Page:United States Statutes at Large Volume 120.djvu/1762

 PUBLIC LAW 109–312—OCT. 6, 2006

120 STAT. 1731

‘‘(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 following: ‘‘(i) The degree of similarity between the mark or trade name and the famous mark. ‘‘(ii) The degree of inherent or acquired distinctiveness of the famous mark. ‘‘(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 famous mark. ‘‘(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. ‘‘(3) EXCLUSIONS.—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 services; 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 Act 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 famous; and ‘‘(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 34. The owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity if—

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