for, or holder of, an international registration who is seeking extension of protection of a mark to the United States and that contains a statement that—
Director
means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
domain name
means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
extension of protection
means the protection resulting from an international registration that extends to the United States at the request of the holder of the international registration, in accordance with the Madrid Protocol.
international application
means an application for international registration that is filed under the Madrid Protocol.
International Bureau
means the International Bureau of the World Intellectual Property Organization.
International Register
means the official collection of data concerning international registrations maintained by the International Bureau that the Madrid Protocol or its implementing regulations require or permit to be recorded.
international registration
means the registration of a mark granted under the Madrid Protocol.
international registration date
means the date assigned to the international registration by the International Bureau.
Internet
has the meaning given that term in section 230(f)(1) of title 47.
juristic person
includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
Madrid Protocol
means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid, Spain, on June 27, 1989.
mark
includes any trademark, service mark, collective mark, or certification mark.
marks registered in the Patent and Trademark Office
means registered marks.
notification of refusal
means the notice sent by the United States Patent and Trademark Office to the International Bureau declaring that an extension of protection cannot be granted.
Office of a Contracting Party
means—
office of origin
means the Office of a Contracting Party with which a basic application was filed or by which a basic registration was granted.
opposition period
means the time allowed for filing an opposition in the United States Patent and Trademark Office, including any extension of time granted under section 1063 of this title.
principal register
refers to the register provided for by sections 1051 to 1072 of this title, and the term “supplemental register” refers to the register provided for by sections 1091 to 1096 of this title.
registered mark
means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920.
related company
means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
relevant date
means, with respect to an application for the registration of a mark with an initial filing basis of—
service mark
means any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.
supplemental register
refers to the register provided for by sections 1091 to 1096 of this title.
trademark
includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
traffics in
refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
use in commerce
means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.
violating matter
means matter that is the subject of a violation under section 1125(a) of this title.
violator
means a person who violates section 1125(a) of this title;