Tuesday, October 09, 2012

New Law Signed October 5th Corrects Clerical Error in Trademark Dilution Statute

On Friday, October 5, 2012, President Obama signed into law "An Act to amend the Trademark Act of 1946 to correct an error in the provisions relating to remedies for dilution." [pdf here]. This Act amends the Trademark Act to correct the clerical error discussed in today's TTABlog posting regarding the OSCAR case. Note that the change is not retroactive, but applies only to petitions for actions commenced "on or after the date of the enactment of this Act."

The law corrects Section 43(c)(6) to read as follows:
6) Ownership of valid registration a complete bar to action.

The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that—

(A) is brought by another person under the common law or a statute of a State; and

(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

TTABlog comment: apparently there is no dispute that an "action" includes cancellation proceeding at the TTAB.

P.S. Hat tip to Anne Gilson LaLonde.


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