I 

109TH CONGRESS 

1ST SESSION H. R. 3372 

To improve and promote compliance with international intellectual property 

obligations and to defend United States intellectual property interests 

from suspension of benefits abroad, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

JULY 21, 2005 

Mr. FLAKE (for himself and Mr. DELAHUNT) introduced the following bill; 

which was referred to the Committee on the Judiciary, and in addition 

to the Committee on Ways and Means, for a period to be subsequently 

determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concerned 

A BILL 

To improve and promote compliance with international intellectual property obligations and to defend United States 

intellectual property interests from suspension of benefits 

abroad, and for other purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘United States Trade5 mark Defense Act of 2005’’. 
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1 SEC. 2. FINDINGS AND PURPOSE. 

2 (a) FINDINGS.—Congress makes the following find3 ings: 

4 (1) Trademarks and trade names are vital as5 sets of the many United States businesses that en6 gage in international trade. 

7 (2) Worldwide sales of branded products of 

8 United States businesses contribute in important 

9 ways to the livelihood of American workers and the 

10 well-being and continued healthy growth of numer11 ous United States businesses. These sales depend, in 

12 turn, on the protection that other countries afford to 

13 the trademarks and trade names of United States 

14 businesses under treaties and international agree15 ments. 

16 (3) Among such treaties and agreements are 

17 the Agreement on Trade-Related Aspects of Intellec18 tual Property Rights (TRIPS) of the World Trade 

19 Organization (WTO), the Paris Convention for the 

20 Protection of Industrial Property, and the General 

21 Inter-American Convention for Trade Mark and 

22 Commercial Protection. 

23 (4) The United States should ensure that the 

24 trademark and trade names of United States busi25 nesses continue to be protected abroad by working 

26 to ensure that other countries comply with their obli-
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1 gations under intellectual property rights treaties 

2 and agreements. At the same time, the United 

3 States should adhere to its obligations under such 

4 treaties and agreements. 

5 (5) Hundreds of United States businesses have 

6 registered their trademarks in Cuba in order to en7 sure the exclusive right to use those trademarks 

8 when the United States trade embargo on that coun9 try is lifted. Indeed, following the enactment of the 

10 Trade Sanctions Reform and Export Enhancement 

11 Act of 2000, many United States businesses are al12 ready exporting branded food products to Cuba. 

13 (6) The United States District Court for the 

14 Southern District of New York ruled that section 

15 211 of the Department of Commerce and Related 

16 Agencies Appropriations Act, 1999 (as contained in 

17 section 101(b) of division A of Public Law 105–277; 

18 112 Stat. 2681–88) abrogates, with respect to Cuba, 

19 the General Inter-American Convention on Trade 

20 Mark and Commercial Protection. The District 

21 Court’s ruling was affirmed by the United States 

22 Court of Appeals for the Second Circuit. 

23 (7) Cuba’s international remedy under cus24 tomary international law, as codified by Article 60 of 

25 the 1969 Vienna Convention on Treaties, for a 
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1 breach by the United States of the General Inter2 American Convention on Trade Mark and Commer3 cial Protection, is to suspend or revoke the protec4 tions Cuba currently affords United States trade5 marks and trade names. 

6 (8) Since 1996, hundreds of United States 

7 businesses have registered over 50,000 European 

8 Community trademarks, and thousands of trade9 mark registrations in individual European Union 

10 member states, in order to ensure the exclusive right 

11 to use their trademarks in the territory of the Euro12 pean Union. 

13 (9) The World Trade Organization upheld a 

14 challenge by the European Community and ruled 

15 that section 211 of the Department of Commerce 

16 and Related Agencies Appropriations Act, 1999, is 

17 inconsistent with the obligations of the United 

18 States under the Agreement on Trade-Related As19 pects of Intellectual Property Rights, including pro20 visions of the Paris Convention for the Protection of 

21 Industrial Property. 

22 (10) If the United States fails to bring its law 

23 into conformity with the WTO ruling, the remedy of 

24 the European Community, as provided by the Dis25 pute Settlement Understanding of the World Trade 
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1 Organization, is compensation and the suspension of 

2 concessions or other obligations that the European 

3 Community and its member states currently afford 

4 to intellectual property and other trade interests of 

5 the United States and its citizens. 

6 (11) In order to preserve the rights of United 

7 States nationals holding trademarks and trade 

8 names in Cuba, in the European Union and its 

9 members states, and in other countries, the United 

10 States must repeal section 211 of the Department of 

11 Commerce and Related Agencies Appropriations Act, 

12 1999, and should take the necessary steps to pro13 mote the long-term protection of trademarks, trade 

14 names, and domain names held by United States na15 tionals in that country. 

16 (12) Since long prior to the enactment of sec17 tion 211 of the Department of Commerce and Re18 lated Agencies Appropriations Act, 1999, it has been 

19 the practice of the Federal courts to provide equity 

20 in adjudicating disputes involving the Untied States 

21 trademark rights of foreign nationals whose busi22 nesses at home have been confiscated by their gov23 ernments. 

24 (13) Therefore, section 211 of the Department 

25 of Commerce and Related Agencies Appropriations 
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1 Act, 1999, is not necessary for the courts to reach 

2 equitable results with respect to the trademark and 

3 trade name rights of foreign nationals who have suf4 fered from confiscation of their businesses at home, 

5 and that the repeal of such section will return to the 

6 courts the full authority to give due consideration to 

7 all the relevant issues, both legal and equitable, with 

8 respect to such trademarks and trade names. 

9 (b) PURPOSE.—The purpose of this Act is to improve 

10 and promote compliance with international intellectual 

11 property obligations and to defend United States intellec12 tual property interests from suspension of benefits abroad, 

13 including in the European Community and its member 

14 states, Cuba, and in signatories of the General Inter15 American Convention for Trade Mark and Commercial 

16 Protection and the Agreement on Trade-Related Aspects 

17 of Intellectual Property Rights. 

18 SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS 

19 AND UNDERSTANDINGS. 

20 (a) REPEAL.—Section 211 of the Department of 

21 Commerce and Related Agencies Appropriations Act, 

22 1999 (as contained in section 101(b) of division A of Pub23 lic Law 105–277; 112 Stat. 2681–88) is repealed. 

24 (b) REGULATIONS.—Not later than 30 days after the 

25 date of the enactment of this Act, the Secretary of the 
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1 Treasury shall issue such regulations as are necessary to 

2 carry out the repeal made by subsection (a), including re3 moving any prohibition on transactions or payments to 

4 which subsection (a)(1) of section 211 of the Department 

5 of Commerce and Related Agencies Appropriations Act, 

6 1999 applied. 

7 SEC. 4. AUTHORITY OF COURTS. 

8 United States courts shall have the authority to rec9 ognize, enforce, or otherwise validate an assertion of rights 

10 in any mark or trade name based on common law rights 

11 or registration or under any applicable provision of law 

12 or any applicable treaty to which the United States is a 

13 party. 

14 SEC. 5. PROTECTION OF UNITED STATES INTELLECTUAL 

15 PROPERTY RIGHTS. 

16 (a) ESTIMATES OF BARRIERS TO MARKET ACCESS.— 

17 For purposes of preparing the report required by section 

18 181 of the Trade Act of 1974 (19 U.S.C. 2241) for cal19 endar year 2005, the United States Trade Representative 

20 shall examine the policies and practices of Cuba with re21 spect to protecting and enforcing intellectual property 

22 rights. 

23 (b) IDENTIFICATION OF COUNTRIES THAT DENY

24 ADEQUATE PROTECTION, OR MARKET ACCESS, FOR IN25 TELLECTUAL PROPERTY RIGHTS.—For purposes of meet-
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1 ing the requirements of section 182 of the Trade Act of 

2 1974 (22 U.S.C. 2242) with respect to the report required 

3 by section 181 of such Act for calendar year 2005, the 

4 United States Trade Representative shall give due consid5 eration to the findings of the Trade Representative pursu6 ant to subsection (a). 

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