As I was attending the International Trademark Association’s roundtable today on the Trademark Dilution Revision Act, I had a thought: the Trademark Dilution Revision Act is misnamed. It really should be called the “Trademark Dilution Replacement Act.” To my mind, that title would be more accurate because the Trademark Dilution Revision Act does not revise the Federal Trademark Dilution Act as much as replace it.
Sure, much of the FTDA survives in the TDRA. But as I understand it, the TDRA replaces all of 15 U.S.C. § 1125(c) — where the FTDA used to reside — with brand new text. H.R. 683, which upon enactment became the TDRA, states: “Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended — (1) by striking subsection (c) and inserting the following…” which goes on to recite the text of the TDRA. In other words, the old was thrown out and replaced with the new. Right?
The Second Circuit apparently doesn’t think so. In the first appellate decision to touch on the TDRA, Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., No. 06-0435, 477 F.3d 765 (2d Cir. 2007), the Second Circuit persists in analyzing dilution in terms of the FTDA. It states:
“The FTDA, as amended effective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is ‘likely to cause dilution’ of the famous mark. 15 U.S.C. § 1125(c)(1) (hereinafter, the ‘amended statute’). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.”
Even if technically correct — H.R. 683 does refer to the act of deleting the old statutory text and inserting the new statutory text as being an “amendment” (albeit to the Trademark Act of 1946 and not the FTDA) — I think focusing on this technicality is a mistake. The FTDA is gone. It no longer applies. The TDRA is what controls now. Maybe this is a nerdy distinction, but I think it unnecessarily confuses this historically confusing area of the law to act like the dead-and-gone FTDA continues to exist, just in an amended form.
Is there any part of the FTDA that continues to exist outside of the TDRA? If not, future courts would do well to analyze dilution claims in terms of the TDRA rather than the now-superseded FTDA.