86 Trademark Rep. 514 (1996)
The Federal Trademark Dilution Act of 1995: The In-House Counsel Perspective

handle is hein.journals/thetmr86 and id is 536 raw text is: Vol. 86 TMR

By Barry M. Krivisky*
The purpose of this article is to provide insight to the Federal
Trademark Dilution Act' from the perspective of in-house counsel.
Of course, it is hoped that the article will also be beneficial to
those trademark practitioners who are outside counsel, and
especially those who regularly counsel and advise corporate clients
on trademark issues.
This article will not trace the history of dilution, nor will it
attempt to analyze all of the issues that had to be considered and
resolved before the dilution law was made part of the Trademark
Law Revision Act of 1988 (TLRA).2 Numerous articles covered
the debate on dilution prior to the enactment of the Dilution Act.3
Recent articles have also dealt with the dilution law from a
litigation perspective.4 The issues of well-known and famous
marks which, generally speaking, are requisites of the dilution
law, have also been dealt with.5 Rather, it is the author's intent
to focus on some of the issues which are of particular concern to
the in-house trademark practitioner.
The in-house trademark counsel of many, if not most, large,
consumer products companies will likely see the dilution law as a
boon to his or her company, insofar as it has one or more arguably
famous trademarks in its stable of marks. To the extent that any
one or more of such arguably famous marks is used on a single
* Assistant General Counsel, Philip Morris Management Corp., Regular Member of
the International Trademark Association; Member of the Editorial Board of The Trademark
Reporter®. © 1996 Barry M. Krivisky. The author wishes to thank Dara Scott, third year
student at Seton Hall University Law School, and Liliana C. Ydnez, third year student at
New York Law School, who assisted in some of the research of this article.
1. President Clinton signed the Federal Dilution Trademark Bill Pub L 104-98 on
January 16, 1996 following passage of the bill by the House of Representatives on
December 12, 1995, and by the Senate on December 29, 1995. The law, officially known
as the Federal Trademark Dilution Act of 1995, became effective with the President's
2. Pub L 100-667.
3. Two prior issues of TMR, 85 TMR No 5 (September-October 1995) and 83 TMR No
2 (March-April 1993) were devoted to the subject.
4. See Sandra Edelman and Bruce R. Ewing, The Federal Trademark Dilution Act
of 1995: A Litigation Perspective, which is printed in this issue, and Parker Bagley,
Trademark Developments in the U.S, Managing Intellectual Property 16 (Trademark
Yearbook 1996).
5. See Frederick W. Mostert, Well-Known and Famous Marks: Is Harmony Possible
in the Global Village?, 86 TMR 103 (1996).


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