October 2012 Issue

President Obama Signs Trademark Dilution Bill Restoring Limitation to the “Federal Registration” Defense

President Obama has signed into law a bill that amends the Trademark Dilution Revision Act to correct an error that altered the statute’s intended meaning.  House Resolution 6215, signed on October 5, 2012, restores the limitation of the federal registration defense to claims based only on state law.  Due to a clerical error, the defense had been available to both state and federal dilution claims. 

The error occurred when the Senate slightly reorganized section 43(c)(6) of the original bill.  The wording of the Senate version remained the same as the initial House version, but by reorganizing the sections and including the word “or” before subparagraph (B), the meaning was changed so that federal registration could bar both state and federal dilution actions.  The erroneous Senate version became law in 2006.

The consequences of the error became apparent when the TTAB recently granted a respondent’s motion to dismiss a petitioner’s federal dilution claim in a cancellation action in Academy of Motion Picture Arts & Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012).  The petitioner had argued that the Senate reorganization created an “unintended” change to the statute and that Congress clearly meant to retain possible federal dilution claims.  The TTAB, however, refused to depart from the revised statutory language, stating:  “The Board must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation.”

The federal registration defense was initially enacted as part of the Federal Trademark Dilution Act of 1995.  It included a complete bar for state dilution claims brought against federally registered marks.  In passing the Trademark Dilution Revision Act in 2006, Congress sought to expand the federal registration defense to include all types of state dilution law claims by replacing “dilution” with language barring claims for “dilution by blurring or dilution by tarnishment.”  The following comparison shows the issue addressed by H.R. 6215: