101 Trademark Rep. 1580 (2011)
The Dilution Defense Congress Never Meant to Create (and Needs to Fix)

handle is hein.journals/thetmr101 and id is 1600 raw text is: Vol. 101 TMR

THE DILUTION DEFENSE CONGRESS
NEVER MEANT TO CREATE (AND NEEDS TO FIX)*
By Timothy A. Lemper'* and Joshua R. Bruce***
I. INTRODUCTION
In 2006, Congress sought to amend the Lanham Act to make
ownership of a federal registration a complete bar to all dilution-
type claims brought under state law. As a result of a drafting
error, however, the newly created provision-Section 43(c)(6) of the
Lanham Act-makes ownership of a federal registration a
complete bar to all dilution-type claims under state and federal
law. As a result, the current statute gives federal registrants
complete immunity from liability for dilution, even under federal
law.
This article explores the cause and potential remedy for the
drafting error in Section 43(c)(6) of the Lanham    Act. Part II
examines the origins of the drafting error in the statute. It begins
by tracing the evolution of the federal registration defense in
federal dilution law, including chronicling the creation of the
original federal registration defense and the policy goals that it
was meant to serve. It concludes by describing Congress's motives
for expanding the federal registration defense in 2006, and
explaining how-as a result of a drafting error-the current
statute now gives federal registrants complete immunity from
liability for dilution, contrary to the legislative history and policy
goals underlying the statute.
Part III surveys the impact of the drafting error in Section
43(c)(6), including its treatment by courts and the United States
Patent and Trademark Office (USPTO). It outlines the risks
created by the drafting error in Section 43(c)(6), including the
threat that it poses to the protection of famous marks and to the
predictability and uniformity of federal trademark law and
practice.
Part IV presents the arguments for curing the drafting error
in Section 43(c)(6), and proposes language for such an amendment.
It explains how the proposed amendment reflects the legislative
* Adapted from Timothy A. Lemper & Joshua R. Bruce, Beware the Scrivener's Error:
Curing the Drafting Error in the Federal Registration Defense to Trademark Dilution
Claims, 19 Tex. Intell. Prop. L.J. 169 (2011).
** Clinical Associate Professor of Business Law at Indiana University and former
intellectual property litigator at Finnegan, Henderson, Farabow, Garrett & Dunner LLP,
Washington, D.C., and Baker & Hostetler LLP, Cleveland, Ohio. Zachary D. Bailey
contributed to this article as a research assistant.
*** Candidate for B.A. in Political Science, Indiana University, 2012.

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