On August 1, 2012, the House Judiciary Committee passed, without amendment, H.R. 6215, introduced by Rep. Lamar Smith (R-Texas) to “correct an error” in the Trademark Dilution Revision Act and, thereby, permit federal dilution claims currently barred by the Lanham Act (15 U.S.C. § 1125).

Claims against the owner of a valid trademark registration are currently barred where:

  1. the claim is brought under the common law or state statute and seeks to prevent dilution by blurring or tarnishment (§ 1125(c)(6)(A)); or
  2. the claim asserts actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement (§ 1125(c)(6)(B)).

Thus, the law bars all dilution claims against the owner of a validly registered federal trademark , whether those claims are brought under federal law (§ 1125(c)(6)(B)), state law or common law (§ 1125(c)(6)(A)).

The proposed amendment would only bar claims brought under the common law or state statute:

  1. seeking to prevent dilution by blurring or tarnishment (§ 1125(c)(6)(B)(i)); or
  2. asserting actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement (§ 1125(c)(6)(B)(ii)).

Thus, as amended, 15 U.S.C. § 1125(c)(6) would bar state and common law dilution claims, but permit federal dilution claims, against the owner of a validly registered federal trademark.

Sources: House Judiciary Committee, Office of the Law Revision Counsel of the United States House of Representatives

This article was prepared by Todd Hambidge (thambidge@fulbright.com / 212 318 3010) of Fulbright’s Intellectual Property and Technology Practice.