The document discusses a drafting error in Section 43(c)(6) of the Lanham Act regarding the registration defense to dilution claims. Specifically, subsection (B) is not limited to state dilution statutes as was intended, which could allow diluting marks to be registered and harm owners of famous marks. The document outlines the problem, proposes revisions to fix it, and notes support from intellectual property groups for a bill (H.R. 6215) that would make the necessary corrections to conform the section to original legislative intent.

1. The “Scrivener’s Error” Regarding
Registration Defense to Dilution
Claims in Lanham Act Section 43(c)(6)
© 2012 Womble Carlyle Sandridge & Rice, LLP
Michael A. Cicero
IPO Annual Meeting
September 10, 2012
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2. Source spotlighting the problem:
Timothy A. Lemper & Joshua R. Bruce,
Beware the Scrivener’s Error: Curing the
Drafting Error in the Federal Registration
Defense to Trademark Dilution Claims,
19:2 TEX. INTELL. PROP. L. J. 169
(2011) (“Lemper et al.”)
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3. Professor Timothy A. Lemper
• Clinical Associate Professor of Business
Law and Ethics at Indiana University
• Former IP Litigator at Finnegan,
Henderson, Farabow, Garrett & Dunner
LLP and Baker & Hostetler LLP
• Harvard Law School, 2001
• M.S., Public Admin. & Public Policy,
London School of Economics, 1997
• Served as staff assistant to Sen. Richard Lugar
• Served as Mgt. Consultant for USAF
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4. FTDA § 43(c)(3)
• “That section provides that federal registration of a
trademark is a complete defense to state and common law
dilution claims and it was included to encourage federal
registration. ”
• “While section 1125(c)(3) provides an absolute defense to
dilution claims based on state law, it has no impact on
dilution claims that are based on federal law.”
Westchester Media Co. LP v. PRL USA Holdings, Inc., 103
F.Supp.2d 935, 976 (S.D. Tex. 1999), aff’d in part, vacated and
remanded in part on other grounds, 214 F.3d 658 (5th Cir.
2000).
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5. Successive Texts Regarding § 43(c)(6)
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6. Subsections (A) and (B) of Current § 43(c)(6)
(A)(i) is brought by another person under the common law
or a statute of a State; and
(ii) seeks to prevent dilution by blurring or dilution by
tarnishment; or
(B) asserts any claim of actual or likely damage or harm to
the distinctiveness or reputation of a mark, label, or form
of advertisement.
Sub§ (A) limits defense to state dilution statutes, but
Sub§ (B) contains no such limitation!
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7. Likelihood of Courts Interpreting Sub§ (B) as Not
Limited to State Dilution Statutes
“Where Congress includes particular language in one
section of a statute but omits it in another section of the
same Act, it is generally presumed that Congress acts
intentionally and purposely in the disparate inclusion or
exclusion.”
Russello v. United States, 464 U.S. 16, 23 (1983) (quoted in
Gozlon-Peretz v. United States, 498 U.S. 395, 404 (1991)).
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8. Likelihood of Courts Interpreting Sub§ (B) as Not
Limited to State Dilution Statutes
“‘It is beyond our province to rescue Congress from its
drafting errors, and to provide for what we might think is
the preferred result.’”
Lamie v. United States Trustee, 540 U.S. 526, 542 (2004)
(quoting United States v. Granderson, 511 U.S. 39, 68
(1994)) (cited in Lemper et al. at 170 n.1).
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9. Statutory Construction in Russello v. United States
RICO statute: 18 U.S.C. § 1963(a)
Person convicted of RICO violation under § 1962 shall forfeit
to the United States:
Sub§ (1) – any interest acquired or maintained in violation of
§ 1962, and
Sub§ (2) – any interests in . . . any enterprise which he has
established, operated, controlled . . . in violation of § 1962.
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10. Statutory Construction in Russello v. United States
Issue: Does § 1963(a)(1) require convicted arsonist to forfeit to
the U.S. $340,043.09 in illegally-obtained insurance proceeds,
even though these were not interests in an “enterprise”?
Held: Yes; § 1963(a)(1) is not limited to interests in an
enterprise, so insurance proceeds must be forfeited to the U.S.
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11. Statutory Construction in Russello v. United States
Rationale
“Had Congress intended to restrict § 1963(a)(1) to an interest
in an enterprise, it presumably would have done so expressly
as it did in the immediately following subsection (a)(2).”
Russello, 464 U.S. at 23.
“We refrain from concluding here that the differing language in
the two subsections has the same meaning in each. We would
not presume to ascribe this difference to a simple mistake in
draftsmanship.” Id. (emphasis added)
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12. Statutory Construction in Russello v. United States
Rationale (cont’d)
“An early proposed version of RICO, S. 1861. . . had a single
forfeiture provision for § 1963(a) that was limited to ‘all interest
in the enterprise.’ This provision, however, later was divided
into the present two subsections and the phrase ‘in the
enterprise’ was excluded from the first. Where Congress
includes limiting language in an earlier version of a bill but
deletes it prior to enactment, it may be presumed that the
limitation was not intended.” Russello, 464 U.S. at 23
(emphasis added).
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13. Successive Texts Regarding § 43(c)(6)
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14. Problems With Not Limiting § 43(c)(6)(B)
to State Dilution Statutes
• Bars federal dilution action against federal registrants.
• Prevents owners of famous marks from asserting dilution
as a basis for canceling federal registrations, conflicting
with §§ 14 & 24 of Lanham Act.
• “Unscrupulous actors” could register diluting marks, then
extort money from such owners to abandon registration,
stop using the mark, or both. Lemper et al. at 186.
• Registering a diluting mark – such as BUICK for aspirin –
would be fairly easy to do since refusals to register not
based on dilution grounds. Id. at 186-87.
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15. Problems With Not Limiting § 43(c)(6)(B)
to State Dilution Statutes
• Judicial uncertainty. Potential split of authority, similar to
that experienced with Moseley saga regarding “actual” or
“likely” dilution.
• Some courts may strictly construe statute according to
literal meaning, will others may seek to interpret it
consistently with legislative history. Lemper et al. at 190.
• Resulting uncertainty increases costs and risks to mark
owners. Id. at 191.
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16. Proposed Revisions to § 43(c)(6)
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17. Letter 07/31/12 from Herbert Wamsley to Reps. Lamar
Smith and John Conyers, Jr. Supporting H.R. 6215
• “[Current § 43(c)(6)] stands to significantly harm owners of
famous marks in their efforts to enforce their trademark rights
using a federal dilution claim.”
• “We believe this result is contrary to the history and intent
behind the TDRA.”
• “IPO believes that H.R. 6215 makes the necessary corrections
to conform this section to original legislative intent and restore
to owners of famous marks the full scope of protection to
which they are entitled under the Lanham Act.”
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18. Opening Statement 08/01/12 from Chairman Smith in
U.S. House Judiciary Committee re H.R. 6215
• “Last year, two law professors discovered a technical problem
with one of the 2006 changes. . . . This produced an
unexpected and unintended change to the law.”
• Echoed concerns about difficulty for mark owners to cancel
diluting mark registrations.
• “This bill ensures that the trademark community is protected
from those who look to use this loophole as a way to
disparage legitimate trademarks and cost their holders time
and money.”
• Ranking Member Conyers concurred with Chairman Smith.
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19. Status of H.R. 6215 at Time of this Writing
• Bill reported favorably in House Judiciary
Committee.
• Letters of support from INTA, IPO, and AIPLA
entered into the record.
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20. THE END
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