Federal Trademark Dilution Act (current version including the changes
made by the Federal Trademark Dilution Revision Act of 2006)
§ 1125. False designations of origin, false descriptions, and
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or misleading
representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or
another person’s goods, services, or commercial activities,
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.
(2) 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.
(3) In a civil action for trade dress infringement under this chapter
for trade dress not registered on the principal register, the person
who asserts trade dress protection has the burden of proving that the
matter sought to be protected is not functional.
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 relief
Subject to the principles of equity, the owner of a famous mark that is
distinctive, inherently or through acquired distinctiveness, shall be
entitled to an injunction against another person who, at any time after
the owner’s mark has become famous, 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, regardless of the presence
or absence of actual or likely confusion, of competition, or of actual
(A) For purposes of paragraph (1), a mark is famous if it is widely
recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark’s owner. In
determining whether a mark possesses the requisite degree of
recognition, the court may consider all relevant factors, including the
(i) The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the owner or
(ii) The amount, volume, and geographic extent of sales of goods or
services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of 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 mark or 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
(i) The degree of similarity between the mark or trade name and the
(ii) The degree of inherent or acquired distinctiveness of the famous
(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an
association with the famous mark.
(vi) Any actual association between the mark or trade name and the
(C) For purposes of paragraph (1), “dilution by tarnishment” is
association arising from the similarity between a mark or trade name
and a famous mark that harms the reputation of the famous mark.
The following shall not be actionable as dilution by blurring or
dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or
facilitation of such fair use, of a famous mark by another person other
than as a designation of source for the person’s own goods or services,
including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or
(ii) identifying and parodying, criticizing, or commenting upon the
famous mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
(4) Burden of proof
In a civil action for trade dress dilution under this chapter for trade
dress not registered on the principal register, the person who asserts
trade dress protection has the burden of proving that—
(A) the claimed trade dress, taken as a whole, is not functional and is
(B) if the claimed trade dress includes any mark or 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
mark shall be entitled to injunctive relief as set forth in 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—
(A) the mark or trade name that is likely to cause dilution by blurring
or dilution by tarnishment was first used in commerce by the person
against whom the injunction is sought after October 6, 2006; and
(B) in a claim arising under this subsection—
(i) by reason of dilution by blurring, the person against whom the
injunction is sought willfully intended to trade on the recognition of
the famous mark; or
(ii) by reason of dilution by tarnishment, the person against whom the
injunction is sought willfully intended to harm the reputation of the
(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—
(i) is brought by another person under the common law or a statute of a
(ii) seeks to prevent dilution by blurring or dilution by tarnishment;
(B) asserts any claim of actual or likely damage or harm to the
distinctiveness or reputation of a mark, label, or form of
(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.