WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/USA/T/3 
8 June 2010 
 (10-3126) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Council  Original:   English/ 
 anglais/  inglés 
 
  
NOTIFICATION OF LAWS AND REGULATIONS  
UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
   The present text
1 reproduces the Trademark Technical  and Conforming Amendment Act 
of 2010, as notified by the Delegation of the Unite d States on 28 May 2010 under Article 63.2 of the 
Agreement (see document IP/N/1/USA/2). __________________________________________________________________________________ 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
  
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA  
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE  
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
   Le présent document contient le texte
1 de la Loi de 2010 apportant des modifications 
techniques et d'harmonisation à la Loi sur les marqu es, notifiée par la délégation des États-Unis le 
28 mai 2010 au titre de l'article 63:2 de l'A ccord (voir le document IP/N/1/USA/2). 
__________________________________________________________________________________ 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 
 En el presente documento se reproduce el texto1 de la Ley de Enmienda Técnica y de Ajuste 
en materia de Marcas de Fábrica o de Comercio de  2010 notificada por la delegación de los Estados 
Unidos el 28 de mayo de 2010 en virtud del párrafo 2 del artículo 63 del Acuerdo (véase el 
documento IP/N/1/USA/2). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/USA/T/3 
Page 2  
 
  TRADEMARK TECHNICAL AND CONFOR MING AMENDMENT ACT OF 2010 
 
124 STAT. 66 PUBLIC LAW 111–146—MAR. 17, 2010 Public Law 111–146 111th Congress 
 
An Act  To make certain technical and confor ming amendments to the Lanham Act. 
 
Be it enacted by the Senate and House of Representa tives of the United States of America in Congress 
assembled,  SECTION 1. SHORT TITLE.  
This Act may be cited as the "Trademark Techni cal and Conforming Amendment Act of 2010".   
 
SEC. 2. DEFINITION.  
For purposes of this Act, the term "Trademark Act of 1946" means the Act entitled "An Act to 
provide for the registration and protection of tr ademarks used in commerce, to carry out the 
provisions of certain international conventions , and for other purposes", approved July 5, 1946 
(commonly referred to as the "Lanham Act"; 15 U.S.C. 1051 et. seq).   
 
SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS.  
 
(a) CERTIFICATES OF REGISTRATION.—Section 7 of the Trademark Act of 1946 (15 U.S.C. 1057) is amended—  
 
(1) by inserting "United States" before "Paten t and Trademark Office" each place that term 
appears;  
  (2) in subsection (b), by striking "registrant's"  each place that appears and inserting "owner's";  
 
 (3) in subsection (e)—  
   (A) by striking "registrant" each place that term appears and inserting "owner"; and     (B) in the third sentence, by striking "or, if said certificate is lost or destroyed, upon a 
certified copy thereof"; and 
  (4) by amending subsection (g) to read as follows:   
 "(g) CORRECTION OF PATENT AND TRADEMARK OFFICE MISTAKE.—   
 Whenever a material mistake in a regist ration, 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 ther eof 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 regi stration 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 re gistrations to which they are attached  IP/N/1/USA/T/3 
 Page 3 
 
 
  shall have the same force and effect as if  such certificates and their issue had been 
specifically authorized by statute." 
 (b) INCONTESTABILITY OF RIGHT TO USE MARK UNDER CERTAIN CONDITIONS.—Section 15 of the Trademark Act of 1946 (15 U.S.C. 1065) is amended—  
 
 (1) by striking "right of the registrant" and inserting "right of the owner";    (2) by amending paragraph (1) to read as follows:   
  "(1) there has been no final decision adve rse to the owner's claim of ownership of 
such mark for such goods or services, or to th e owner's right to register the same or to 
keep the same on the register; and"; and  
  (3) in paragraph (2), by inserting "United States" before "Patent and Trademark Office".  
 
(c) APPEAL TO COURTS.—Section 21 of the Tr ademark Act of 1946 (15 U.S.C. 1071) is 
amended—   
(1) by inserting "United States" before "Paten t and Trademark Office" each place that term 
appears;  
 
(2) in subsection (a)(1), by inserting "or section 71" after "section 8"; and   (3) in subsection (b)(4), by striking "If there be" and inserting "If there are".  
 
(d) CONFORMING REQUIREMENTS FOR AFFIDAVITS.—  
 
(1) DURATION, AFFIDAVITS AND FEES.—Secti on 8 of the Trademark Act of 1946 
(15 U.S.C. 1058) is amended to read as follows:  
 
  "SEC. 8. DURATION, AFFIDAVITS AND FEES.  
   "(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each registration shall 
remain in force for 10 years, except that th e 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 th is Act or the date of the publication 
under section 12(c).  
 
"(2) Within the 1-year period immediately preceding the expiration of 
10 years following the date of regi stration, 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 follow ing the expiration of the periods 
established in paragraphs (1) and (2), together with the fee described in 
subsection (b) and the additional grace period surcharge prescribed by the Director.  
 IP/N/1/USA/T/3 
Page 4  
 
    "(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit referred to in 
 subsection (a) shall—  
    "(1)(A) state that the mark is in use in commerce;   
 "(B) set forth the goods and 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 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 submi ssion 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 afte r notification of the deficiency. Such 
submission shall be accompanied by the add itional deficiency surcharge prescribed 
by the Director.  
 
"(d) NOTICE OF REQUIREMENT.—Special notice of the requirement for such affidavit shall be attached to each certifi cate of registration and notice of publication 
under section 12(c).   
"(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 leavi ng 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."  
  IP/N/1/USA/T/3 
 Page 5 
 
 
  (2) AFFIDAVITS AND FEES.—Section 71 of th e Trademark Act of 1946 (15 U.S.C. 1141k) 
is amended to read as follows:  
 
"SEC. 71. DURATION, AFFIDAVITS AND FEES.  
 
"(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each extension of 
protection for which a certificate has been  issued under section 69 shall remain in 
force for the term of the international regi stration 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 requirement s 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.  
 
"(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 established in paragraph (1) or (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) shall—  
 
"(1)(A) state that the mark is in use in commerce;   
"(B) set forth the goods and 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 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 submi ssion 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 prescrib ed after notification of the deficiency. IP/N/1/USA/T/3 
Page 6  
 
  Such submission shall 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 re fusal 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 ma y 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."  
 
SEC. 4. STUDY AND REPORT.  
 (a) IN GENERAL.—Not later than 1 year after the da te of enactment of this Act, the Secretary of 
Commerce, in consultation with the Intellectual Pr operty Enforcement Coordinator, shall study and 
report to the Committee on the Judiciary of the Se nate and the Committee on the Judiciary of the 
House of Representatives on—   
(1) the extent to which small businesses may be  harmed by litigation tactics by corporations 
attempting to enforce trademark rights beyond a re asonable interpretation of the scope of the 
rights granted to the trademark owner; and   (2) the best use of Federal Government ser vices to protect trademarks and prevent 
counterfeiting.  
 (b) RECOMMENDATIONS.—The study and report re quired under paragraph (1) shall also include 
any policy recommendations the Secretary of Comm erce and the Intellectual Property Enforcement 
Coordinator deem appropriate.    
 
 Approved March 17, 2010  
__________