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Federal Trademark Dilution Act Task Force: Report and Resolutions
A.B.A. Section of Intellectual Property Law Annual Report (2004)
  • Jeffrey M. Samuels, University of Akron School of Law

Scope of Task Force. The Task Force was formed in December 2004 to review various proposals to amend the Federal Trademark Dilution Act (FTDA), 15 U.S.C. ?1125(c) (Pub. L. 104-98, 109 Stat. 985). The FTDA was enacted into law on January 16, 1996 to provide a remedy for the dilution of "famous" marks. Since its enactment, the statute has been the subject of almost 400 reported judicial decisions (see J. Thomas McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts, 41 Houston Law Review No. 3), with splits of authority on a wide number of issues. In its 2003 decision in Moseley v. V Secret Catalogue, 537 U.S. 418 (2003), the Supreme Court resolved one conflict in ruling that the owner of a "famous" mark must prove actual dilution in order to be entitled to relief under the FTDA. Largely as a result of Moseley, discussions ensued, primarily within the International Trademark Association, with respect to proposed amendments to the FTDA. Last April, the House Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on a "Committee Print to Amend the Federal Trademark Dilution Act." At that hearing, then Section Chair Robert W. Sacoff testified that the Act should be amended in three ways: (1) to create a likelihood of dilution standard for relief; (2) to provide a specific cause of action for dilution by tarnishment; and (3) to allow non-inherently distinctive marks to be eligible for protection. The Committee Print was never introduced as a bill and no further consideration was given to the matter. The recently convened 109th Congress is expected, however, to consider FTDA reform.

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Citation Information
Jeffrey M. Samuels, Federal Trademark Dilution Act Task Force: Report and Resolutions, 2004-2005 A.B.A. Section of Intellectual Property Law Annual Report 1 (2004).