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
