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U.S. Code as of:
01/19/04
Section 1125. False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of
fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities
by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his
or her or another person's goods, services, or commercial
activities,
shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act.
(2) As used in this subsection, the term "any person" includes
any State, instrumentality of a State or employee of a State or
instrumentality of a State acting in his or her official capacity.
Any State, and any such instrumentality, officer, or employee,
shall be subject to the provisions of this chapter in the same
manner and to the same extent as any nongovernmental entity.
(3) In a civil action for trade dress infringement under this
chapter for trade dress not registered on the principal register,
the person who asserts trade dress protection has the burden of
proving that the matter sought to be protected is not functional.
(b) Importation
Any goods marked or labeled in contravention of the provisions of
this section shall not be imported into the United States or
admitted to entry at any customhouse of the United States. The
owner, importer, or consignee of goods refused entry at any
customhouse under this section may have any recourse by protest or
appeal that is given under the customs revenue laws or may have the
remedy given by this chapter in cases involving goods refused entry
or seized.
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled, subject to the
principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person's commercial
use in commerce of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the distinctive
quality of the mark, and to obtain such other relief as is provided
in this subsection. In determining whether a mark is distinctive
and famous, a court may consider factors such as, but not limited
to -
(A) the degree of inherent or acquired distinctiveness of the
mark;
(B) the duration and extent of use of the mark in connection
with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the
mark;
(D) the geographical extent of the trading area in which the
mark is used;
(E) the channels of trade for the goods or services with which
the mark is used;
(F) the degree of recognition of the mark in the trading areas
and channels of trade used by the marks' owner and the person
against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks
by third parties; and
(H) whether the mark was registered under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal
register.
(2) In an action brought under this subsection, the owner of the
famous mark shall be entitled only to injunctive relief as set
forth in section 1116 of this title unless the person against whom
the injunction is sought willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark. If such willful
intent is proven, the owner of the famous mark shall also be
entitled to the remedies set forth in sections 1117(a) and 1118 of
this title, subject to the discretion of the court and the
principles of equity.
(3) The ownership by a person of a valid registration under the
Act of March 3, 1881, or the Act of February 20, 1905, or on the
principal register shall be a complete bar to an action against
that person, with respect to that mark, that is brought by another
person under the common law or a statute of a State and that seeks
to prevent dilution of the distinctiveness of a mark, label, or
form of advertisement.
(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing
goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.
(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of
a mark, including a personal name which is protected as a mark
under this section, if, without regard to the goods or services of
the parties, that person -
(i) has a bad faith intent to profit from that mark, including
a personal name which is protected as a mark under this section;
and
(ii) registers, traffics in, or uses a domain name that -
(I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or confusingly
similar to that mark;
(II) in the case of a famous mark that is famous at the time
of registration of the domain name, is identical or confusingly
similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of
section 706 of title 18 or section 220506 of title 36.
(B)(i) In determining whether a person has a bad faith intent
described under subparagraph (A), a court may consider factors such
as, but not limited to -
(I) the trademark or other intellectual property rights of the
person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal
name of the person or a name that is otherwise commonly used to
identify that person;
(III) the person's prior use, if any, of the domain name in
connection with the bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the
mark in a site accessible under the domain name;
(V) the person's intent to divert consumers from the mark
owner's online location to a site accessible under the domain
name that could harm the goodwill represented by the mark, either
for commercial gain or with the intent to tarnish or disparage
the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site;
(VI) the person's offer to transfer, sell, or otherwise assign
the domain name to the mark owner or any third party for
financial gain without having used, or having an intent to use,
the domain name in the bona fide offering of any goods or
services, or the person's prior conduct indicating a pattern of
such conduct;
(VII) the person's provision of material and misleading false
contact information when applying for the registration of the
domain name, the person's intentional failure to maintain
accurate contact information, or the person's prior conduct
indicating a pattern of such conduct;
(VIII) the person's registration or acquisition of multiple
domain names which the person knows are identical or confusingly
similar to marks of others that are distinctive at the time of
registration of such domain names, or dilutive of famous marks of
others that are famous at the time of registration of such domain
names, without regard to the goods or services of the parties;
and
(IX) the extent to which the mark incorporated in the person's
domain name registration is or is not distinctive and famous
within the meaning of subsection (c)(1) of this section.
(ii) Bad faith intent described under subparagraph (A) shall not
be found in any case in which the court determines that the person
believed and had reasonable grounds to believe that the use of the
domain name was a fair use or otherwise lawful.
(C) In any civil action involving the registration, trafficking,
or use of a domain name under this paragraph, a court may order the
forfeiture or cancellation of the domain name or the transfer of
the domain name to the owner of the mark.
(D) A person shall be liable for using a domain name under
subparagraph (A) only if that person is the domain name registrant
or that registrant's authorized licensee.
(E) As used in this paragraph, the term "traffics in" refers to
transactions that include, but are not limited to, sales,
purchases, loans, pledges, licenses, exchanges of currency, and any
other transfer for consideration or receipt in exchange for
consideration.
(2)(A) The owner of a mark may file an in rem civil action
against a domain name in the judicial district in which the domain
name registrar, domain name registry, or other domain name
authority that registered or assigned the domain name is located if
-
(i) the domain name violates any right of the owner of a mark
registered in the Patent and Trademark Office, or protected under
subsection (a) or (c) of this section; and
(ii) the court finds that the owner -
(I) is not able to obtain in personam jurisdiction over a
person who would have been a defendant in a civil action under
paragraph (1); or
(II) through due diligence was not able to find a person who
would have been a defendant in a civil action under paragraph
(1) by -
(aa) sending a notice of the alleged violation and intent
to proceed under this paragraph to the registrant of the
domain name at the postal and e-mail address provided by the
registrant to the registrar; and
(bb) publishing notice of the action as the court may
direct promptly after filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute
service of process.
(C) In an in rem action under this paragraph, a domain name shall
be deemed to have its situs in the judicial district in which -
(i) the domain name registrar, registry, or other domain name
authority that registered or assigned the domain name is located;
or
(ii) documents sufficient to establish control and authority
regarding the disposition of the registration and use of the
domain name are deposited with the court.
(D)(i) The remedies in an in rem action under this paragraph
shall be limited to a court order for the forfeiture or
cancellation of the domain name or the transfer of the domain name
to the owner of the mark. Upon receipt of written notification of a
filed, stamped copy of a complaint filed by the owner of a mark in
a United States district court under this paragraph, the domain
name registrar, domain name registry, or other domain name
authority shall -
(I) expeditiously deposit with the court documents sufficient
to establish the court's control and authority regarding the
disposition of the registration and use of the domain name to the
court; and
(II) not transfer, suspend, or otherwise modify the domain name
during the pendency of the action, except upon order of the
court.
(ii) The domain name registrar or registry or other domain name
authority shall not be liable for injunctive or monetary relief
under this paragraph except in the case of bad faith or reckless
disregard, which includes a willful failure to comply with any such
court order.
(3) The civil action established under paragraph (1) and the in
rem action established under paragraph (2), and any remedy
available under either such action, shall be in addition to any
other civil action or remedy otherwise applicable.
(4) The in rem jurisdiction established under paragraph (2) shall
be in addition to any other jurisdiction that otherwise exists,
whether in rem or in personam.
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