69–006

106TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 1st Session 106–81

MADRID PROTOCOL IMPLEMENTATION ACT

APRIL 12, 1999.—Committed to the Committee of the Whole House on the State of

the Union and ordered to be printed

Mr. COBLE, from the Committee on the Judiciary,

submitted the following

R E P O R T

[To accompany H.R. 769]

[Including cost estimate of the Congressional Budget Office]

The Committee on the Judiciary, to whom was referred the bill

(H.R. 769) to amend the Trademark Act of 1946 to provide for the

registration and protection of trademarks used in commerce, in

order to carry out provisions of certain international conventions,

and for other purposes, having considered the same, report favorably thereon without amendment and recommend that the bill do

pass.

CONTENTS

Page

Purpose and Summary ............................................................................................ 1

Background and Need for the Legislation ............................................................. 2

Hearings ................................................................................................................... 4

Committee Consideration ........................................................................................ 4

Vote of the Committee ............................................................................................. 4

Committee Oversight Findings ............................................................................... 4

Committee on Government Reform and Oversight Findings ............................... 4

New Budget Authority and Tax Expenditures ...................................................... 4

Congressional Budget Office Cost Estimate .......................................................... 4

Constitutional Authority Statement ...................................................................... 6

Section-by-Section Analysis and Discussion .......................................................... 6

Changes in Existing Law ........................................................................................ 7

PURPOSE AND SUMMARY

The purpose of H.R. 769 is to implement the Madrid Protocol

Agreement (‘‘Protocol’’) which provides for an international registration system for trademarks.
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BACKGROUND AND NEED FOR THE LEGISLATION

Trademark protection under federal law provides for the legal

protection of particular words or symbols that have been used on

particular goods or services. Trademark protection generally entitles the owner of a trademark to protection against similar or confusing trademarks.

Trademarks constitute a significant part of the value of a product

and figure largely in the advertising of the product. A very recognizable mark reflects the popularity of a product and often is

prominently featured in a company’s advertising. The protection of

the mark is therefore of paramount importance to the affected company. Understandably, an individual or company using another

company’s mark could significantly diminish the market share of a

particular product or compromise the goodwill derived from ownership of the mark.

Since products are marketed and sold on an international scale,

protection in countries other than the United States improves the

competitiveness of American business. Each country has its own

laws determining the level of protection for trademarks and the

type of marks that can be registered for particular products. American citizens seeking protection for their trademarks outside the

United States are currently required to register individually in

each country in which protection is sought.

As with many intellectual property rights, there are international agreements relating to the registration and protection of

trademarks. Since 1891, the Madrid Agreement Concerning the

International Registration of Marks (‘‘Madrid Agreement’’) has provided an international registration system operated under the auspices of the International Bureau of the World Intellectual Property

Organization (WIPO). The United States has never been a signatory to the Madrid Agreement.

On June 27, 1989, at a Diplomatic Conference in Madrid, Spain,

the parties to the Madrid agreement signed the Madrid Protocol.

The United States was an observer and advisor to these talks but

not a participant in the negotiations since only signatories could

amend the Madrid Agreement through the Protocol. Subsequent

talks, at which the United States has participated as an observer,

have been devoted to developing regulations for the implementation of the Protocol for those countries and entities which have and

will become signatories to it. Practically speaking, the resulting

Protocol amendments ‘‘updated’’ the Madrid Agreement, in many

respects by conforming its contents to existing provisions in U.S.

law.

House Resolution 769 represents implementing legislation for the

Protocol. It is identical to measures introduced in both the 103rd

and 104th Congresses. While the Administration has still not forwarded the treaty to the Senate for ratification, thereby allowing

the United States to become a member of the Protocol, the introduction of H.R. 769 sends a signal to the international community,

U.S. businesses, and trademark owners that Congress is serious

about our nation becoming part of a low-cost, efficient system to

promote the international registration of marks. U.S. membership

in the Protocol would assist American businesses in protecting
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their proprietary names and brand-name goods while saving

money, time, and effort. This is especially critical to small businesses which may otherwise lack the resources to acquire worldwide protection for their trademarks.

The Protocol took effect in April 1996, and currently binds 16

countries, but not the United States. Without U.S. participation,

however, the Protocol may never achieve its purpose of providing

a one-stop, inexpensive ‘‘shop’’ for trademark applicants who, by filing one application in their country and in their language, can receive protection from each member country of the Protocol.

There is no opposition to H.R. 769, nor to the substantive portions of the treaty. The State Department is trying to resolve differences between the Administration and the European Union (EU)

regarding the voting rights of intergovernmental members of the

Protocol in the Assembly established by the agreement. Pursuant

to the Protocol, the EU receives a separate vote in addition to the

votes of its member states. While it may be argued that the existence of a supranational European trademark issued by the Office

for Harmonization in the Internal Market (‘‘European Trademark

Office’’) justifies the additional vote, the State Department opposes

this proviso as a contravention of the democratic concept of one

vote per country. State Department officials also believe this voting

structure may establish a precedent for deviation from the one

vote-one state principle in future international agreements. These

differences must be settled before the Secretary of State will recommend to the President that the Administration sign the Protocol

and present a ratification package to the Senate.

In furtherance of this end, the Secretary of State transmitted an

April 1997 ‘‘demarche,’’ or diplomatic representation, to European

Commission (EC) officials in Brussels, Belgium, requesting that the

organization assent to a compromise position on the Protocol voting

rights structure mentioned above. In effect, the Secretary wants

the EC (the government bureaucracy of the EU) to endorse substitute language on the matter that is identical to that set forth in

Article 15.3(b) of the WIPO Copyright Treaty negotiated last December in Geneva, Switzerland. Briefly, Article 15.3(b) would permit an ‘‘intergovernmental organization,’’ such as the EU, to participate in place of its member states with a number of votes equal

to the number of states which are parties to the Protocol. Moreover,

an intergovernmental organization could not vote if one of its member states chose to participate, and vice versa. In other words, the

EU could function only a proxy for its members.

While the focal point of the demarche is the voting rights structure of the Protocol, the Secretary of State also mentioned the following topics in the document:

(1) The adoption of Article 18 WIPO Copyright language governing ‘‘competency’’ among the EU and its member states.

This would ensure that every contracting party to the Protocol

(including intergovernmental organization like the EU) would

assume all of the obligations under the Protocol in addition to

enjoying all of its benefits

(2) Affirmation of Article 14 of the Protocol governing the admission of ‘‘acceptable’’ intergovernmental organizations.
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(3) ‘‘Bloc,’’ or en masse, voting. The State Department in concerned that the EU could cast bloc votes on behalf of its members, a practice that could ‘‘jeopardize’’ the value of single votes

and potentially compromise U.S. interests. The demarche cites

the need to explore the matter informally.

HEARINGS

In light of thorough consideration of the bill in previous Congresses, and given the noncontroversial contents of H.R. 769, the

Subcommittee on Courts and Intellectual Property elected not to

conduct any hearings on the matter.

COMMITTEE CONSIDERATION

On March 11, 1999, the Subcommittee on Courts and Intellectual

Property, a reporting quorum being present, ordered H.R. 769 reported by voice vote, with no objection heard, to the Committee on

the Judiciary for further consideration.

Subsequently, the Committee on the Judiciary, a reporting

quorum being present, ordered H.R. 769 reported on March 24,

1999, also by voice vote, with no objection heard.

VOTE OF THE COMMITTEE

There were no recorded votes during committee consideration of

H.R. 769.

COMMITTEE OVERSIGHT FINDINGS

In compliance with clause 2(l)(3)(A) of rule XI of the Rules of the

House of Representatives, the Committee reports that the findings

and recommendations of the Committee, based on oversight activities under clause 2(b)(1) of rule X of the Rules of the House of Representatives, are incorporated in the descriptive portions of this report.

COMMITTEE ON GOVERNMENT REFORM AND OVERSIGHT FINDINGS

No findings or recommendations of the Committee on Government Reform and Oversight were received as referred to in clause

2(l)(3)(D) of rule XI of the Rules of the House of Representatives.

NEW BUDGET AUTHORITY AND TAX EXPENDITURES

Clause 2(l)(3)(B) of the House Rule XI is inapplicable because

this legislation does not provide new budgetary authority or increased tax expenditures.

CONGRESSIONAL BUDGET OFFICE COST ESTIMATE

In compliance with clause 2(l)(C)(3) of rule XI of the Rules of the

House of Representatives, the Committee sets forth, with respect to

the bill, H.R. 769, the following estimate and comparison prepared

by the Director of the Congressional Budget Office under section

403 of the Congressional Budget Act of 1974:
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U.S. CONGRESS, CONGRESSIONAL BUDGET OFFICE, Washington, DC, April 1, 1999.

Hon. HENRY J. HYDE,

Chairman, Committee on the Judiciary,

House of Representatives, Washington, DC.

DEAR MR. CHAIRMAN: The Congressional Budget Office has prepared the enclosed cost estimate for H.R. 769, the Madrid Protocol

Implementation Act.

If you wish further details on this estimate, we will be pleased

to provide them. The CBO staff contact is Mark Hadley.

Sincerely,

BARRY A. ANDERSON,

(For Dan L. Crippen, Director).

Enclosure.

H.R. 769—Madrid Protocol Implementation Act

H.R. 769 would amend the Trademark Act of 1946 in order to facilitate the implementation of the Madrid Protocol, an international

agreement that provides for the possibility of obtaining trademark

protection in several jurisdictions by a single registration. The bill

specifies administrative procedures that would be followed by companies applying for international protection of trademarks.

CBO estimates that enacting this bill would have no significant

effect on the federal budget. Because the bill would not affect direct

spending or receipts, pay-as-you-go procedures would not apply.

Section 4 of the Unfunded Reform Mandates Act excludes from the

application of that act any legislative provisions that are necessary

for the ratification or implementation of international treaty obligations. CBO has determined that H.R. 769 would fit within that exclusion because it would implement that Madrid Protocol, an international agreement requiring ratification by the Senate.

H.R. 769 would become effective at the same time as the Madrid

Protocol, which the Senate has not yet ratified. Assuming the Madrid Protocol enters into force in 2000, CBO estimates that the

United States Patent and Trademark Office (PTO) would incur net

costs of less than $500,000 in 2000 to establish a computer database, subject to the availability of appropriated funds.

United States participation in the Madrid Protocol would likely

result in an increase in the number of trademark applications received by the PTO. The PTO’s costs for processing trademark applications are fully funded by filing fees paid by the applicants. Such

fees are collected and spent under authority provided in annual appropriation acts. Because income from fee offsets the costs of processing applications, a change in the number of trademark applications would have no net budgetary impact.

The CBO staff contact for this estimate is Mark Hadley. The estimate was approved by Robert A. Sunshine, Deputy Assistant Director for Budget Analysis.
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CONSTITUTIONAL AUTHORITY

Pursuant to rule XI, clause 2(l)(4) of the Rules of the House of

Representatives, the Committee finds the authority for this legislation in Article I, section 8, clause 8, of the Constitution.

SECTION-BY-SECTION ANALYSIS

Section 1. Short Title. This section provides a short title: the

‘‘Madrid Protocol Implementation Act.’’

Section 2. Amendments to the Trademark Act of 1946. This section amends the ‘‘Trademark Act of 1946’’ by adding a new Title

XII which contains the following provisions:

The owner of a registration granted by the Patent and Trademark Office (PTO) or the owner of a pending application before the

PTO may file an international application for trademark protection

at the PTO.

After receipt of the appropriate fee and inspection of the application, the PTO Commissioner is charged with the duty of transmitting the application to the WIPO International Bureau.

The Commissioner is also obliged to notify the International Bureau whenever the international application has been ‘‘* * * restricted, abandoned, canceled, or has expired * * *’’ within a specified time period.

The holder of an international registration may request an extension of its registration by filing with the PTO or the International

Bureau.

The holder of an international registration is entitled to the benefits of extension in the United States to the extent necessary to

give effect to any provision of the Protocol; however, an extension

of an international registration shall not apply to the United States

if the PTO is the office of origin with respect to that mark.

The holder of an international registration with an extension of

protection in the United States may claim a date of priority based

on certain conditions.

If the PTO Commissioner believes that an applicant is entitled

to an extension of protection, he or she publishes the mark in the

‘‘Official Gazette of the Patent and Trademark Office.’’ This serves

notice to third parties who oppose the extension. Unless an official

protest conducted pursuant to existing law is successful, the request for extension may not be refused. If the request for extension

is denied, however, the Commissioner notifies the International

Bureau of such action and sets forth the reason(s) why. The Commissioner must also apprise the International Bureau of other relevant information pertaining to requests for extension within designated time periods.

If an extension for protection is granted, the Commissioner

issues a certificate attesting to such action, and publishes notice of

the certificate in the ‘‘Gazette.’’ Holders of extension certificates

thereafter enjoy protection equal to that of other owners of registration listed on the Principal Register of the PTO.

If the International Bureau notifies the PTO of a cancellation of

some or all of the goods and services listed in the international registration, the Commissioner must cancel an extension of protection

with respect to the same goods and services as of the date on which
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the international registration was cancelled. Similarly, if the International Bureau does not renew an international registration, the

corresponding extension of protection in the United States shall

cease to be valid. Finally, the holder of an international registration canceled in whole or in part by the International Bureau may

file an application for the registration of the same mark for any of

the goods and services to which the cancellation applies that were

covered by an extension of protection to the United States based on

that international registration.

The holder of an extension of protection must, within designated

time periods and under certain conditions, file an affidavit setting

forth the relevant goods or services covered and any explanation as

to why their nonuse in commerce is related to ‘‘special circumstances,’’ along with a filing fee.

The right to an extension of protection may be assigned to a

third party so long as that individual is a national of, or is domiciled in, or has a ‘‘bonafide’’ business located in a country that is

a member of the Protocol; or has such a business in a country that

is a member of an intergovernmental organization (like the EC) belonging to the Protocol.

An extension of protection conveys the same rights as an existing

registration for the same mark if the extension and existing registration are owned by the same person, and extension of protection

and the existing registration cover the same goods or services, and

the certificate of extension is issued after the date of the existing

registration.

Section 3. Effective Date. This section states that the effective

date of the act shall commence on the date on which the Madrid

Protocol takes effect in the United States.

CHANGES IN EXISTING LAW MADE BY THE BILL, AS REPORTED

In compliance with clause 3(e) of rule XIII of the Rules of the

House of Representatives, changes in existing law made by the bill,

as reported, are shown as follows (new matter is printed in italic

and existing law in which no change is proposed is shown in

roman):

ACT OF JULY 5, 1946

(Commonly Referred to as the Trademark Act of 1946)

AN ACT To provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for

other purposes.

* * * * * * *

TITLE XII—THE MADRID PROTOCOL

SEC. 60. DEFINITIONS.

For purposes of this title:

(1) MADRID PROTOCOL.—The term ‘‘Madrid Protocol’’ means

the Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks, adopted at Madrid, Spain,

on June 27, 1989.
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(2) BASIC APPLICATION.—The term ‘‘basic application’’ means

the application for the registration of a mark that has been filed

with an Office of a Contracting Party and that constitutes the

basis for an application for the international registration of

that mark.

(3) BASIC REGISTRATION.—The term ‘‘basic registration’’

means the registration of a mark that has been granted by an

Office of a Contracting Party and that constitutes the basis for

an application for the international registration of that mark.

(4) CONTRACTING PARTY.—The term ‘‘Contracting Party’’

means any country or inter-governmental organization that is a

party to the Madrid Protocol.

(5) DATE OF RECORDAL.—The term ‘‘date of recordal’’ means

the date on which a request for extension of protection that is

filed after an international registration is granted is recorded

on the International Register.

(6) DECLARATION OF BONA FIDE INTENTION TO USE THE MARK

IN COMMERCE.—The term ‘‘declaration of bona fide intention to

use the mark in commerce’’ means a declaration that is signed

by the applicant for, or holder of, an international registration

who is seeking extension of protection of a mark to the United

States and that contains a statement that—

(A) the applicant or holder has a bona fide intention to

use the mark in commerce,

(B) the person making the declaration believes himself or

herself, or the firm, corporation, or association in whose behalf he or she makes the declaration, to be entitled to use

the mark in commerce, and

(C) no other person, firm, corporation, or association, to

the best of his or her knowledge and belief, has the right

to use such mark in commerce either in the identical form

of the mark or in such near resemblance to the mark as to

be likely, when used on or in connection with the goods of

such other person, firm, corporation, or association, to

cause confusion, or to cause mistake, or to deceive.

(7) EXTENSION OF PROTECTION.—The term ‘‘extension of protection’’ means the protection resulting from an international

registration that extends to a Contracting Party at the request

of the holder of the international registration, in accordance

with the Madrid Protocol.

(8) HOLDER OF AN INTERNATIONAL REGISTRATION.—A ‘‘holder’’

of an international registration is the natural or juristic person

in whose name the international registration is recorded on the

International Register.

(9) INTERNATIONAL APPLICATION.—The term ‘‘international

application’’ means an application for international registration

that is filed under the Madrid Protocol.

(10) INTERNATIONAL BUREAU.—The term ‘‘International Bureau’’ means the International Bureau of the World Intellectual

Property Organization.

(11) INTERNATIONAL REGISTER.—The term ‘‘International Register’’ means the official collection of such data concerning international registrations maintained by the International Bureau

that the Madrid Protocol or its implementing regulations re-
9

quire or permit to be recorded, regardless of the medium which

contains such data.

(12) INTERNATIONAL REGISTRATION.—The term ‘‘international

registration’’ means the registration of a mark granted under

the Madrid Protocol.

(13) INTERNATIONAL REGISTRATION DATE.—The term ‘‘international registration date’’ means the date assigned to the international registration by the International Bureau.

(14) NOTIFICATION OF REFUSAL.—The term ‘‘notification of refusal’’ means the notice sent by an Office of a Contracting Party

to the International Bureau declaring that an extension of protection cannot be granted.

(15) OFFICE OF A CONTRACTING PARTY.—The term ‘‘Office of

a Contracting Party’’ means—

(A) the office, or governmental entity, of a Contracting

Party that is responsible for the registration of marks, or

(B) the common office, or governmental entity, of more

than 1 Contracting Party that is responsible for the registration of marks and is so recognized by the International

Bureau.

(16) OFFICE OF ORIGIN.—The term ‘‘office of origin’’ means the

Office of a Contracting Party with which a basic application

was filed or by which a basic registration was granted.

(17) OPPOSITION PERIOD.—The term ‘‘opposition period’’

means the time allowed for filing an opposition in the Patent

and Trademark Office, including any extension of time granted

under section 13.

SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES

APPLICATIONS OR REGISTRATIONS.

The owner of a basic application pending before the Patent and

Trademark Office, or the owner of a basic registration granted by

the Patent and Trademark Office, who—

(1) is a national of the United States,

(2) is domiciled in the United States, or

(3) has a real and effective industrial or commercial establishment in the United States,

may file an international application by submitting to the Patent

and Trademark Office a written application in such form, together

with such fees, as may be prescribed by the Commissioner.

SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.

Upon the filing of an application for international registration

and payment of the prescribed fees, the Commissioner shall examine

the international application for the purpose of certifying that the

information contained in the international application corresponds

to the information contained in the basic application or basic registration at the time of the certification. Upon examination and certification of the international application, the Commissioner shall

transmit the international application to the International Bureau.

SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A BASIC APPLICATION OR BASIC REGISTRATION.

With respect to an international application transmitted to the

International Bureau under section 62, the Commissioner shall notify the International Bureau whenever the basic application or
10

basic registration which is the basis for the international application has been restricted, abandoned, or canceled, or has expired,

with respect to some or all of the goods and services listed in the

international registration—

(1) within 5 years after the international registration date; or

(2) more than 5 years after the international registration date

if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that

began before the end of that 5-year period.

SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO

INTERNATIONAL REGISTRATION.

The holder of an international registration that is based upon a

basic application filed with the Patent and Trademark Office or a

basic registration granted by the Patent and Trademark Office may

request an extension of protection of its international registration by

filing such a request—

(1) directly with the International Bureau, or

(2) with the Patent and Trademark Office for transmittal to

the International Bureau, if the request is in such form, and

contains such transmittal fee, as may be prescribed by the Commissioner.

SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO THE UNITED STATES UNDER THE MADRID

PROTOCOL.

(a) IN GENERAL.—Subject to the provisions of section 68, the holder of an international registration shall be entitled to the benefits

of extension of protection of that international registration to the

United States to the extent necessary to give effect to any provision

of the Madrid Protocol.

(b) IF UNITED STATES IS OFFICE OF ORIGIN.—An extension of protection resulting from an international registration of a mark shall

not apply to the United States if the Patent and Trademark Office

is the office of origin with respect to that mark.

SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO THE

UNITED STATES.

(a) REQUIREMENT FOR REQUEST FOR EXTENSION OF PROTECTION.—A request for extension of protection of an international registration to the United States that the International Bureau transmits to the Patent and Trademark Office shall be deemed to be

properly filed in the United States if such request, when received by

the International Bureau, has attached to it a declaration of bona

fide intention to use the mark in commerce that is verified by the

applicant for, or holder of, the international registration.

(b) EFFECT OF PROPER FILING.—Unless extension of protection is

refused under section 68, the proper filing of the request for extension of protection under subsection (a) shall constitute constructive

use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following:

(1) The international registration date, if the request for extension of protection was filed in the international application.

(2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after

the international registration date.
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(3) The date of priority claimed pursuant to section 67.

SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO THE UNITED STATES.

The holder of an international registration with an extension of

protection to the United States shall be entitled to claim a date of

priority based on the right of priority within the meaning of Article

4 of the Paris Convention for the Protection of Industrial Property

if—

(1) the international registration contained a claim of such

priority; and

(2)(A) the international application contained a request for

extension of protection to the United States, or

(B) the date of recordal of the request for extension of protection to the United States is not later than 6 months after the

date of the first regular national filing (within the meaning of

Article 4(A)(3) of the Paris Convention for the Protection of Industrial Property) or a subsequent application (within the

meaning of Article 4(C)(4) of the Paris Convention).

SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF PROTECTION; NOTIFICATION OF REFUSAL.

(a) EXAMINATION AND OPPOSITION.—(1) A request for extension of

protection described in section 66(a) shall be examined as an application for registration on the Principal Register under this Act, and

if on such examination it appears that the applicant is entitled to

extension of protection under this title, the Commissioner shall

cause the mark to be published in the Official Gazette of the Patent

and Trademark Office.

(2) Subject to the provisions of subsection (c), a request for extension of protection under this title shall be subject to opposition

under section 13. Unless successfully opposed, the request for extension of protection shall not be refused.

(3) Extension of protection shall not be refused under this section

on the ground that the mark has not been used in commerce.

(4) Extension of protection shall be refused under this section to

any mark not registrable on the Principal Register.

(b) NOTIFICATION OF REFUSAL.—If, a request for extension of protection is refused under subsection (a), the Commissioner shall declare in a notification of refusal (as provided in subsection (c)) that

the extension of protection cannot be granted, together with a statement of all grounds on which the refusal was based.

(c) NOTICE TO INTERNATIONAL BUREAU.—(1) Within 18 months

after the date on which the International Bureau transmits to the

Patent and Trademark Office a notification of a request for extension of protection, the Commissioner shall transmit to the International Bureau any of the following that applies to such request:

(A) A notification of refusal based on an examination of the

request for extension of protection.

(B) A notification of refusal based on the filing of an opposition to the request.

(C) A notification of the possibility that an opposition to the

request may be filed after the end of that 18-month period.

(2) If the Commissioner has sent a notification of the possibility

of opposition under paragraph (1)(C), the Commissioner shall, if applicable, transmit to the International Bureau a notification of re-
12

fusal on the basis of the opposition, together with a statement of all

the grounds for the opposition, within 7 months after the beginning

of the opposition period or within 1 month after the end of the opposition period, whichever is earlier.

(3) If a notification of refusal of a request for extension of protection is transmitted under paragraph (1) or (2), no grounds for refusal of such request other than those set forth in such notification

may be transmitted to the International Bureau by the Commissioner after the expiration of the time periods set forth in paragraph

(1) or (2), as the case may be.

(4) If a notification specified in paragraph (1) or (2) is not sent

to the International Bureau within the time period set forth in such

paragraph, with respect to a request for extension of protection, the

request for extension of protection shall not be refused and the Commissioner shall issue a certificate of extension of protection pursuant

to the request.

(d) DESIGNATION OF AGENT FOR SERVICE OF PROCESS.—In responding to a notification of refusal with respect to a mark, the

holder of the international registration of the mark shall designate,

by a written document filed in the 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 address given in

the last designation, such notice or process may be served upon the

Commissioner.

SEC. 69. EFFECT OF EXTENSION OF PROTECTION.

(a) ISSUANCE OF EXTENSION OF PROTECTION.—Unless a request

for extension of protection is refused under section 68, the Commissioner shall issue a certificate of extension of protection pursuant to

the request and shall cause notice of such certificate of extension of

protection to be published in the Official Gazette of the Patent and

Trademark Office.

(b) EFFECT OF EXTENSION OF PROTECTION.—From the date on

which a certificate of extension of protection is issued under subsection (a)—

(1) such extension of protection shall have the same effect and

validity as a registration on the Principal Register, and

(2) the holder of the international registration shall have the

same rights and remedies as the owner of a registration on the

Principal Register.

SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE

UNITED STATES ON THE UNDERLYING INTERNATIONAL

REGISTRATION.

(a) EFFECT OF CANCELLATION OF INTERNATIONAL REGISTRA- TION.—If the International Bureau notifies the Patent and Trademark Office of the cancellation of an international registration with

respect to some or all of the goods and services listed in the international registration, the Commissioner shall cancel any extension

of protection to the United States with respect to such goods and

services as of the date on which the international registration was

canceled.
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(b) EFFECT OF FAILURE TO RENEW INTERNATIONAL REGISTRA- TION.—If the International Bureau does not renew an international

registration, the corresponding extension of protection to the United

States shall cease to be valid as of the date of the expiration of the

international registration.

(c) TRANSFORMATION OF AN EXTENSION OF PROTECTION INTO A

UNITED STATES APPLICATION.—The holder of an international registration canceled in whole or in part by the International Bureau

at the request of the office of origin, under Article 6(4) of the Madrid

Protocol, may file an application, under section 1 or 44 of this Act,

for the registration of the same mark for any of the goods and services to which the cancellation applies that were covered by an extension of protection to the United States based on that international

registration. Such an application shall be treated as if it had been

filed on the international registration date or the date of recordal

of the request for extension of protection with the International Bureau, whichever date applies, and, if the extension of protection enjoyed priority under section 67 of this title, shall enjoy the same priority. Such an application shall be entitled to the benefits conferred

by this subsection only if the application is filed not later than 3

months after the date on which the international registration was

canceled, in whole or in part, and only if the application complies

with all the requirements of this Act which apply to any application

filed pursuant to section 1 or 44.

SEC. 71. AFFIDAVITS AND FEES.

(a) REQUIRED AFFIDAVITS AND FEES.—An extension of protection

for which a certificate of extension of protection has been issued

under section 69 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

Commissioner—

(1) at the end of the 6-year period beginning on the date on

which the certificate of extension of protection was issued by the

Commissioner, unless within the 1-year period preceding the expiration of that 6-year period the holder of the international

registration files in the Patent and Trademark Office an affidavit under subsection (b) together with a fee prescribed by the

Commissioner; and

(2) at the end of the 10-year period beginning on the date on

which the certificate of extension of protection was issued by the

Commissioner, and at the end of each 10-year period thereafter,

unless—

(A) within the 6-month period preceding the expiration of

such 10-year period the holder of the international registration files in the Patent and Trademark Office an affidavit

under subsection (b) together with a fee prescribed by the

Commissioner; or

(B) within 3 months after the expiration of such 10-year

period, the holder of the international registration files in

the Patent and Trademark Office an affidavit under subsection (b) together with the fee described in subparagraph

(A) and an additional fee prescribed by the Commissioner.

(b) CONTENTS OF AFFIDAVIT.—The affidavit referred to in subsection (a) shall set forth those goods or services recited in the exten-
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sion of protection on or in connection with which the mark is in use

in commerce and the holder of the international registration shall

attach to the affidavit a specimen or facsimile showing the current

use of the mark in commerce, or shall set forth that any nonuse is

due to special circumstances which excuse such nonuse and is not

due to any intention to abandon the mark. Special notice of the requirement for such affidavit shall be attached to each certificate of

extension of protection.

SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

An extension of protection may be assigned, together with the

goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial

or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental

organization that is a Contracting Party.

SEC. 73. INCONTESTABILITY.

The period of continuous use prescribed under section 15 for a

mark covered by an extension of protection issued under this title

may begin no earlier than the date on which the Commissioner

issues the certificate of the extension of protection under section 69,

except as provided in section 74.

SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

An extension of protection shall convey the same rights as an existing registration for the same mark, if—

(1) the extension of protection and the existing registration

are owned by the same person;

(2) the goods and services listed in the existing registration

are also listed in the extension of protection; and

(3) the certificate of extension of protection is issued after the

date of the existing registration.

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