II

106TH CONGRESS

1ST SESSION S. 671

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.

IN THE SENATE OF THE UNITED STATES

MARCH 19, 1999

Mr. LEAHY introduced the following bill; which was read twice and referred

to the Committee on the Judiciary

A BILL

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.

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 ‘‘Madrid Protocol Imple5 mentation Act’’.
2

•S 671 IS

1 SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RE2 LATING TO THE MADRID AGREEMENT CON3 CERNING THE INTERNATIONAL REGISTRA4 TION OF MARKS.

5 The Act entitled ‘‘An Act to provide for the registra6 tion and protection of trade-marks used in commerce, to

7 carry out the provisions of certain international conven8 tions, and for other purposes’’, approved July 5, 1946, as

9 amended (15 U.S.C. 1051 et seq.) (commonly referred to

10 as the ‘‘Trademark Act of 1946’’) is amended by adding

11 after section 51 the following new title:

12 ‘‘TITLE XII—THE MADRID PROTOCOL

13 ‘‘SEC. 60. DEFINITIONS.

14 ‘‘For purposes of this title:

15 ‘‘(1) MADRID PROTOCOL.—The term ‘Madrid

16 Protocol’ means the Protocol Relating to the Madrid

17 Agreement Concerning the International Registra18 tion of Marks, adopted at Madrid, Spain, on June

19 27, 1989.

20 ‘‘(2) BASIC APPLICATION.—The term ‘basic ap21 plication’ means the application for the registration

22 of a mark that has been filed with an Office of a

23 Contracting Party and that constitutes the basis for

24 an application for the international registration of

25 that mark.
3

•S 671 IS

1 ‘‘(3) BASIC REGISTRATION.—The term ‘basic

2 registration’ means the registration of a mark that

3 has been granted by an Office of a Contracting

4 Party and that constitutes the basis for an applica5 tion for the international registration of that mark.

6 ‘‘(4) CONTRACTING PARTY.—The term ‘Con7 tracting Party’ means any country or inter-govern8 mental organization that is a party to the Madrid

9 Protocol.

10 ‘‘(5) DATE OF RECORDAL.—The term ‘date of

11 recordal’ means the date on which a request for ex12 tension of protection that is filed after an inter13 national registration is granted is recorded on the

14 International Register.

15 ‘‘(6) DECLARATION OF BONA FIDE INTENTION

16 TO USE THE MARK IN COMMERCE.—The term ‘dec17 laration of bona fide intention to use the mark in

18 commerce’ means a declaration that is signed by the

19 applicant for, or holder of, an international registra20 tion who is seeking extension of protection of a mark

21 to the United States and that contains a statement

22 that—

23 ‘‘(A) the applicant or holder has a bona

24 fide intention to use the mark in commerce,
4

•S 671 IS

1 ‘‘(B) the person making the declaration be2 lieves that person, or the firm, corporation, or

3 association in whose behalf that person makes

4 the declaration, to be entitled to use the mark

5 in commerce, and

6 ‘‘(C) no other person, firm, corporation, or

7 association, to the best of such person’s knowl8 edge and belief, has the right to use such mark

9 in commerce either in the identical form of the

10 mark or in such near resemblance to the mark

11 as to be likely, when used on or in connection

12 with the goods of such other person, firm, cor13 poration, or association, to cause confusion, or

14 to cause mistake, or to deceive.

15 ‘‘(7) EXTENSION OF PROTECTION.—The term

16 ‘extension of protection’ means the protection result17 ing from an international registration that extends

18 to a Contracting Party at the request of the holder

19 of the international registration, in accordance with

20 the Madrid Protocol.

21 ‘‘(8) HOLDER OF AN INTERNATIONAL REG22 ISTRATION.—A ‘holder’ of an international registra23 tion is the natural or juristic person in whose name

24 the international registration is recorded on the

25 International Register.
5

•S 671 IS

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

2 ‘international application’ means an application for

3 international registration that is filed under the Ma4 drid Protocol.

5 ‘‘(10) INTERNATIONAL BUREAU.—The term

6 ‘International Bureau’ means the International Bu7 reau of the World Intellectual Property Organiza8 tion.

9 ‘‘(11) INTERNATIONAL REGISTER.—The term

10 ‘International Register’ means the official collection

11 of such data concerning international registrations

12 maintained by the International Bureau that the

13 Madrid Protocol or its implementing regulations re14 quire or permit to be recorded, regardless of the me15 dium which contains such data.

16 ‘‘(12) INTERNATIONAL REGISTRATION.—The

17 term ‘international registration’ means the registra18 tion of a mark granted under the Madrid Protocol.

19 ‘‘(13) INTERNATIONAL REGISTRATION DATE.—

20 The term ‘international registration date’ means the

21 date assigned to the international registration by the

22 International Bureau.

23 ‘‘(14) NOTIFICATION OF REFUSAL.—The term

24 ‘notification of refusal’ means the notice sent by an

25 Office of a Contracting Party to the International
6

•S 671 IS

1 Bureau declaring that an extension of protection

2 cannot be granted.

3 ‘‘(15) OFFICE OF A CONTRACTING PARTY.—The

4 term ‘Office of a Contracting Party’ means—

5 ‘‘(A) the office, or governmental entity, of

6 a Contracting Party that is responsible for the

7 registration of marks, or

8 ‘‘(B) the common office, or governmental

9 entity, of more than 1 Contracting Party that

10 is responsible for the registration of marks and

11 is so recognized by the International Bureau.

12 ‘‘(16) OFFICE OF ORIGIN.—The term ‘office of

13 origin’ means the Office of a Contracting Party with

14 which a basic application was filed or by which a

15 basic registration was granted.

16 ‘‘(17) OPPOSITION PERIOD.—The term ‘opposi17 tion period’ means the time allowed for filing an op18 position in the Patent and Trademark Office, includ19 ing any extension of time granted under section 13.

20 ‘‘SEC. 61. INTERNATIONAL APPLICATIONS BASED ON

21 UNITED STATES APPLICATIONS OR REG22 ISTRATIONS.

23 ‘‘The owner of a basic application pending before the

24 Patent and Trademark Office, or the owner of a basic reg-
7

•S 671 IS

1 istration granted by the Patent and Trademark Office,

2 who—

3 ‘‘(1) is a national of the United States,

4 ‘‘(2) is domiciled in the United States, or

5 ‘‘(3) has a real and effective industrial or com6 mercial establishment in the United States,

7 may file an international application by submitting to the

8 Patent and Trademark Office a written application in

9 such form, together with such fees, as may be prescribed

10 by the Commissioner.

11 ‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI12 CATION.

13 ‘‘Upon the filing of an application for international

14 registration and payment of the prescribed fees, the Com15 missioner shall examine the international application for

16 the purpose of certifying that the information contained

17 in the international application corresponds to the infor18 mation contained in the basic application or basic registra19 tion at the time of the certification. Upon examination and

20 certification of the international application, the Commis21 sioner shall transmit the international application to the

22 International Bureau.
8

•S 671 IS

1 ‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION,

2 OR EXPIRATION OF A BASIC APPLICATION OR

3 BASIC REGISTRATION.

4 ‘‘With respect to an international application trans5 mitted to the International Bureau under section 62, the

6 Commissioner shall notify the International Bureau when7 ever the basic application or basic registration which is

8 the basis for the international application has been re9 stricted, abandoned, or canceled, or has expired, with re10 spect to some or all of the goods and services listed in

11 the international registration—

12 ‘‘(1) within 5 years after the international reg13 istration date; or

14 ‘‘(2) more than 5 years after the international

15 registration date if the restriction, abandonment, or

16 cancellation of the basic application or basic reg17 istration resulted from an action that began before

18 the end of that 5-year period.

19 ‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB20 SEQUENT TO INTERNATIONAL REGISTRA21 TION.

22 ‘‘The holder of an international registration that is

23 based upon a basic application filed with the Patent and

24 Trademark Office or a basic registration granted by the

25 Patent and Trademark Office may request an extension
9

•S 671 IS

1 of protection of its international registration by filing such

2 a request—

3 ‘‘(1) directly with the International Bureau, or

4 ‘‘(2) with the Patent and Trademark Office for

5 transmittal to the International Bureau, if the re6 quest is in such form, and contains such transmittal

7 fee, as may be prescribed by the Commissioner.

8 ‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER9 NATIONAL REGISTRATION TO THE UNITED

10 STATES UNDER THE MADRID PROTOCOL.

11 ‘‘(a) IN GENERAL.—Subject to the provisions of sec12 tion 68, the holder of an international registration shall

13 be entitled to the benefits of extension of protection of that

14 international registration to the United States to the ex15 tent necessary to give effect to any provision of the Madrid

16 Protocol.

17 ‘‘(b) IF UNITED STATES IS OFFICE OF ORIGIN.—

18 An extension of protection resulting from an international

19 registration of a mark shall not apply to the United States

20 if the Patent and Trademark Office is the office of origin

21 with respect to that mark.
10

•S 671 IS

1 ‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION

2 OF PROTECTION OF AN INTERNATIONAL

3 REGISTRATION TO THE UNITED STATES.

4 ‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION

5 OF PROTECTION.—A request for extension of protection

6 of an international registration to the United States that

7 the International Bureau transmits to the Patent and

8 Trademark Office shall be deemed to be properly filed in

9 the United States if such request, when received by the

10 International Bureau, has attached to it a declaration of

11 bona fide intention to use the mark in commerce that is

12 verified by the applicant for, or holder of, the international

13 registration.

14 ‘‘(b) EFFECT OF PROPER FILING.—Unless extension

15 of protection is refused under section 68, the proper filing

16 of the request for extension of protection under subsection

17 (a) shall constitute constructive use of the mark, confer18 ring the same rights as those specified in section 7(c), as

19 of the earliest of the following:

20 ‘‘(1) The international registration date, if the

21 request for extension of protection was filed in the

22 international application.

23 ‘‘(2) The date of recordal of the request for ex24 tension of protection, if the request for extension of

25 protection was made after the international registra26 tion date.
11

•S 671 IS

1 ‘‘(3) The date of priority claimed under section

2 67.

3 ‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN4 SION OF PROTECTION TO THE UNITED

5 STATES.

6 ‘‘The holder of an international registration with an

7 extension of protection to the United States shall be enti8 tled to claim a date of priority based on the right of pri9 ority within the meaning of Article 4 of the Paris Conven10 tion for the Protection of Industrial Property if—

11 ‘‘(1) the international registration contained a

12 claim of such priority; and

13 ‘‘(2)(A) the international application contained

14 a request for extension of protection to the United

15 States, or

16 ‘‘(B) the date of recordal of the request for ex17 tension of protection to the United States is not

18 later than 6 months after the date of the first reg19 ular national filing (within the meaning of Article

20 4(A)(3) of the Paris Convention for the Protection

21 of Industrial Property) or a subsequent application

22 (within the meaning of Article 4(C)(4) of the Paris

23 Convention).
12

•S 671 IS

1 ‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST

2 FOR EXTENSION OF PROTECTION; NOTIFICA3 TION OF REFUSAL.

4 ‘‘(a) EXAMINATION AND OPPOSITION.—(1) A request

5 for extension of protection described in section 66(a) shall

6 be examined as an application for registration on the Prin7 cipal Register under this Act, and if on such examination

8 it appears that the applicant is entitled to extension of

9 protection under this title, the Commissioner shall cause

10 the mark to be published in the Official Gazette of the

11 Patent and Trademark Office.

12 ‘‘(2) Subject to the provisions of subsection (c), a re13 quest for extension of protection under this title shall be

14 subject to opposition under section 13. Unless successfully

15 opposed, the request for extension of protection shall not

16 be refused.

17 ‘‘(3) Extension of protection shall not be refused

18 under this section on the ground that the mark has not

19 been used in commerce.

20 ‘‘(4) Extension of protection shall be refused under

21 this section to any mark not registrable on the Principal

22 Register.

23 ‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for

24 extension of protection is refused under subsection (a), the

25 Commissioner shall declare in a notification of refusal (as

26 provided in subsection (c)) that the extension of protection
13

•S 671 IS

1 cannot be granted, together with a statement of all

2 grounds on which the refusal was based.

3 ‘‘(c) NOTICE TO INTERNATIONAL BUREAU.—(1)

4 Within 18 months after the date on which the Inter5 national Bureau transmits to the Patent and Trademark

6 Office a notification of a request for extension of protec7 tion, the Commissioner shall transmit to the International

8 Bureau any of the following that applies to such request:

9 ‘‘(A) A notification of refusal based on an ex10 amination of the request for extension of protection.

11 ‘‘(B) A notification of refusal based on the fil12 ing of an opposition to the request.

13 ‘‘(C) A notification of the possibility that an op14 position to the request may be filed after the end of

15 that 18-month period.

16 ‘‘(2) If the Commissioner has sent a notification of

17 the possibility of opposition under paragraph (1)(C), the

18 Commissioner shall, if applicable, transmit to the Inter19 national Bureau a notification of refusal on the basis of

20 the opposition, together with a statement of all the

21 grounds for the opposition, within 7 months after the be22 ginning of the opposition period or within 1 month after

23 the end of the opposition period, whichever is earlier.

24 ‘‘(3) If a notification of refusal of a request for exten25 sion of protection is transmitted under paragraph (1) or
14

•S 671 IS

1 (2), no grounds for refusal of such request other than

2 those set forth in such notification may be transmitted to

3 the International Bureau by the Commissioner after the

4 expiration of the time periods set forth in paragraph (1)

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

6 ‘‘(4) If a notification specified in paragraph (1) or

7 (2) is not sent to the International Bureau within the time

8 period set forth in such paragraph, with respect to a re9 quest for extension of protection, the request for extension

10 of protection shall not be refused and the Commissioner

11 shall issue a certificate of extension of protection pursuant

12 to the request.

13 ‘‘(d) DESIGNATION OF AGENT FOR SERVICE OF

14 PROCESS.—In responding to a notification of refusal with

15 respect to a mark, the holder of the international registra16 tion of the mark shall designate, by a written document

17 filed in the Patent and Trademark Office, the name and

18 address of a person resident in the United States on whom

19 may be served notices or process in proceedings affecting

20 the mark. Such notices or process may be served upon

21 the person so designated by leaving with that person, or

22 mailing to that person, a copy thereof at the address speci23 fied in the last designation so filed. If the person so des24 ignated cannot be found at the address given in the last
15

•S 671 IS

1 designation, such notice or process may be served upon

2 the Commissioner.

3 ‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.

4 ‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—

5 Unless a request for extension of protection is refused

6 under section 68, the Commissioner shall issue a certifi7 cate of extension of protection pursuant to the request and

8 shall cause notice of such certificate of extension of protec9 tion to be published in the Official Gazette of the Patent

10 and Trademark Office.

11 ‘‘(b) EFFECT OF EXTENSION OF PROTECTION.—

12 From the date on which a certificate of extension of pro13 tection is issued under subsection (a)—

14 ‘‘(1) such extension of protection shall have the

15 same effect and validity as a registration on the

16 Principal Register, and

17 ‘‘(2) the holder of the international registration

18 shall have the same rights and remedies as the

19 owner of a registration on the Principal Register.

20 ‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO

21 THE UNITED STATES ON THE UNDERLYING

22 INTERNATIONAL REGISTRATION.

23 ‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL

24 REGISTRATION.—If the International Bureau notifies the

25 Patent and Trademark Office of the cancellation of an
16

•S 671 IS

1 international registration with respect to some or all of

2 the goods and services listed in the international registra3 tion, the Commissioner shall cancel any extension of pro4 tection to the United States with respect to such goods

5 and services as of the date on which the international reg6 istration was canceled.

7 ‘‘(b) EFFECT OF FAILURE TO RENEW INTER8 NATIONAL REGISTRATION.—If the International Bureau

9 does not renew an international registration, the cor10 responding extension of protection to the United States

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

12 the international registration.

13 ‘‘(c) TRANSFORMATION OF AN EXTENSION OF PRO14 TECTION INTO A UNITED STATES APPLICATION.—The

15 holder of an international registration canceled in whole

16 or in part by the International Bureau at the request of

17 the office of origin, under Article 6(4) of the Madrid Pro18 tocol, may file an application, under section 1 or 44 of

19 this Act, for the registration of the same mark for any

20 of the goods and services to which the cancellation applies

21 that were covered by an extension of protection to the

22 United States based on that international registration.

23 Such an application shall be treated as if it had been filed

24 on the international registration date or the date of

25 recordal of the request for extension of protection with the
17

•S 671 IS

1 International Bureau, whichever date applies, and, if the

2 extension of protection enjoyed priority under section 67

3 of this title, shall enjoy the same priority. Such an applica4 tion shall be entitled to the benefits conferred by this sub5 section only if the application is filed not later than 3

6 months after the date on which the international registra7 tion was canceled, in whole or in part, and only if the ap8 plication complies with all the requirements of this Act

9 which apply to any application filed under section 1 or

10 44.

11 ‘‘SEC. 71. AFFIDAVITS AND FEES.

12 ‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An exten13 sion of protection for which a certificate of extension of

14 protection has been issued under section 69 shall remain

15 in force for the term of the international registration upon

16 which it is based, except that the extension of protection

17 of any mark shall be canceled by the Commissioner—

18 ‘‘(1) at the end of the 6-year period beginning

19 on the date on which the certificate of extension of

20 protection was issued by the Commissioner, unless

21 within the 1-year period preceding the expiration of

22 that 6-year period the holder of the international

23 registration files in the Patent and Trademark Of24 fice an affidavit under subsection (b) together with

25 a fee prescribed by the Commissioner; and
18

•S 671 IS

1 ‘‘(2) at the end of the 10-year period beginning

2 on the date on which the certificate of extension of

3 protection was issued by the Commissioner, and at

4 the end of each 10-year period thereafter, unless—

5 ‘‘(A) within the 6-month period preceding

6 the expiration of such 10-year period the holder

7 of the international registration files in the Pat8 ent and Trademark Office an affidavit under

9 subsection (b) together with a fee prescribed by

10 the Commissioner; or

11 ‘‘(B) within 3 months after the expiration

12 of such 10-year period, the holder of the inter13 national registration files in the Patent and

14 Trademark Office an affidavit under subsection

15 (b) together with the fee described in subpara16 graph (A) and an additional fee prescribed by

17 the Commissioner.

18 ‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit re19 ferred to in subsection (a) shall set forth those goods or

20 services recited in the extension of protection on or in con21 nection with which the mark is in use in commerce and

22 the holder of the international registration shall attach to

23 the affidavit a specimen or facsimile showing the current

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

25 nonuse is due to special circumstances which excuse such
19

•S 671 IS

1 nonuse and is not due to any intention to abandon the

2 mark. Special notice of the requirement for such affidavit

3 shall be attached to each certificate of extension of protec4 tion.

5 ‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

6 ‘‘An extension of protection may be assigned, to7 gether with the goodwill associated with the mark, only

8 to a person who is a national of, is domiciled in, or has

9 a bona fide and effective industrial or commercial estab10 lishment either in a country that is a Contracting Party

11 or in a country that is a member of an intergovernmental

12 organization that is a Contracting Party.

13 ‘‘SEC. 73. INCONTESTABILITY.

14 ‘‘The period of continuous use prescribed under sec15 tion 15 for a mark covered by an extension of protection

16 issued under this title may begin no earlier than the date

17 on which the Commissioner issues the certificate of the

18 extension of protection under section 69, except as pro19 vided in section 74.

20 ‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

21 ‘‘An extension of protection shall convey the same

22 rights as an existing registration for the same mark, if—

23 ‘‘(1) the extension of protection and the exist24 ing registration are owned by the same person;
20

•S 671 IS

1 ‘‘(2) the goods and services listed in the exist2 ing registration are also listed in the extension of

3 protection; and

4 ‘‘(3) the certificate of extension of protection is

5 issued after the date of the existing registration.’’.

6 SEC. 3. EFFECTIVE DATE.

7 This Act and the amendments made by this Act shall

8 take effect on the date on which the Madrid Protocol (as

9 defined in section 60(1) of the Trademark Act of 1946)

10 enters into force with respect to the United States.

Æ