§ 1125. — False designations of origin, false descriptions, and dilution forbidden.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 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 16 section 470a; title
19 section 1595a.
