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Congress Re-Examines Federal Trademark Dilution Act

It took years of lobbying, but the hard work finally paid off Jan. 16, 1996, when President Clinton signed a law that promised to revolutionize trademark law.

The Federal Trademark Dilution Act (FTDA) made it easier for owners of famous trademarks--such as McDonald's, Chrysler and Exxon--to get protection for their marks. The FTDA gave owners of famous marks a new federal cause of action, allowing them to protect their marks against any later trademarks--in any industry or any part of the country--that would impair the distinctiveness of their famous marks.

Except in unusual circumstances, it seems that the only way of proving actual dilution is by conducting a consumer survey. However, it's unclear how a company would conduct such a survey and whether it would pass judicial standards for survey evidence. In addition, many trademark owners believe that even if you could prove dilution occurred, it would be too late to reverse the damage.

"By the time you can prove dilution has occurred, the harm has been done," says Kathryn Barrett Park, trademark counsel for General Electric Co. "If the brand has been harmed, money can't really compensate."

Other courts have taken a different stance. Some have ruled that the FTDA protects only marks that are famous in a substantial part of the country. Others have ruled the FTDA protects only marks that are famous among the general populace, as opposed to a specific industry.

The House bill would resolve this judicial confusion by adding a new, more explicit definition of "famous." The bill states, "a mark is famous if it is widely recognized by the general consuming public of the United States. ..."


Steven Seidenberg

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