RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/139
20 April 1999
(99-1624)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
COMMUNICATION FROM THE UNITED STATES
The following communication addressed to the Ambassador of Cuba, dated 15 April 1999,
has been received by the Secretariat from the Permanent Mission of the United States.
_______________
This is in response to the request for information in document IP/C/W/120/Rev.1,1 dated
7 January 1999.2  In response to this communication, the Permanent Mission of the United States
provides the following documents:
1. Section 211 of H.R.4328 (Pub. L. 105-277), signed into law on October 21, 1998;2. 31 C.F.R. §515.305;3. 31 C.F.R. §515.336;4. 31 C.F.R. §515.527;5. 15 U.S.C. §1126(b); and
6. 15 U.S.C. §1126(e).
We note that all of the documents mentioned, along with other U.S. pending legislation, laws,
and regulations, are publicly available via the Internet.
                                                     
1 IP/C/W/120 for the French and Spanish versions.
2 This request was reiterated at the meeting of the Council for TRIPS on 17 February 1999 (see
document IP/C/M/22, paragraph 158 and document IP/C/W/129).IP/C/W/139
Page 2
October 19, 1998
CONGRESSIONAL RECORD – HOUSE
H11067
PATENT AND TRADEMARK OFFICE
SALARIES AND EXPENSES
(RESCISSION )
Of the unobligated balances available under this heading from prior year appropriations, fees
collected in this fiscal year, and balances of prior fees, $71,000,000 are rescinded.
GENERAL PROVISIONS – DEPARTMENT OF COMMERCE
(…)
Sec. 211. (a)(1) Notwithstanding any other provision of law, no transaction or payment shall be
authorized or approved pursuant to section 515.527 of title 31, Code of Federal Regulations, as ineffect on September 9, 1998, with respect to a mark, trade name, or commercial name that is the same
as or substantially similar to a mark, trade name, or commercial name that was used in connection
with a business or assets that were confiscated un less the original owner of the mark, trade name, or
commercial name, or the bona fide successor-in-interest has expressly consented.
(2) No U.S. court shall recognize, enforce or otherwise validate any assertion of rights by a
designated national based on common law rights or registration obtained under such section 515.527
of such a confiscated mark, trade name, or commercial name.
(b) No U.S. court shall recognize, enforce or otherwise validate any assertion of treaty rights
by a designated national or its successor-in-interest under sections 44 (b) or (e) of the Trademark Act
of 1946 (15 U.S.C. 1126 (b) or (e)) for a mark, trade name, or commercial name that is the same as or
substantially similar to a mark, trade name, or commercial name that was used in connection with a
business or assets that were confiscated unless the original owner of such mark, trade name, or
commercial name, or the bona fide successor-in-interest has expressly consented.
(c) The Secretary of the Treasury shall promulgate such rules and regulations as are necessary
to carry out the provisions of this section.
(d) In this section:(1) The term "designated national" has the meaning given such term in section 515.305 of
title 31, Code of Federal Regulations, as in effect on September 9, 1998, and includes a national of
any foreign country who is a successor- in- interest to a designated national.
(2) The term "confiscated" has the meaning given such term in section 515.336 of title 31,
Code of Federal Regulations, as in effect on September 9, 1998.IP/C/W/139
Page 3
[Code of Federal Regulations]
[Title 31, Volume 2, Parts 200 to end]
[Revised as of July 1, 1998]
From the U.S. Government Printing Office via GPO Access
[CITE : 31CFR515 .305]
[Page 512]
TITLE 31--MONEY AND FINANCE: TREASURY
DEPARTMENT OF THE TREASURY
PART 515--CUBAN ASSETS CONTROL REGULATIONS--Table of Contents
Subpart C--General Definitions
Sec. 515. 305  Designated national.
    For the purposes of this part, the term design ated national shall mean Cuba and any national thereof
including any person who is a specially designated national.IP/C/W/139
Page 4
[Code of Federal Regulations]
[Title 31, Volume 2, Parts 200 to end]
[Revised as of July 1, 1998]
From the U.S. Government Printing Office via GPO Access
[CITE : 31CFR515 .336]
[Page 516]
TITLE 31--MONEY AND FINANCE: TREASURY
DEPARTMENT OF THE TREASURY
PART 515--CUBAN ASSETS CONTROL REGULATIONS--Table of Contents
Subpart C--General Definitions
Sec. 515. 336  Confiscated.
    As used in Sec. 515.208, the term confiscated refers to:    (a) The nationalization, expropriation, or other seizure by the Cuban Government of ownership or
control of property, on or after January 1, 1959:
    (1) Without the property having been returned or adequate and effective compensation provided; or    (2) Without the claim to the property having  been settled pursuant to an international claims
settlement agreement or other mutually accepted settlement procedure; and
    (b) The repudiation by the Cuban Government of, the default by the Cuban Government on, or the
failure of the Cuban Government to pay, on or after January 1, 1959:
    (1) A debt of any enterprise which has been nationalized, expropriated, or otherwise taken by the
Cuban Government;
    (2) A debt which is a charge on property nationalized, expropriated, or otherwise taken by the
Cuban Government; or
    (3) A debt which was incurred by the Cuban Government in satisfaction or settlement of a
confiscated property claim.
[61 FR 37386, July 18, 1996]IP/C/W/139
Page 5
[Code of Federal Regulations]
[Title 31, Volume 2, Parts 200 to end]
[Revised as of July 1, 1998]
From the U.S. Government Printing Office via GPO Access
[CITE : 31CFR515 .527]
[Page 528]
TITLE 31--MONEY AND FINANCE: TREASURY
DEPARTMENT OF THE TREASURY
PART 515--CUBAN ASSETS CONTROL REGULATIONS--Table of Contents
Subpart E--Licenses, Authorizations, and Statements of Licensing Policy
Sec. 515. 527  Certain transactions with respect to United States intellectual property.
    (a) Transactions related to the registration and renewal in the United States Patent and Trademark
Office or the United States Copyright Office of patents, trademarks, and copyrights in which the
Government of Cuba or a Cuban national has an interest are authorized.
    (b) This section authorizes the payment from blocked accounts or otherwise of fees currently due to
the United States Government in connection with any transaction authorized in paragraph (a) of this
section.
    (c) This section further authorizes the payment from blocked accounts or otherwise of the
reasonable and customary fees and charges currently due to attorneys or representatives within the
United States in connection with the transactions authorized in paragraph (a) of this section.
[60 FR 54196, Oct. 20, 1995]IP/C/W/139
Page 6
TITLE IX – INTERNATIONAL CONVENTIONS
Sec. 44 (15 U.S.C. §1126).  International conventions; register of marks
(…)(b)    Any person whose country of origin is a party to any convention or treaty relating to trademarks,
trade or commercial names, or the repression of unfair competition, to which the United States is also
a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the
benefits of this section under the conditions expressed herein to the extent necessary to give effect to
any provision of such convention, treaty or reciprocal law, in addition to the rights to which any
owner of a mark is otherwise entitled by this Act.
(…)(e)   A mark duly registered in the country of origin of the foreign applicant may be registered on the
principal register if eligible, otherwise on the supplemental register herein provided. The applicationtherefor shall be accompanied by a certification or a certified copy of the registration in the country of
origin of the applicant. The application must state the applicant's bona fide intention to use the mark
in commerce, but use in commerce shall not be required prior to registration.
(…)
__________