Congress Moves to Protect Trademarks

AP ^ | 9/25/6 | JIM ABRAMS

[SmithL]

Congress moved Monday to improve trademark protection in legislation that had its origins in a dispute between a famous lingerie retailer and an adult novelty store.

The legislation, approved by voice vote in the House and sent to the president for his signature, makes it easier for the owner of a well-known trademark to take legal action against imitations that could impair its distinctiveness or undermine its reputation.

Congress turned to the issue after the Supreme Court in 2003 ruled against lingerie giant Victoria's Secret, which filed trade infringement and dilution claims against an Elizabethtown, Ky., adult novelty shop originally named Victor's Secret.

The court ruled that trademark law required the trademark's owner to prove that the knockoff had caused it actual dilution, or harm, rather than the likelihood of injury.

The ruling was contrary to Congress' intent when it passed trademark legislation in 1995, said Rep. Lamar Smith, R-Texas, sponsor of the bill. "Diluting needs to be stopped at the outset," he said. "Once it occurs, the good will of a mark cannot be restored."

The measure makes clear that the owner of a famous mark, one that is widely recognized by the general consuming public, can seek injunction against someone who makes use of an identical or similar mark that is likely to cause dilution by blurring its distinctiveness or tarnishing its image.