Dumping the "Designation of Source" Requirement from the TDRA: A Response to the Alleged "Trademark Use Requirement in Dilution Cases"
Barber, William G., Santa Clara Computer & High Technology Law Journal
It will probably come as no great surprise to anyone who has read Professor Lemley's and Professor Dogan's article, The Trademark Use Requirement in Dilution Cases, that I disagree with much of it. In particular, I disagree with the main thesis of their article that the Trademark Dilution Revision Act of 2006 ("TDRA") (1) embodies a "trademark use requirement," as well as their argument that the legislative history supports that conclusion. As explained in more detail below, the language of the TDRA as enacted fails to support that thesis (although I acknowledge there may be some superficial ambiguity in the phrase "use of a mark or trade name"). (2) More importantly, the clear intent of the participants involved in negotiating changes in the bill (including the International Trademark Association ["INTA"], the American Intellectual Property Law Association ["AIPLA"], the American Civil Liberties Union ["ACLU"], and the applicable Congressional leaders and staff) was to remove the trademark use requirement originally proposed by INTA and supported by Professor Lemley at the Congressional hearing on the TDRA.
I. ORIGIN OF THE PHRASE "USE OF A MARK OR TRADE NAME" IN THE TDRA (3)
The first fundamental flaw in Professor Lemley's and Professor Dogan's position is their suggestion that the phrase "use of a mark or trade name" in the TDRA "clarified" its predecessor statute (the Federal Trademark Dilution Act ["FTDA"]) in a way that would require trademark use by the defendant. (4) Although Professors Lemley and Dogan are correct that the language in the old FTDA did not clearly impose such a requirement, they have it exactly backwards when they assert that the counterpart language in the TDRA makes the argument for a trademark use requirement "more robust than before." (5)
Here is a comparison of the operative language appearing in the FTDA and TDRA:
"The owner of a famous mark shall be entitled ... to an injunction against another person's commercial use in commerce of a mark or trade name, if such use ... causes dilution of the distinctive quality of the mark...." (6)
"[T]he owner of a famous mark ... shall be entitled to an injunction against another person who ... 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...." (7)
As can be seen, the "mark or trade name" language that Professors Lemley and Dogan rely upon to support a trademark use requirement appeared in both statutes. The only change in this clause was to eliminate the word "commercial" in the FTDA (and move "in commerce"). It is simply inaccurate for Professors Lemley and Dogan to characterize this language in the TDRA as "more restrictive" (8) or "narrower" (9) than the corresponding language in the FTDA--if anything, the phrase "use of a mark or trade name in commerce" is less restrictive than "commercial use in commerce of a mark or trade name," omitting the explicit requirement that the defendant's use be "commercial."
II. THE FAILED ATTEMPT TO INSERT A TRADEMARK USE REQUIREMENT INTO THE TDRA
An even more fundamental flaw in Professor Lemley's and Professor Dogan's argument is their suggestion that the legislative history of the TDRA supports a trademark use requirement. (10) Once again, they have it exactly backwards. To the extent there is any ambiguity as to whether the phrase "use of a mark or trade name" in the TDRA was intended to impose a trademark use requirement as Professors Lemley and Dogan claim, that door is completely slammed shut by the legislative history of
A. INTA's Original Proposal
The TDRA traces its roots back to INTA's "Select Committee on the Federal Trademark Dilution Act," (11) whose mission was to review the FTDA and recommend changes in light of the Supreme Court's decision in Moseley v. …