By  on April 20, 2005

WASHINGTON — The House passed a trademark-protection bill Tuesday that would make it easier for famous brand owners to get injunctive relief in trademark-infringement cases.

The legislation stems from a 2003 Supreme Court case over the Victoria’s Secret trademark in which the justices ruled against Victoria’s Secret’s claim that a small Kentucky lingerie and adult “novelty” shop called Victor’s Secret had infringed on the national lingerie chain’s trademark.

The Trademark Dilution Revision Act of 2005, sponsored by Rep. Lamar Smith (R., Texas), seeks to clarify an existing federal law protecting famous trademarks from brand “dilution” that could tarnish a mark or blur the association between it and a product, service or organization.

Most notably, the bill allows the owners of famous trademarks to seek an injunction to block the use of similar trademarks that threaten to diminish their unique brands without having to show “actual economic injury” or “actual or likely confusion” to prove their case.

The measure exempts from liability any commentary, comparative advertising, parodies, criticism and the noncommercial use of trademarks.

“Trade law empowers consumers by giving them information that is often critical to their purchasing decisions,” Smith said during House floor debate Tuesday.

“Diluting needs to be stopped at the outset because actual damage can only be proven over time, after which the goodwill of a mark cannot be restored,” Smith said.

In the Victoria’s Secret case, the High Court sent the matter back to the lower federal court with some guidance: Federal law requires evidence of “dilution” to a trademark name beyond the “mere fact that consumers mentally associate the junior users’ mark with a famous mark,” as Victoria’s Secret had claimed. However, the Supreme Court failed to resolve the underlying issue of what constitutes dilution, trademark attorneys claimed.

The justices, in a unanimous opinion, gave few details as to what level of proof is needed to show a violation of the 1995 Federal Trademark Dilution Act. That law added new protections for famous trademarks so companies could quickly stop a look-alike name or logo from trading on the reputation or tarnishing the image of an established company.Meanwhile, federal courts have offered varying interpretations of how the law’s “dilution” standard can be proved. Supporters of the new legislation contend it clarifies the dilution standard and establishes a test of likelihood as opposed to actual harm.

“This legislation does a lot of little things, but the one big thing it does is [clarify that] you don’t have to prove actual dilution,” said Ethan Horwitz, a New York trademark attorney. “That is the big hurdle to win these cases now and [the bill] would make it easier to protect famous trademarks.”

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