The Trademark Dilution Revision Act of 2006 allowed for certain amendments to be made to the Trademark Act of 1946 

The Revision Act provides for specific amendments to be made to sections two, thirteen, fourteen, twenty-four, and forty-five. The amendments in section two deal with the actual removal of wording and the insertion that a mark may be refused registration on the grounds that it is likely to cause dilution by blurring or by means of tarnishment. It also states that a registration for a mark may also be canceled under the same contingencies. 

Section Thirteen is the Opposition to Registration, the amendments made there are to include the refusal of registration as a result of the possibility for dilution by blurring or tarnishment. Section Fourteen is the Cancellation of Registration, and the Revision Act revises the clause by including dilution as means for cancellation. 

Section Twenty-Four is found under the Supplemental Register sub-chapter, which is included in the Trademark Act of 1946 to allow for certain marks to be registered that do not fully meet the requirements under the Principal Register so they can be registered at a later date when such mark has proven to be widely recognized by the public as concurrent to its product, and also, for eligibility to be registered at the international level; other countries may not have as stringent requirements as does the United States.

The amendments made under the Revision Act to this section also allow for marks registered under this provision to be considered liable to dilution of famous marks, regardless of the fact that they are not registered under the Principal Register. Section Forty-Five is the Definitions section of the Trademark Act, and is amended by the removal of the definition of dilution to this section. 

The amendments to the Lanham Act of 1946 were necessary in order to prevent any confusion or contradictory interpretations of the original legislation and the new trademark act. With dilution being much more prevalent an issue of dispute, and also allowing for confusing interpretation of the dilution provisions in laws as exhibited in Moseley v. V Secret Catalogue, Inc., the Revision Act of 2006 was necessary from preventing further discrepancies in the court of law.

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         

    Short Title

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

    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

    Conforming Amendments