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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. 1580

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