The Trademark Dilution Revision Act of 2005, or HR 683, is the proposed law that would amend the existing Federal Trademark Dilution Act, 15 U.S.C. Section 1125[c]. HR 683 provides that the owner of a famous mark is entitled to an injunction against any person who, “at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark.” The current law requires a showing of actual dilution.
The proposed legislation at least appears to address First Amendment concerns by preserving the right of third parties to criticize or comment on the owners of such famous brands. But concerns remain that the bill expands trademark rights without sufficient countervailing free-speech protection.
The original act makes the “noncommercial use of a mark” not actionable. The proposed amendment to the act would instead exempt the “fair use of a famous mark by another person, other than as a designation of source for the person’s good or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.” If enacted, this change potentially could make actionable a use that in fact parodies, criticizes or comments on a famous mark, but which also constitutes a designation of source for the product that targets the original.
If a parodist cannot be reasonably certain that his or her use of a famous mark will be exempted from claims of trademark dilution by the target of the parody, he or she might well abandon altogether his or her plans to sell a product, if a humorous brand is an important aspect of the parody. Despite the best of intentions, the proposed revisions to the act could do more to chill free speech than protect it. The U.S. Senate Judiciary Committee had taken no action on the bill as of the publication of this article.
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