# A BILL

To amend title 15, United States Code, to make certain technical and
conforming amendments to trademark law.

*Be it enacted by the Senate and the House of Representatives of the
United States of America in Congress Assembled,*

## SECTION 1. SHORT TITLE.

This Act may be cited as the \"Trademark Technical Improvements Act of
2008\".

**SECTION 2. TECHNICAL AND CONFORMING AMENDMENTS.**

\(a\) CERTIFICATES OF REGISTRATION. \-- Section 1057 of title 15, United
States Code, is amended to read as follows:

### \"§ 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.\"

\(b\) DURATION, AFFIDAVITS AND FEES. \-- Section 1058 of title 15,
United States Code, is amended to read as follows:

\"**§ 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.\"

### (c) Incontestability of right to use mark under certain conditions. \-- Section 1065 of title 15, United States Code, is amended to read as follows:

### \"§ 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.\"

### (d) APPEAL TO COURTS. \-- Section 1071 of title 15, United States Code, is amended to read as follows:

### \"§ 1071   Appeal to courts 

"(a)(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 be 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.\"

### (e) DURATION, AFFIDAVITS AND FEES. \-- Section 1141k of title 15, United States Code, is amended to read as follows:

### \"§ 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."