Both Houses pass Trademark Dilution Revision Act of 2005

Prior to this Bill, it was not possible for an owner of a famous (or not so famous) mark to obtain injunctive relief without the "presence of actual or likely confusion, or actual economic injury." Under Mosely v. Victoria Secret, __ US __ (2002) The Trademark Dilution Revision Act ("TDRA") of 2005 ends that struggle but with major ramifications for the marketplace of brands.

Then
1) Prior to the TDRA, circuits were split on whether actual damage was a necessary element.
2) Mosely held that "whatever difficulties proof may be entailed, they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation." (16)
3) The statute in question the FTDA requirED that "the owner of a famous mark" is entitled to injunctive relief.... if that use 'causes dilution of the distinctive quality" of the famous mark. 15 U.S.C. 1125(c)(1). The text "unambiguously REQUIRED a showing of actual dilution, rather than a likelihood of dilution." (Mosely, 14).

Now: Post TDRA Amendment
1)Injunctive relief is available 'regardless of the presence or absence of actual or likely confusion, of competition, or actual economic injury." (15 U.S.C.1125(c)(1), as amended).
2) To show a mark famous now, the "court may consider" (i) the duration, extent or advertising and publicity of the mark; (ii) the amount of goods/services offered under the mark; and (iii) the extent of actual recognition."

Ramifications:

Eff.org plays up the concerns cited by the Supremes in the Mosely decision:
1) "the use of DUPONT shoes, BUICK apsirin, and KODAK pianos would be actionable under this litgiation."
2) Publicknowledge.org suggests that because a mark "does not need to be identical" to be protected, it is "quite possible that courts will enjoin KADEK pianos, BIECK aspirin and DOPUNT shoes" as well. This seems like an unlikely application.