On September 25, 2006, the House of Representatives passed the Senate’s version of the Trademark Dilution Revision Act of 2006 (H.R. 683). The International Trademark Association led the campaign to enact the new U.S. trademark anti-dilution statute as a reaction to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) and splits between the federal circuit courts relating to current dilution law. President Bush is expected to sign the bill within the next few weeks.
In Moseley, the Court held that the original Dilution Act “unambiguously” requires a showing of actual dilution. The Senate revisions to the Lanham Act’s dilution provisions instead adopt the standard of likely dilution. The 2006 Act also makes the following changes to dilution provisions: (1) the “fair use” exemption is extended to the “facilitation of such fair use”; (2) the owners of unregistered trade dress are required to prove the fame of the trade dress; and (3) “non-commercial uses” are expressly exempted from liability.
There are two modes of trademark infringement by dilution. Trademark dilution by blurring is based on the theory that unauthorized use of a "famous" trademark can diminish that mark’s ability to identify and distinguish its owner’s goods and services, regardless of whether such use causes consumer confusion. Dilution by tarnishment is achieved by attaching a negative connotation to a "famous" mark.
[The Trademark Dilution Revision Act of 2006 can be found at http://thomas.loc.gov/ as H.R.683 for the 109th Congress.]