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House Subcommittee Hears Testimony on Amendment to FTDA

BY Nancy J. Mertzel
June 01, 2004

In a potential step toward amending the Federal Trademark Dilution Act of 1995 (FTDA), codified at 15 U.S.C. '1125(c), the House Committee on Courts, the Internet and Intellectual Property held a hearing on April 20, 2004 to discuss the “Committee Print of a Bill to Amend the Federal Trademark Dilution Act.” The draft legislation seeks to reverse the U.S. Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) by providing that the FTDA requires proof of likely dilution, not actual dilution. It also adds a definition of the term “famous” to the Act, clarifies that the Act applies to both blurring and tarnishment of famous marks, and includes defenses intended to safeguard free speech.

The hearing came slightly more than a year after the Supreme Court's unanimous decision in Moseley, a decision that has generated a great deal of discussion in the trademark community. In Mosely, the Supreme Court relied on the text of the statute, stating that it “unambiguously requires a showing of actual dilution, rather than a likelihood of dilution.” While actual lost sales or profits do not need to be proved before an injunction can be issued, the Court held that a plaintiff must provide at least circumstantial evidence of actual dilution of its trademark before such relief may be granted.

The drive to amend the FTDA since Moseley was decided has been gaining momentum in large part due to the difficulty among trademark owners in determining the amount of proof and type of evidence required to establish dilution. In his prepared testimony before the Committee, Robert Sacoff, the chair of the American Bar Association's Section of Intellectual Property Law, stated that: “the Moseley decision requiring actual dilution has proven unworkable in practice.”

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