
From the U.S. Code Online via GPO Access
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[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 2002]
[CITE: 15USC1125]

 
                      TITLE 15--COMMERCE AND TRADE
 
                         CHAPTER 22--TRADEMARKS
 
                   SUBCHAPTER III--GENERAL PROVISIONS
 
Sec. 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.

(July 5, 1946, ch. 540, title VIII, Sec. 43, 60 Stat. 441; Pub. L. 100-
667, title I, Sec. 132, Nov. 16, 1988, 102 Stat. 3946; Pub. L. 102-542, 
Sec. 3(c), Oct. 27, 1992, 106 Stat. 3568; Pub. L. 104-98, Sec. 3(a), 
Jan. 16, 1996, 109 Stat. 985; Pub. L. 106-43, Secs. 3(a)(2), 5, Aug. 5, 
1999, 113 Stat. 219, 220; Pub. L. 106-113, div. B, Sec. 1000(a)(9) 
[title III, Sec. 3002(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-545.)

                       References in Text

    Acts March 3, 1881, and February 20, 1905, referred to in subsec. 
(c)(1)(H), (3), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and Feb. 
20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as 
inconsistent with this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 
60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of 
this title.


                            Prior Provisions

    Act Mar. 19, 1920, ch. 104, Sec. 3, 41 Stat. 534.


                               Amendments

    1999--Subsec. (a)(3). Pub. L. 106-43, Sec. 5, added par. (3).
    Subsec. (c)(2). Pub. L. 106-43, Sec. 3(a)(2), inserted ``as set 
forth in section 1116 of this title'' after ``relief'' in first 
sentence.
    Subsec. (d). Pub. L. 106-113 added subsec. (d).
    1996--Subsec. (c). Pub. L. 104-98 added subsec. (c).
    1992--Subsec. (a). Pub. L. 102-542 designated existing provisions as 
par. (1), redesignated former pars. (1) and (2) as subpars. (A) and (B), 
respectively, and added par. (2).
    1988--Subsec. (a). Pub. L. 100-667 amended subsec. (a) generally. 
Prior to amendment, subsec. (a) read as follows: ``Any person who shall 
affix, apply, or annex, or use in connection with any goods or services, 
or any container or containers for goods, a false designation of origin, 
or any false description or representation, including words or other 
symbols tending falsely to describe or represent the same, and shall 
cause such goods or services to enter into commerce, and any person who 
shall with knowledge of the falsity of such designation of origin or 
description or representation cause or procure the same to be 
transported or used in commerce or deliver the same to any carrier to be 
transported or used, shall be liable to a civil action by any person 
doing business in the locality falsely indicated as that of origin or in 
the region in which said locality is situated, or by any person who 
believes that he is or is likely to be damaged by the use of any such 
false description or representation.''


                    Effective Date of 1999 Amendment

    Amendment by Pub. L. 106-113 applicable to all domain names 
registered before, on, or after Nov. 29, 1999, see section 1000(a)(9) 
[title III, Sec. 3010] of Pub. L. 106-113, set out as a note under 
section 1117 of this title.


                    Effective Date of 1996 Amendment

    Section 5 of Pub. L. 104-98 provided that: ``This Act [amending this 
section and section 1127 of this title and enacting provisions set out 
as a note under section 1051 of this title] and the amendments made by 
this Act shall take effect on the date of the enactment of this Act 
[Jan. 16, 1996].''


                    Effective Date of 1992 Amendment

    Amendment by Pub. L. 102-542 effective with respect to violations 
that occur on or after Oct. 27, 1992, see section 4 of Pub. L. 102-542, 
set out as a note under section 1114 of this title.


                    Effective Date of 1988 Amendment

    Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988, 
see section 136 of Pub. L. 100-667, set out as a note under section 1051 
of this title.


                  Repeal and Effect on Existing Rights

    Repeal of inconsistent provisions, effect of this chapter on pending 
proceedings and existing registrations and rights under prior acts, see 
notes set out under section 1051 of this title.


   Study on Abusive Domain Name Registrations Involving Personal Names

    Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title III, Sec. 3006], 
Nov. 29, 1999, 113 Stat. 1536, 1501A-550, provided that:
    ``(a) In General.--Not later than 180 days after the date of the 
enactment of this Act [Nov. 29, 1999], the Secretary of Commerce, in 
consultation with the Patent and Trademark Office and the Federal 
Election Commission, shall conduct a study and report to Congress with 
recommendations on guidelines and procedures for resolving disputes 
involving the registration or use by a person of a domain name that 
includes the personal name of another person, in whole or in part, or a 
name confusingly similar thereto, including consideration of and 
recommendations for--
        ``(1) protecting personal names from registration by another 
    person as a second level domain name for purposes of selling or 
    otherwise transferring such domain name to such other person or any 
    third party for financial gain;
        ``(2) protecting individuals from bad faith uses of their 
    personal names as second level domain names by others with malicious 
    intent to harm the reputation of the individual or the goodwill 
    associated with that individual's name;
        ``(3) protecting consumers from the registration and use of 
    domain names that include personal names in the second level domain 
    in manners which are intended or are likely to confuse or deceive 
    the public as to the affiliation, connection, or association of the 
    domain name registrant, or a site accessible under the domain name, 
    with such other person, or as to the origin, sponsorship, or 
    approval of the goods, services, or commercial activities of the 
    domain name registrant;
        ``(4) protecting the public from registration of domain names 
    that include the personal names of government officials, official 
    candidates, and potential official candidates for Federal, State, or 
    local political office in the United States, and the use of such 
    domain names in a manner that disrupts the electoral process or the 
    public's ability to access accurate and reliable information 
    regarding such individuals;
        ``(5) existing remedies, whether under State law or otherwise, 
    and the extent to which such remedies are sufficient to address the 
    considerations described in paragraphs (1) through (4); and
        ``(6) the guidelines, procedures, and policies of the Internet 
    Corporation for Assigned Names and Numbers and the extent to which 
    they address the considerations described in paragraphs (1) through 
    (4).
    ``(b) Guidelines and Procedures.--The Secretary of Commerce shall, 
under its Memorandum of Understanding with the Internet Corporation for 
Assigned Names and Numbers, collaborate to develop guidelines and 
procedures for resolving disputes involving the registration or use by a 
person of a domain name that includes the personal name of another 
person, in whole or in part, or a name confusingly similar thereto.''

                  Section Referred to in Other Sections

    This section is referred to in sections 1052, 1063, 1064, 1092, 
1114, 1116, 1117, 1118, 1122 of this title; title 19 section 1595a.
