in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the (b) Importation
Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.
(c) Dilution by blurring; dilution by tarnishment (1) Injunctive reliefSubject to the principles of equity, the owner of a famous mark has become famous, commences mark or trade name in mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
(2) Definitions (A) For purposes of paragraph (1), a (i) The duration, extent, and geographic reach of advertising and publicity of the (ii) The amount, volume, and geographic extent of sales of goods or services offered under the (iii) The extent of actual recognition of the (iv) Whether the March 3, 1881 , or the Act of February 20, 1905 , or on the principal register.(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
The degree of similarity between the trade name and the famous mark. The degree of inherent or acquired distinctiveness of the famous (iii) The extent to which the owner of the famous (iv) The degree of recognition of the famous (v) Whether the user of the trade name intended to create an association with the famous mark. Any actual association between the trade name and the famous mark.For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a trade name and a famous mark that harms the reputation of the famous mark.
(3) Exclusions The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair (i) advertising or promotion that permits consumers to compare goods or services; or identifying and parodying, criticizing, or commenting upon the famous (B) All forms of news reporting and news commentary. the claimed trade dress, taken as a whole, is not functional and is famous; andif the claimed trade dress includes any marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
(5) Additional remedies In an action brought under this subsection, the owner of the famous section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if—
the trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used inOctober 6, 2006 ; and
(B) in a claim arising under this subsection— by reason of dilution by blurring, the mark; or by reason of dilution by tarnishment, the mark. is brought by another (B) seeks to prevent dilution by blurring or dilution by tarnishment; orasserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a (7) Savings clause
Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.
(d) Cyberpiracy prevention(A) A mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that (i)
has a bad faith intent to profit from that (ii) registers, traffics in, or uses a (I) in the case of a mark; in the case of a famous mark; or (i) In determining whether a (I) the trademark or other intellectual property rights of the (II) the extent to which the person; the use, if any, of the (IV) the mark in a site accessible under the (V)the mark owner’s online location to a site accessible under the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
the mark owner or any third party for financial gain without having used, or having an intent to use, the person’s prior conduct indicating a pattern of such conduct;
the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
the marks of others that are distinctive at the time of registration of such marks of others that are famous at the time of registration of such (IX)
the extent to which the (ii)Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the (C)
In any civil action involving the registration, trafficking, or mark.As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
(A) The owner of a (i) the mark registered in the Patent and (ii) the court finds that the owner—is not able to obtain in personam jurisdiction over a (II) through due diligence was not able to find a (aa)
sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the (bb)
publishing notice of the action as the court may direct promptly after filing the action. The actions under subparagraph (A)(ii) shall constitute service of process. (C) In an in rem action under this paragraph, a (i)documents sufficient to establish control and authority regarding the disposition of the registration and (D)
(i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the (I)
expeditiously deposit with the court documents sufficient to establish the court’s control and authority regarding the disposition of the registration and (II)
not transfer, suspend, or otherwise modify the (ii)The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.
The in rem jurisdiction established under paragraph (2) shall be in addition to any other jurisdiction that otherwise exists, whether in rem or in personam.
Editorial Notes References in TextActs March 3, 1881 , and February 20, 1905 , referred to in subsec. (c)(2)(A)(iv), (6), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444. Act Feb. 20, 1905 , was classified to sections 81 to 109 of this title.
ConstitutionalityFor information regarding the constitutionality of this section, see the Table of Laws Held Unconstitutional in Whole or in Part by the Supreme Court on the Constitution Annotated website, constitution. congress .gov.
Prior ProvisionsAct Mar. 19, 1920, ch. 104, § 3, 41 Stat. 534.
Amendments2012—Subsec. (c)(6). Pub. L. 112–190 added subpars. (A) and (B) and struck out former subpars. (A) and (B) which read as follows:
“(A)(i) is brought by another Pub. L. 109–312, § 2(1), added subsec. (c) and struck out former subsec. (c) which related to remedies for dilution of famousPub. L. 109–312, § 2(2), substituted “subsection (c)” for “subsection (c)(1)”.
Subsec. (c)(2). Pub. L. 106–43, § 3(a)(2), inserted “as set forth in section 1116 of this title” after “relief” in first sentence.
Subsec. (d). Pub. L. 106–113 added subsec. (d).
1996—Subsec. (c). Pub. L. 104–98 added subsec. (c).
1992—Subsec. (a). Pub. L. 102–542 designated existing provisions as par. (1), redesignated former pars. (1) and (2) as subpars. (A) and (B), respectively, and added par. (2).
1988—Subsec. (a). Pub. L. 100–667 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as follows: Statutory Notes and Related Subsidiaries
Effective Date of 2012 Amendment“The amendment made by subsection (a) [amending this section] shall apply to any action commenced on or after the date of the enactment of this Act [ Oct. 5, 2012 ].”
Effective Date of 1999 Amendment Effective Date of 1996 Amendment“This Act [amending this section and section 1127 of this title and enacting provisions set out as a note under section 1051 of this title] and the amendments made by this Act shall take effect on the date of the enactment of this Act [ Jan. 16, 1996 ].”
Effective Date of 1992 AmendmentAmendment by Pub. L. 102–542 effective with respect to violations that occur on or after Oct. 27, 1992 , see section 4 of Pub. L. 102–542, set out as a note under section 1114 of this title.
Effective Date of 1988 AmendmentAmendment by Pub. L. 100–667 effective one year after Nov. 16, 1988 , see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title.
Repeal and Effect on Existing RightsRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under section 1051 of this title.
Study on Abusive Domain Name Registrations Involving Personal Names“(a) In General.— Not later than 180 days after the date of the enactment of this Act [ Nov. 29, 1999 ], the Secretary of Commerce , in consultation with the Patent andFederal Election Commission , shall conduct a study and report to Congress with recommendations on guidelines and procedures for resolving disputes involving the registration or “(1)
protecting personal names from registration by another “(2) protecting individuals from bad faith “(3) protecting consumers from the registration and “(4) protecting the public from registration of “(5)existing remedies, whether under State law or otherwise, and the extent to which such remedies are sufficient to address the considerations described in paragraphs (1) through (4); and