**Proposed Amendments to Lanham Act**

### 1. To amend §7 (15 U.S.C. §1057).

Reason for Amendment

The Trademark Law Treaty Implementation Act amended section 8, 15 U.S.C.
§1058, to replace the term \"registrant\" with the term \"owner,\" to
make it clear that the affidavit of continued use or excusable nonuse
must be filed by the owner of the registration. See H.R. Rep. No. 194,
105th Cong., 1st Sess. 18-19 (1997). Section 7(e) of the Act, 15 U.S.C.
§1057(e), is hereby amended to substitute "owner" for "registrant," for
consistency with section 8, and to make it clear that only the owner of
a registration can file a request to amend the registration. This
codifies the longstanding practice of the United States Patent and
Trademark Office (Office). Section 7(b) is amended for consistency with
section 7(e).

Section 7(e) is further amended to delete the reference to a certified
copy of a registration certificate that had been lost or destroyed,
because it is unnecessary. Prior to 2004, the Trademark Rules of
Practice required that any owner requesting amendment under section 7(e)
submit the original certificate of registration or a certified copy
thereof. The Office would attach an updated registration certificate
showing the amendment to the original certificate or certified copy, and
return it to the owner. However, the Office has determined that
requiring the owner to submit an original certificate or a certified
copy for the purpose of physically attaching an updated registration
certificate was unnecessary and inefficient, and amended the rules to
eliminate this requirement. See notice at 69 Fed. Reg. 51362 (Aug. 19,
2004). The Office now sends an updated registration certificate showing
the amendment to the owner, and instructs the owner to attach it to the
certificate of registration. Original certificates or certified copies
thereof are no longer required, and the Office discourages owners from
submitting them.

### §7 (15 U.S.C. §1057). Certificates of registration 

\(a\) **Issuance and form**

Certificates of registration of marks registered upon the principal
register shall be issued in the name of the United States of America,
under the seal of the United States Patent and Trademark Office, and
shall be signed by the Director or have his signature placed thereon,
and a record thereof shall be kept in the United States Patent and
Trademark Office.  The registration shall reproduce the mark, and state
that the mark is registered on the principal register under this
chapter, the date of the first use of the mark, the date of the first
use of the mark in commerce, the particular goods or services for which
it is registered, the number and date of the registration, the term
thereof, the date on which the application for registration was received
in the United States Patent and Trademark Office, and any conditions and
limitations that may be imposed in the registration.

\(b\) **Certificate as prima facie evidence**

A certificate of registration of a mark upon the principal register
provided by this chapter shall be prima facie evidence of the validity
of the registered mark and of the registration of the mark, of the
ownership of the mark, and of the owner's exclusive right to use the
registered mark in commerce on or in connection with the goods or
services specified in the certificate, subject to any conditions or
limitations stated in the certificate.

\(c\) **Application to register mark considered constructive use**

Contingent on the registration of a mark on the principal register
provided by this chapter, the filing of the application to register such
mark shall constitute constructive use of the mark, conferring a right
of priority, nationwide in effect, on or in connection with the goods or
services specified in the registration against any other person except
for a person whose mark has not been abandoned and who, prior to such
filing---

> \(1\) has used the mark;
>
> \(2\) has filed an application to register the mark which is pending
> or has resulted in registration of the mark; or
>
> \(3\) has filed a foreign application to register the mark on the
> basis of which he or she has acquired a right of priority, and timely
> files an application under section 1126(d) to register the mark which
> is pending or has resulted in registration of the mark.

\(d\) **Issuance to assignee**

A certificate of registration of a mark may be issued to the assignee of
the applicant, but the assignment must first be recorded in the United
States Patent and Trademark Office.  In case of change of ownership the
Director shall, at the request of the owner and upon a proper showing
and the payment of the prescribed fee, issue to such assignee a new
certificate of registration of the said mark in the name of such
assignee, and for the unexpired part of the original period.

\(e\) **Surrender, cancellation, or amendment by owner**

Upon application of the owner the Director may permit any registration
to be surrendered for cancellation, and upon cancellation appropriate
entry shall be made in the records of the United States Patent and
Trademark Office.  Upon application of the owner and payment of the
prescribed fee, the Director for good cause may permit any registration
to be amended or to be disclaimed in part:*  Provided*, That the
amendment or disclaimer does not alter materially the character of the
mark.  Appropriate entry shall be made in the records of the United
States Patent and Trademark Office and upon the certificate of
registration.

\(f\) **Copies of United States Patent and Trademark Office records as
evidence**

Copies of any records, books, papers, or drawings belonging to the
United States Patent and Trademark Office relating to marks, and copies
of registrations, when authenticated by the seal of the United States
Patent and Trademark Office and certified by the Director, or in his
name by an employee of the Office duly designated by the Director, shall
be evidence in all cases wherein the originals would be evidence; and
any person making application therefor and paying the prescribed fee
shall have such copies.

\(g\) **Correction of United States Patent and Trademark Office
mistake**

Whenever a material mistake in a registration, incurred through the
fault of the United States Patent and Trademark Office, is clearly
disclosed by the records of the Office a certificate stating the fact
and nature of such mistake shall be issued without charge and recorded
and a printed copy thereof shall be attached to each printed copy of the
registration and such corrected registration shall thereafter have the
same effect as if the same had been originally issued in such corrected
form, or in the discretion of the Director a new certificate of
registration may be issued without charge.  All certificates of
correction heretofore issued in accordance with the rules of the United
States Patent and Trademark Office and the registrations to which they
are attached shall have the same force and effect as if such
certificates and their issue had been specifically authorized by
statute.

\(h\) **Correction of applicant's mistake**

Whenever a mistake has been made in a registration and a showing has
been made that such mistake occurred in good faith through the fault of
the applicant, the Director is authorized to issue a certificate of
correction or, in his discretion, a new certificate upon the payment of
the prescribed fee:*  Provided*, That the correction does not involve
such changes in the registration as to require republication of the
mark.

### 2. To amend §8 (15 U.S.C. §1058).

Reason for Amendment

Sections (a), (b), and (c) of section 8, 15 U.S.C. §1058, are rewritten
to indicate the time frames and requirements for filing the affidavit
and to specify that filing the affidavit in the name of someone other
than the owner of the registration is a deficiency that may be corrected
even after the grace period for filing the affidavit has expired. This
reflects the spirit of the Trademark Law Treaty, as it will facilitate
maintenance of registrations.

The heading of this section adds the words "affidavits and fees" to
mirror the section 71 heading, 15 U.S.C. §1141k.

### §8 (15 U.S.C. §1058).  Duration, affidavits and fees.

\(a\) **Time periods for required affidavits**

Each registration shall remain in force for 10 years, except that the
registration of any mark shall be canceled by the Director unless the
owner of the registration files in the United States Patent and
Trademark Office affidavits that meet the requirements of subsection
(b), within the following time periods:

\(1\) Within the 1-year period immediately preceding the expiration of 6
years following the date of registration under this Act or the date of
the publication under section 1062(c); and

\(2\) Within the 1-year period immediately preceding the expiration of
10 years following the date of registration, and each successive 10-year
period following the date of registration.

\(3\) The owner may file the affidavit required under this section
within the 6-month grace period immediately following the expiration of
the periods in subparagraphs (1) and (2), together with the fee
described in subsection (b) and the additional grace period surcharge
prescribed by the Director.

\(b\) **Requirements for affidavit**

The affidavit referred to in subsection (a) must:

\(1\) (A) State that the mark is in use in commerce;

\(B\) Set forth the goods and/or services recited in the registration on
or in connection with which the mark is in use in commerce;

\(C\) Be accompanied by such number of specimens or facsimiles showing
current use of the mark in commerce as may be required by the Director;
and

\(D\) Be accompanied by the fee prescribed by the Director; or

\(2\) (A) Set forth the goods and/or services recited in the
registration on or in connection with which the mark is not in use in
commerce;

\(B\) Include a showing that any nonuse is due to special circumstances
which excuse such nonuse and is not due to any intention to abandon the
mark; and

\(C\) Be accompanied by the fee prescribed by the Director.

\(c\) **Deficient affidavit**

If any submission filed within the period set forth in subsection (a) is
deficient, including that the affidavit was not filed in the name of the
owner of the registration, the deficiency may be corrected after the
statutory time period, within the time prescribed after notification of
the deficiency. Such submission must be accompanied by the additional
deficiency surcharge prescribed by the Director.

\(d\) **Notice of requirement**

Special notice of the requirement for such affidavit shall be attached
to each certificate of extension of protection.

\(e\) **Notification of acceptance or refusal**

The Director shall notify any owner who files any affidavit required by
this section of the Director's acceptance or refusal thereof and, in the
case of a refusal, the reasons therefor.

\(f\) **Designation of resident for service of process and notices**

If the owner is not domiciled in the United States, the owner may
designate, by a document filed in the United States Patent and Trademark
Office, the name and address of a person resident in the United States
on whom may be served notices or process in proceedings affecting the
mark. Such notices or process may be served upon the person so
designated by leaving with that person or mailing to that person a copy
thereof at the address specified in the last designation so filed. If
the person so designated cannot be found at the last designated address,
or if the owner does not designate by a document filed in the United
States Patent and Trademark Office the name and address of a person
resident in the United States on whom may be served notices or process
in proceedings affecting the mark, such notices or process may be served
on the Director.

### 3. To amend §15 (15 U.S.C. §1065).

Reason for Amendment

The Trademark Law Treaty Implementation Act amended section 8, 15 U.S.C.
§1058, to replace the term \"registrant\" with the term \"owner\"
throughout section 8, to make it clear that the affidavit of continued
use or excusable nonuse must be filed by the owner of the registration.
The first, second and seventh paragraphs of section 15, 15 U.S.C. §1065,
of the Act are hereby amended to substitute "owner" for "registrant,"
for consistency with section 8, and to make it clear that the owner of
the registration must file an affidavit stating that the mark has been
in continuous use in commerce for a period of five years after the date
of registration in order to obtain the benefits of section 15. This
codifies the longstanding practice of the Office.

### §15 (15 U.S.C. §1065). Incontestability of right to use mark under certain conditions

Except on a ground for which application to cancel may be filed at
anytime under paragraphs (3) and (5) of section 1064 of this title, and
except to the extent, if any, to which the use of a mark registered on
the principal register infringes a valid right acquired under the law of
any State or Territory by use of a mark or trade name continuing from a
date prior to the date of registration under this chapter of such
registered mark, the right of the owner to use such registered mark in
commerce for the goods or services on or in connection with which such
registered mark has been in continuous use for five consecutive years
subsequent to the date of such registration and is still in use in
commerce, shall be incontestable: *Provided*, That---

\(1\) there has been no final decision adverse to the owner's claim of
ownership of such mark for such goods or services, or to the owner's
right to register the same or to keep the same on the register; and

\(2\) there is no proceeding involving said rights pending in the United
States Patent and Trademark Office or in a court and not finally
disposed of; and

\(3\) an affidavit is filed with the Director within one year after the
expiration of any such five-year period setting forth those goods or
services stated in the registration on or in connection with which such
mark has been in continuous use for such five consecutive years and is
still in use in commerce, and the other matters specified in paragraphs
(1) and (2) of this section; and

\(4\) no incontestable right shall be acquired in a mark which is the
generic name for the goods or services or a portion thereof, for which
it is registered.

Subject to the conditions above specified in this section, the
incontestable right with reference to a mark registered under this
chapter shall apply to a mark registered under the Act of March 3, 1881,
or the Act of February 20, 1905, upon the filing of the required
affidavit with the Director within one year after the expiration of any
period of five consecutive years after the date of publication of a mark
under the provisions of subsection (c) of section 1062 of this title.

The Director shall notify any owner who files the above-prescribed
affidavit of the filing thereof.

### 4. To amend §17(b), 15 U.S.C. §1067(b)

Reason for Amendment

The section was previously amended by the Patent and Trademark Office
Efficiency Act, 113 Stat. 1501A-583, to substitute "Director" for
"Commissioner."

Public Law 107-273, 116 Stat. 1902, Section 13202 entitled "Patent and
Trademark Efficiency Act Amendments" subsequently directed amendment of
this section by inserting "the Deputy Commissioner" after
"Commissioner"; but because "Commissioner" no longer appeared in the
text, this amendment was not entered. Further, the correct title is
"Deputy Director."

This proposed amendment will correct the omission of "Deputy Director"
by inserting the correct title after the first occurrence of "Director"
in section 17(b).

### §17 (15 U.S.C. §1067). Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board 

\(a\) \*\*\*\*\*

\(b\) The Trademark Trial and Appeal Board shall include the Director,
the Deputy Director, the Commissioner for Patents, the Commissioner for
Trademarks, and administrative trademark judges who are appointed by the
Director.

### 5. To amend §21(a)(1), 15 U.S.C. §1071(a)(1):

Reason for Amendment

The Madrid Protocol Implementation Act of 2002, Public Law 107-273, 116
Stat. 1758, 1913-1921, added section 71, 15 U.S.C. §1141k, to require
affidavits of use to be filed for registrations issued as extensions of
protection under the Madrid Protocol. Reference to section 71 was
inadvertently omitted from section 21, (15 U.S.C. §1071) which permits
appeal of an adverse decision of the Director regarding an affidavit of
continued use or renewal application to the United States Court of
Appeals for the Federal Circuit.

This proposed amendment will correct the omission of the reference to
section 71 in section 21(a)(1).

### §21 (15 U.S.C. §1071).  Appeal to courts 

**(a) Persons entitled to appeal; United States Court of Appeals for the
Federal Circuit; waiver of civil action; election of civil action by
adverse party; procedure**

\(1\) An applicant for registration of a mark, party to an interference
proceeding, party to an opposition proceeding, party to an application
to register as a lawful concurrent user, party to a cancellation
proceeding, a registrant who has filed an affidavit as provided in
section 1058 or section 1141k, or an applicant for renewal, who is
dissatisfied with the decision of the Director or Trademark Trial and
Appeal Board, may appeal to the United States Court of Appeals for the
Federal Circuit thereby waiving his right to proceed under subsection
(b) of this section:*  Provided*, That such appeal shall be dismissed if
any adverse party to the proceeding, other than the Director, shall,
within twenty days after the appellant has filed notice of appeal
according to paragraph (2) of this subsection, files notice with the
Director that he elects to have all further proceedings conducted as
provided in subsection (b) of this section.  Thereupon the appellant
shall have thirty days thereafter within which to file a civil action
under subsection (b) of this section, in default of which the decision
appealed from shall govern the further proceedings in the case.

\(2\) When an appeal is taken to the United States Court of Appeals for
the Federal Circuit, the appellant shall file in the United States
Patent and Trademark Office a written notice of appeal directed to the
Director, within such time after the date of the decision from which the
appeal is taken as the Director prescribes, but in no case less than 60
days after that date.

\(3\) The Director shall transmit to the United States Court of Appeals
for the Federal Circuit a certified list of the documents comprising the
record in the United States Patent and Trademark Office. The court may
request that the Director forward the original or certified copies of
such documents during pendency of the appeal. In an ex parte case, the
Director shall submit to that court a brief explaining the grounds for
the decision of the United States Patent and Trademark Office,
addressing all the issues involved in the appeal.  The court shall,
before hearing an appeal, give notice of the time and place of the
hearing to the Director and parties in the appeal.

\(4\) The United States Court of Appeals for the Federal Circuit shall
review the decision from which the appeal is taken on the record before
the United States Patent and Trademark Office.  Upon its determination
the court shall issue its mandate and opinion to the Director, which
shall be entered of record in the United States Patent and Trademark
Office and shall govern the further proceedings in the case.  However,
no final judgment shall be entered in favor of an applicant under
section 1051(b) before the mark is registered, if such applicant cannot
prevail without establishing constructive use pursuant to
section 1057(c).

\(b\) (1) Whenever a person authorized by subsection (a) of this section
to appeal to the United States Court of Appeals for the Federal Circuit
is dissatisfied with the decision of the Director or Trademark Trial and
Appeal Board, said person may, unless appeal has been taken to said
United States Court of Appeals for the Federal Circuit, have remedy by a
civil action if commenced within such time after such decision, not less
than sixty days, as the Director appoints or as provided in subsection
(a) of this section.  The court may adjudge that an applicant is
entitled to a registration upon the application involved, that a
registration involved should be canceled, or such other matter as the
issues in the proceeding require, as the facts in the case may appear. 
Such adjudication shall authorize the Director to take any necessary
action, upon compliance with the requirements of law.  However, no final
judgment shall be entered in favor of an applicant under section 1051(b)
before the mark is registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 1057(c).

\(2\) The Director shall not be made a party to an inter partes
proceeding under this subsection, but he shall be notified of the filing
of the complaint by the clerk of the court in which it is filed and
shall have the right to intervene in the action.

\(3\) In any case where there is no adverse party, a copy of the
complaint shall be served on the Director, and, unless the court finds
the expenses to be unreasonable, all the expenses of the proceeding
shall be paid by the party bringing the case, whether the final decision
is in favor of such party or not.  In suits brought hereunder, the
record in the United States Patent and Trademark Office shall be
admitted on motion of any party, upon such terms and conditions as to
costs, expenses, and the further cross-examination of the witnesses as
the court imposes, without prejudice to the right of any party to take
further testimony.  The testimony and exhibits of the record in the
United States Patent and Trademark Office, when admitted, shall have the
same effect as if originally taken and produced in the suit.

\(4\) Where there is an adverse party, such suit may be instituted
against the party in interest as shown by the records of the United
States Patent and Trademark Office at the time of the decision
complained of, but any party in interest may become a party to the
action.  If there are adverse parties residing in a plurality of
districts not embraced within the same State, or an adverse party
residing in a foreign country, the United States District Court for the
District of Columbia shall have jurisdiction and may issue summons
against the adverse parties directed to the marshal of any district in
which any adverse party resides.  Summons against adverse parties
residing in foreign countries may be served by publication or otherwise
as the court directs.

6\. To amend §71 (15 U.S.C. § 1141k)

Reason for Amendment

To bring the provisions for maintaining extensions of protection under
the Madrid Protocol in conformity with the provisions for maintaining
registrations: The provisions of the Trademark Law Treaty Implementation
Act, Public Law No. 105-330, 112 Stat. 3064, which changed the grace
periods for filing affidavits of use or excusable nonuse and provided
for correction of deficiencies in such affidavits, were inadvertently
omitted from section 71, 15 U.S.C. §1141k, which sets forth the
requirements for filing affidavits of use or excusable nonuse for
registered extensions of protection of international registrations to
the United States pursuant to section 69, 15 U.S.C. §1141i, of the
Trademark Act.

In addition, section 71(c) provides that the filing of the affidavit in
the name of someone other than the "holder" of the international
registration is a deficiency that may be cured even after the grace
period for filing the affidavit have expired, upon payment of an
additional surcharge. This reflects the spirit of the Trademark Law
Treaty, as it will facilitate maintenance of extensions of protection.

The heading of this section adds the word "Duration" to mirror the
section 8 heading.

### §71 (15 U.S.C. § 1141k). Duration, affidavits and fees.

\(a\) **Time periods for required affidavits**

Each extension of protection for which a certificate has been issued
under section 1141i shall remain in force for the term of the
international registration upon which it is based, except that the
extension of protection of any mark shall be canceled by the Director
unless the holder of the international registration files in the United
States Patent and Trademark Office affidavits that meet the requirements
of subsection (b), within the following time periods:

\(1\) Within the 1-year period immediately preceding the expiration of 6
years following the date of issuance of the certificate of extension of
protection; and

\(2\) Within the 1-year period immediately preceding the expiration of
10 years following the date of issuance of the certificate of extension
of protection, and each successive 10-year period following the date of
issuance of the certificate of extension of protection.

\(3\) The holder may file the affidavit required under this section
within a grace period of 6 months after the end of the applicable time
period in subparagraph (1) or (2) of this section, together with the fee
described in paragraph (b) and the additional grace period surcharge
prescribed by the Director.

\(b\) **Requirements for affidavit**

The affidavit referred to in subsection (a) must:

> \(1\) (A) State that the mark is in use in commerce;
>
> \(B\) Set forth the goods and/or services recited in the extension of
> protection on or in connection with which the mark is in use in
> commerce;
>
> \(C\) Be accompanied by such number of specimens or facsimiles showing
> current use of the mark in commerce as may be required by the
> Director; and
>
> \(D\) Be accompanied by the fee prescribed by the Director; or
>
> \(2\) (A) Set forth the goods and/or services recited in the extension
> of protection on or in connection with which the mark is not in use in
> commerce;
>
> \(B\) Include a showing that any nonuse is due to special
> circumstances which excuse such nonuse and is not due to any intention
> to abandon the mark; and
>
> \(C\) Be accompanied by the fee prescribed by the Director.

\(c\) **Deficient affidavit**

If any submission filed within the period set forth in subsection (a) is
deficient, including that the affidavit was not filed in the name of the
holder of the international registration, the deficiency may be
corrected after the statutory time period, within the time prescribed
after notification of the deficiency. Such submission must be
accompanied by the additional deficiency surcharge prescribed by the
Director.

\(d\) **Notice of requirement**

Special notice of the requirement for such affidavit shall be attached
to each certificate of extension of protection.

\(e\) **Notification of acceptance or refusal**

The Director shall notify the holder of the international registration
who files any affidavit required by this section of the Director's
acceptance or refusal thereof and, in the case of a refusal, the reasons
therefor.

\(f\) **Designation of resident for service of process and notices**

If the holder of the international registration of the mark is not
domiciled in the United States, the holder may designate, by a document
filed in the United States Patent and Trademark Office, the name and
address of a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark. Such notices or
process may be served upon the person so designated by leaving with that
person or mailing to that person a copy thereof at the address specified
in the last designation so filed. If the person so designated cannot be
found at the last designated address, or if the holder does not
designate by a document filed in the United States Patent and Trademark
Office the name and address of a person resident in the United States on
whom may be served notices or process in proceedings affecting the mark,
such notices or process may be served on the Director.