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Trademark Dilution Revision Act Goes to President

September 27, 2006

Karen Kitterman, a trademark partner from Fenwick & West's Intellectual Property Group, was recently quoted in a Daily Journal article entitled, "Bill Protecting Marks Goes to President."

Congress signed off on the Trademark Dilution Revision Act of 2006 on September 25. It's headed to President Bush for final approval and, if enacted into law, the bill will be a boon to trademark enforcement because it requires trademark owners to prove "likely" dilution instead of "actual" dilution, the current standard.

According to Kitterman, demonstrating likely dilution was Congress' original intent in creating trademark enforcement laws. Showing actual dilution is inherently difficult, she said, and gathering evidence to support actual dilution can be time-consuming.

"The new law allows famous mark owners to obtain redress without having to prove actual harm. This makes injunctions much easier to obtain," said Kitterman, who served on the Dilution Committee of the International Trademark Association.

The bill also includes a fair-use provision and a separate exemption for works involving parody, comment or criticism.