II 

109TH CONGRESS 

1ST SESSION S. 1604 

To restore to the judiciary the power to decide all trademark and trade 

name cases arising under the laws and treaties of the United States, 

and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

JULY 29, 2005 

Mr. CRAIG (for himself and Mr. ROBERTS) introduced the following bill; which 

was read twice and referred to the Committee on the Judiciary 

A BILL 

To restore to the judiciary the power to decide all trademark 

and trade name cases arising under the laws and treaties 

of the United States, 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 ‘‘Judicial Powers Res5 toration Act of 2005’’. 

6 SEC. 2. FINDINGS AND PURPOSE. 

7 (a) FINDINGS.—Congress makes the following find8 ings: 
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1 (1) Section 1 of Article III of the Constitution 

2 of the United States of America vests ‘‘judicial 

3 Power’’ exclusively in the courts. Section 2 of Article 

4 III states that this ‘‘judicial Power shall extend to 

5 all Cases, in Law and Equity, arising under this 

6 Constitution, the Laws of the United States, and 

7 Treaties. . .’’ In interpreting Article III of the Con8 stitution, the Supreme Court in Muskrat v. United 

9 States defined the term ‘‘judicial power’’ to mean 

10 ‘‘the right to determine actual controversies arising 

11 between adverse litigants, duly instituted in courts of 

12 proper jurisdiction’’. 

13 (2) In 1996, a holder of a trademark registra14 tion issued by the Patent and Trademark Office as15 serted trademark infringement and other claims in a 

16 United States district court against an alleged in17 fringer. The plaintiff’s claims for relief were based 

18 upon laws and treaties of the United States, includ19 ing the Trademark Act of 1946 (15 U.S.C. 1051 et 

20 seq.) and the Inter-American Convention for Trade21 mark and Commercial Protection. 

22 (3) In October 1998, just prior to commence23 ment of the trial, the alleged infringer procured an 

24 amendment to the Department of Commerce and 

25 Related Agencies Appropriations Act, 1999 (as con-
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1 tained in section 101(b) of division A of Public Law 

2 105–277; 112 Stat. 2681–88). That amendment is 

3 commonly referred to as ‘‘section 211’’ and has been 

4 of singular benefit to that defendant in the courts. 

5 (4) Section 211(a)(2) and (b) provides that 

6 ‘‘No United States court shall recognize, enforce, or 

7 otherwise validate any assertion of rights’’ of certain 

8 trademarks or commercial names of the type at 

9 issue in the litigation referred to in paragraph (2). 

10 Section 211(a)(1) also rescinds the general authority 

11 permitting payment of the fees necessary for reg12 istration and renewal of such trademarks with the 

13 United States Patent and Trademark Office. 

14 (5) The intended and actual effect of section 

15 211 is to strip United States courts of the authority 

16 to decide the ownership and enforceability of such 

17 trademarks and trade names, including those at 

18 issue in the litigation described in paragraph (2). As 

19 a result of section 211, the plaintiff in the litigation 

20 was prevented from asserting the plaintiff’s infringe21 ment claim. By preventing the payment of fees for 

22 trademark registration and renewal in the Patent 

23 and Trademark Office, section 211 also denies par24 ties the ability to preserve claims of ownership in 
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1 such trademarks pending judicial determination of 

2 enforcement rights. 

3 (6) Section 211 is not needed for the courts to 

4 reach equitable results with respect to the United 

5 States trademark and trade name rights of foreign 

6 nationals who have suffered from confiscation of 

7 their businesses at home. It has been the long8 standing practice of the Federal courts to do equity 

9 in adjudicating disputes involving such rights. 

10 (7) Repeal of section 211 is necessary and de11 sirable to restore to the courts the power to deter12 mine the ownership and enforceability of all trade13 marks and trade names and to preserve trademark 

14 registrations pending such determinations. 

15 (b) PURPOSE.—The purpose of this Act is to restore 

16 to the judiciary the power to decide all trademark and 

17 trade name cases arising under the laws and treaties of 

18 the United States, and for other purposes. 

19 SEC. 3. RESTORATION OF JUDICIAL POWERS. 

20 (a) IN GENERAL.—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 enactment of this Act, the Secretary of the Treas-
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1 ury shall issue such regulations as are necessary to carry 

2 out the repeal made by subsection (a), including removing 

3 any prohibition on transactions or payments to which sub4 section (a)(1) of section 211 of the Department of Com5 merce and Related Agencies Appropriations Act, 1999 ap6 plied. 

7 (c) AUTHORITY OF COURTS.—United States courts 

8 shall have the authority to recognize, enforce, or otherwise 

9 validate any assertion of rights in any mark or trade name 

10 based on common law rights or registration or under sub11 section (b) or (e) of section 44 of the Trademark Act of 

12 1946 (15 U.S. C. 1126 (b) or (e)) or based on any treaty 

13 to which the United States is a party. 

Æ