II

Calendar No. 473

105TH CONGRESS

2D SESSION S. 2192

To make certain technical corrections to the Trademark Act of 1946.

IN THE SENATE OF THE UNITED STATES

JUNE 18, 1998

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

to the Committee on the Judiciary

JULY 16, 1998

Reported by Mr. HATCH, without amendment

A BILL

To make certain technical corrections to the Trademark Act

of 1946.

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

3 SECTION 1. TECHNICAL CORRECTIONS TO TRADEMARK

4 ACT OF 1946.

5 (a) IN GENERAL.—The Act entitled ‘‘An Act to pro6 vide for the registration and protection of trademarks used

7 in commerce, to carry out the provisions of certain inter8 national conventions, and for other purposes’’, approved
2

S 2192 RS

1 July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred

2 to as the Trademark Act of 1946), is amended as follows:

3 (1) Section 1 (15 U.S.C. 1051) is amended—

4 (A) in subsection (a)(1)(A), by striking

5 ‘‘goods in connection’’ each place it appears and

6 inserting ‘‘goods on or in connection’’; and

7 (B) in subsection (d)(1)—

8 (i) by inserting ‘‘and,’’ after ‘‘specify9 ing the date of the applicant’s first use of

10 the mark in commerce’’; and

11 (ii) by striking ‘‘and, the mode or

12 manner in which the mark is used on or in

13 connection with such goods or services’’.

14 (2) Section 2 (15 U.S.C. 1052) is amended—

15 (A) in subsection (e)—

16 (i) in paragraph (3) by striking ‘‘or’’

17 after ‘‘them,’’; and

18 (ii) by inserting before the period at

19 the end the following: ‘‘, or (5) comprises

20 any matter that, as a whole, is functional’’;

21 and

22 (B) in subsection (f), by striking ‘‘para23 graphs (a), (b), (c), (d), and (e)(3)’’ and insert24 ing ‘‘subsections (a), (b), (c), (d), (e)(3), and

25 (e)(5)’’.
3

S 2192 RS

1 (3) Section 7(a) (15 U.S.C. 1057(a)) is amend2 ed in the first sentence by striking the second period

3 at the end.

4 (4) Section 10 (15 U.S.C. 1060) is amended—

5 (A) at the end of the first sentence, by

6 striking the comma before the period; and

7 (B) in the third sentence, by striking the

8 second period at the end.

9 (5) Section 14(3) (15 U.S.C. 1064(3)) is

10 amended by inserting ‘‘or is functional,’’ before ‘‘or

11 has been abandoned’’.

12 (6) Section 23(c) (15 U.S.C. 1091(c)) is

13 amended by striking ‘‘or device’’ and inserting ‘‘, de14 vice, any matter that as a whole is not functional,’’.

15 (7) Section 26 (15 U.S.C. 1094) is amended by

16 striking ‘‘7(c),,’’ and inserting ‘‘, 7(c),’’.

17 (8) Section 31 (15 U.S.C. 1113) is amended—

18 (A) by striking—

19 ‘‘§ 31. Fees’’;

20 and

21 (B) by striking ‘‘(a)’’ and inserting ‘‘SEC.

22 31. (a)’’.

23 (9) Section 32(1) (15 U.S.C. 1114(1)) is

24 amended by striking ‘‘As used in this subsection’’

25 and inserting ‘‘As used in this paragraph’’.
4

S 2192 RS

1 (10) Section 33(b) (15 U.S.C. 1115(b)) is

2 amended—

3 (A) by redesignating paragraph (8) as

4 paragraph (9); and

5 (B) by inserting after paragraph (7) the

6 following:

7 ‘‘(8) That the mark is functional; or’’.

8 (11) Section 39(a) (15 U.S.C. 1121(a)) is

9 amended by striking ‘‘circuit courts’’ and inserting

10 ‘‘courts’’.

11 (12) Section 42 (15 U.S.C. 1124) is amended

12 by striking ‘‘the any domestic’’ and inserting ‘‘any

13 domestic’’.

14 (13) The Act is amended by striking ‘‘trade15 mark’’ each place it appears in the text and the title

16 and inserting ‘‘trademark’’.

17 (b) EFFECTIVE DATE.—The amendments made by

18 this section shall take effect on the date of enactment of

19 this Act, and shall apply only to any civil action filed or

20 proceeding before the United States Patent and Trade21 mark Office commenced on or after such date relating to

22 the registration of a mark.
A BILL

To make certain technical corrections to the

Trademark Act of 1946.

JULY 16, 1998

Reported without amendment