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Public Citizen Praises Senate Judiciary Committee Changes in Trademark Bill That Will Protect Free Speech

Feb. 16, 2006

Public Citizen Praises Senate Judiciary Committee Changes in Trademark Bill That Will Protect Free Speech

Trademark Dilution Revision Act Now Stronger for Consumers, But Major Loophole Remains

WASHINGTON, D.C. – Public Citizen today commended the Senate Judiciary Committee for accepting some of the organization’s recommended changes to the Trademark Dilution Revision Act. The changes will protect individuals and small businesses that refer to companies by their trademarks. However, a major loophole, which was slipped into the original bill without any explanation, remains and will make it difficult for individuals who are sued for trademark violations to defend themselves.

Currently, consumers and artists are protected from being sued for trademark infringement by companies if the trademark is for “fair use” – a use that must meet a complex legal test – for news reporting/commentary, or for non-commercial use, but a recently passed House bill (HR 683) eliminated the current non-commercial protection that the public receives. For instance, when Don McLean sang about driving his Chevy to the levee and finding the levee dry, the songwriter could have been sued by General Motors for trademark dilution under the bill that passed the House. Or when Walter Mondale criticized Gary Hart during the 1984 primaries by using Wendy’s slogan, “Where’s the beef,” the remarks could have been considered a trademark violation under the bill as passed by the House.

“The bill adopted today by the Judiciary Committee restores the non-commercial use defense for trademark dilution cases but still eliminates it in infringement cases,” said Joan Claybrook, Public Citizen president. “It is critical that this be corrected on the Senate floor, as it will spawn lots of frivolous corporate litigation against artists, consumers, illustrators and others who are merely expressing opinion.”

Trademark dilution occurs when the use of the trademark weakens the force of the trademark. Trademark infringement occurs when the use of a trademark might confuse consumers. Threats of litigation against consumers, artists and others commonly invoke both kinds of trademark claims.

“Although we applaud the many improvements to the bill, the job is not done,” said Public Citizen attorney Paul Alan Levy. “This legislation should stop needless litigation, not increase it. The courts should not be burdened by a bad provision.”