Judiciary HomepageSTATEMENT OF
JEFFREY M. SAMUELS
Law Office of Jeffrey M. Samuels, P.C.
4122 Leonard Drive, Fairfax, Virginia 22030
Telephone: (703) 691-7676
BEFORE THE
SUBCOMMITTEE ON COURTS AND INTELLECTUAL PROPERTY
COMMITTEE ON THE JUDICIARY
U.S. HOUSE OF REPRESENTATIVES
ON
H.R. 3119 AND OTHER TRADEMARK-RELATED ISSUES
MAY 21, 1998
Mr. Chairman:
I am pleased to have the opportunity to testify today on H.R. 3119, which would amend the Trademark Act with respect to the dilution of famous marks.
By way of brief background, Mr. Chairman, I served as the Assistant Commissioner for Trademarks at the Patent and Trademark Office from November 1987 to January 1993. I am currently engaged in the private practice of law in Fairfax, Virginia, and I am an adjunct faculty member at both George Washington University and George Mason University law schools, where I teach courses on trademark and related unfair competition law. This fall I will join the University of Akron School of Law as Professor of Law and Director of its Center on Intellectual Property and Technology.
As you know, Mr. Chairman, the "Federal Trademark Dilution Act of 1995" amended U.S. trademark law, effective January 16, 1996, to protect "famous" marks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it. The new dilution statute, codified in Section 43(c) of the Trademark Act, was the product of years of study and debate. It is a delicately balanced statute. Thus, for example, while the new act was designed to promote nationwide uniformity and predictability in the application of the dilution doctrine, it does not preempt continued application of state dilution laws.
The federal dilution statute, however, does provide, in Section 43(c)(3), that ownership of a federal registration shall be a complete bar to an action brought under a state dilution statute. Currently, though, the owner of a federal registration may be sued for violation of the federal dilution statute.
H.R. 3119 would amend Section 43(c)(3) of the Trademark Act to provide that the owner of a federal registration could not be sued for violation of the federal dilution statute unless such suit was brought within one year of the date of registration or one year after the alleged diluter began use of its mark, whichever is later. In my opinion, enactment of such an amendment would be ill-advised.
First, it should be noted that permitting the owner of a famous mark to sue a federal registrant for violation of the federal dilution statute does not raise federal preemption concerns. Such concerns were a primary reason why the owner of a federal registrant was granted immunity from suit under state dilution laws.
Second, the fact is that, today, federal trademark registrants can be and are sued for trademark infringement (as opposed to dilution). While recovery on an infringement suit is predicated upon proof of likelihood of confusion, it is difficult to understand why a federal registrant should not also be held liable for violation of the federal dilution statute, particularly since the definition of the term "dilution" provides that a mark may be diluted "regardless of the presence or absence of - *** likelihood of confusion…." (underlining added)
Third, in my opinion, for all intents and purposes, H.R. 3119 would effectively emasculate the application of the federal dilution statute in cases brought against owners of federally registered marks. As you may know, Mr. Chairman, the Trademark Trial and Appeal Board, in Babson Bros. Co. v. Surge Power Corp., 39 USPQ2d 1953 (TTAB 1996), held that the federal dilution statute does not provide a ground to oppose registration of a mark. Thus, the owner of a "famous" mark may not prevent the federal registration of an arguably diluting mark (unless, of course, a case of likelihood of confusion exists). Thus, given the current state of the case law, it would seem unfair and inequitable to deprive the owner of a famous mark from seeking relief against a federal registrant unless suit was brought within the one-year time period set forth in H.R. 3119.
Fourth, even if one was to agree with the basic premise of H.R. 3119, the one-year statute of limitation set forth therein is much too short. The concept of dilution has often been defined as the gradual whittling away of the distinctiveness of a mark. As noted in the seminal law review article, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 1813 (1927), if courts permitted Rolls-Royce Restaurants, Rolls-Royce Cafeterias, Rolls-Royce Pants and Rolls-Royce Candy, "in ten years you will not have the Rolls-Royce mark any more." The point is that the harm which the federal dilution statute is designed to remedy may not - and probably will not - manifest itself until well after the time period set forth in H.R. 3119.
Finally, to the extent that H.R. 3119 is prompted by argument that the new dilution statute can effectively destroy preexisting property rights of a federal registrant, I note that, just last month, the Fifth Circuit, in its much anticipated decision in Chavez v. Arte Publico Press, held that trademarks do not qualify as "property" within the meaning of the Fourteenth Amendment.
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