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Tuesday, July 31, 2012
by Anandashankar Mazumdar
There's a very small trademark bill going up for markup before the House Judiciary Committee on Aug. 1, a bill that likely won't draw much discussion or amendments or significant attention. And that lack of attention is probably quite deserved, because it seems to be one of those situations in which it's genuinely meant just to correct an error in the federal law that was introduced a few years ago.
However minor or insignificant or routine this bill might be as a substantive or policy matter, it is presents a curiously interesting situation to people who might occasionally enjoy delving into the minutiae of law and legislation.
What it comes down to is a problem of numbering.
The story begins in 2003 with the Supreme Court's decision in Moseley v. V Secret Catalogue Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003), which held that under the Federal Trademark Dilution Act of 1995, 15 U.S.C. §1125(c), in order to succeed on a claim for trademark dilution, a party must demonstrate actual dilution.
In response, Congress enacted the Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, which changed the standard from "actual dilution" to "likelihood of dilution," thus bringing it into line with other liability standards under federal trademark law. However, apparently, when the revision legislation was being considered by the Senate, a clerical error resulted in misnumbering of the clauses in a particular provision.
That provision gives a party that holds a federal trademark registration immunity against trademark dilution claims brought under state or common law. However, the way that the subclauses were numbered seems also to grant immunity against federal dilution claims as well, which was apparently not intended. Thus, the chairman of the Judiciary Committee, Rep. Lamar S. Smith (R-Texas), has proposed H.R. 6215 to correct this "scrivener's error" and restore the intended scope of the safe harbor provision.
Funny what misnumbering can do. In any case, given that there seems little reason for anyone to oppose this correction, I suspect this little bill has the potential of becoming the only IP legislation enacted in an election year.
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