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Trademark Dilution Revision Act of 2006

Trademark Dilution Revision Act of 2006

Trademark Dilution Revision Act of 2006

The Trademark Dilution Revision Act of 2006 has its roots in the original Dilution Act of 1995, which was the first attempt to regulate trademark dilution at the federal level. However, the implementation of the new Revision Act was most likely out of the direct result of the Mosely v. V Secret Catalogue, Inc. case. The basic issue concerning this dispute of dilution is that there was an adult store in Kentucky named “Victor’s Secret,” which the chain of lingerie stores known as Victoria’s Secret considered the use of that name as infringement of their own famous or widely recognizable name. 
As a result, the owners of the adult shop changed the name to “Victor’s Little Secret,” after a formal cease and desists letter was presented to the owners. Victoria Secret’s owners were not satisfied with the change, and decided to proceed by filing suit claiming infringement of the brand name, as well as dilution by both tarnishing its reputation and blurring the trademark’s distinctiveness. Dilution by tarnishing is defined as the use of a mark that is similar to a famous mark that has the potential of associating disreputable or harming connotations to the original widely-recognized trademark. 
Trademark dilution by blurring, or otherwise known as basic dilution, is described as any mark that may potentially disassociate a famous mark from its established marketed products to other types of products or goods not associated with the famous mark. In the Victoria Secret case, tarnishing was applied in the terms that the adult shop’s name would negatively affect the reputation of the famous lingerie maker by associating with a less reputable store selling adult gifts and novelties. 
The courts ruled that actual proof of dilution was needed as per trademark law, rather than the likelihood or propensity for dilution. Since Victoria’s Secret could not appropriately provide such proof, the “Victor’s Little Secret” owners prevailed in the case. However, the confusion over actual proof or the possibility for dilution still left many unsure as to the actual legislation.
Shortly after, the Trademark Dilution Revision Act was implemented, which amended some of the prior legislation of the Dilution Act of 1995         

Section I

    Short Title

  Simply provides for acceptable citations in abbreviated or curtailed forms of the act.
Section II

    Dilution by Blurring; Dilution by Tarnishment

  Provides for definitions of trademark dilution by blurring and trademark dilution by tarnishment
  Provides for applicable legislative action due to such types of trademark dilution
  Provides for exclusions to certain situations or circumstances where trademark dilution will not apply
  Provides for additional remedies entitled beyond injunctive relief
  The barring of trademarks registered under certain trademark laws of bringing certain types of lawsuits against them
Section III
    Conforming Amendments

Facts of the Trademark Dilution Revision Act of 2006

Facts of the Trademark Dilution Revision Act of 2006Background

The Trademark Dilution Act of 1995 was the first implementation for the control and regulation of trademark dilution to be instated at the federal level. Beforehand, state laws were the main frame of reference regarding trademark dilution. Though they provided for a framework and basic consideration for enforcement, not all states recognized dilution provisions, and most importantly, not all states had legislation written into law. 

The Dilution Act of 1995 was introduced to provide for a cohesive and general application of law to deter the occurrence of trademark dilution. Up until 2006, the Dilution Act of 1995 was the only frame of reference for the different applications of the law regarding dilution. 

However, the legislation would prove to be confusing in actual court decisions simply because of the various interpretations that could be derived from the basic definitions of dilution and what a famous mark means. The Trademark Dilution Revision Act of 2006 sought to end the discrepancies surrounding the trademark dilution question by providing for adequate and precise definitions and consideration factors as to provide for a concise and accurate interpretation of the instated legislation.

Dilution by Blurring and Tarnishment

The unlawful practice known as trademark dilution can be placed into two distinct categories, known as blurring and tarnishment. The Trademark Dilution Revision Act provides for precise definitions for both instances of trademark dilution, and amends the Lanham Act as to ensure their inclusion to federal trademark laws. 

The Revision Act also applies a list of considerations or circumstantial factors that may be used by the courts to  assess how either action of dilution affects a famous mark or brand. A definition of the word “famous” under trademark applications is also stated because the term must be used effectively in describing a trademark in order to qualify to bring dilution suits against owner’s of other marks. 
Dilution by blurring and tarnishment is distinguished as causing harm to the reputation of a famous mark, and thus, a company or owner of such mark must be able to prove the extent of which their trademark is actually considered “famous.”

Conforming Amendments

Because the Trademark Dilution Revision Act set out to establish a more comprehensible and direct determination of trademark dilution, certain changes would have to be implemented to the established federal trademark laws under the Lanham Act of 1946. 
It is inevitable that amendments would have to be made simply because of factors such as advances in technology, commerce, and changes in economics would undoubtedly affect the current status of the nation that could not been accounted for when the laws were originally drafted. 

The consequential rise of trademark registrations following World War II would give a glimpse of the current situation of commerce; trademarks have become invaluable to their respective owners, in certain occasions, more so than the actual products they offer. Protection against trademark dilution is paramount in this day and age, the Revision Act provided for the necessary amendments to provide for the adequate trademark rights to be reinforced.