copyright 1995 David A. Einhorn and Laurie Epstein; Anderson Kill Olick & Oshinsky , New York, New York, U.S.A.
On December 18, 1995, the House of Representatives reported a favorable vote to a bill which would amend the Lanham Act to provide federal protection to the owners of "famous" trademarks and service markers. The new section would entitle owners of famous trademarks to obtain injunctive relief against unauthorized commercial use of their marks commencing after the owner's mark becomes famous where such use causes the "dilution" of the famous marks.
Trademark dilution occurs when the distinctive quality of a well known trademark is weakened or blurred through the use of a similar or identical trademark, and can occur independent of any competition between the parties or confusion as to source. Although over half of the states in the country currently have anti-dilution statutes, federal law has never before addressed this issue.
The Patent and Trademark Office ("PTO"), although testifying in favor of the bill, objected to the fact that excluded famous mark protection for unregistered marks. The PTO argued that the limitation of protection to registered marks only would undercut the United States's position with its trading partners that famous marks should be protected regardless of whether the marks are registered in the country where protection is sought.
The subcommittee's July 27 markup session considered and approved an amendment which would make the legislation cover unregistered marks. As amended, the new bill now provides dilution protection for the "owner" rather than the "registrant" of a famous mark.
The bill will now advance to the Senate, where it has the support of Senator Orrin Hatch, Chairman of the Senate Judiciary Committee.