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Calendar No. 474

105TH CONGRESS

2D SESSION S. 2193

To implement the provisions of the Trademark Law Treaty.

IN THE SENATE OF THE UNITED STATES

JUNE 18, 1998

Mr. HATCH (for himself and Mr. LEAHY) 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 implement the provisions of the Trademark Law Treaty.

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 ‘‘Trademark Law Trea5 ty Implementation Act’’.

6 SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

7 For purposes of this Act, the Act entitled ‘‘An Act

8 to provide for the registration and protection of trade9 marks used in commerce, to carry out the provisions of
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1 certain international conventions, and for other purposes’’,

2 approved July 5, 1946 (15 U.S.C. 1051 et seq.), shall be

3 referred to as the ‘‘Trademark Act of 1946’’.

4 SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.

5 (a) APPLICATION FOR USE OF TRADEMARK.—Sec6 tion 1(a) of the Trademark Act of 1946 (15 U.S.C.

7 1051(a)) is amended to read as follows:

8 ‘‘SECTION 1. (a)(1) The owner of a trademark used

9 in commerce may request registration of its trademark on

10 the principal register hereby established by paying the pre11 scribed fee and filing in the Patent and Trademark Office

12 an application and a verified statement, in such form as

13 may be prescribed by the Commissioner, and such number

14 of specimens or facsimiles of the mark as used as may

15 be required by the Commissioner.

16 ‘‘(2) The application shall include specification of the

17 applicant’s domicile and citizenship, the date of the appli18 cant’s first use of the mark, the date of the applicant’s

19 first use of the mark in commerce, the goods in connection

20 with which the mark is used, and a drawing of the mark.

21 ‘‘(3) The statement shall be verified by the applicant

22 and specify that—

23 ‘‘(A) the person making the verification believes

24 that he or she, or the juristic person in whose behalf
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1 he or she makes the verification, to be the owner of

2 the mark sought to be registered;

3 ‘‘(B) to the best of the verifier’s knowledge and

4 belief, the facts recited in the application are accu5 rate;

6 ‘‘(C) the mark is in use in commerce; and

7 ‘‘(D) to the best of the verifier’s knowledge and

8 belief, no other person has the right to use such

9 mark in commerce either in the identical form there10 of or in such near resemblance thereto as to be like11 ly, when used on or in connection with the goods of

12 such other person, to cause confusion, or to cause

13 mistake, or to deceive, except that, in the case of

14 every application claiming concurrent use, the appli15 cant shall—

16 ‘‘(i) state exceptions to the claim of exclu17 sive use; and

18 ‘‘(ii) shall specify, to the extent of the ver19 ifier’s knowledge—

20 ‘‘(I) any concurrent use by others;

21 ‘‘(II) the goods on or in connection

22 with which and the areas in which each

23 concurrent use exists;

24 ‘‘(III) the periods of each use; and
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1 ‘‘(IV) the goods and area for which

2 the applicant desires registration.

3 ‘‘(4) The applicant shall comply with such rules or

4 regulations as may be prescribed by the Commissioner.

5 The Commissioner shall promulgate rules prescribing the

6 requirements for the application and for obtaining a filing

7 date herein.’’.

8 (b) APPLICATION FOR BONA FIDE INTENTION TO

9 USE TRADEMARK.—Subsection (b) of section 1 of the

10 Trademark Act of 1946 (15 U.S.C. 1051(b)) is amended

11 to read as follows:

12 ‘‘(b)(1) A person who has a bona fide intention,

13 under circumstances showing the good faith of such per14 son, to use a trademark in commerce may request reg15 istration of its trademark on the principal register hereby

16 established by paying the prescribed fee and filing in the

17 Patent and Trademark Office an application and a verified

18 statement, in such form as may be prescribed by the Com19 missioner.

20 ‘‘(2) The application shall include specification of the

21 applicant’s domicile and citizenship, the goods in connec22 tion with which the applicant has a bona fide intention

23 to use the mark, and a drawing of the mark.

24 ‘‘(3) The statement shall be verified by the applicant

25 and specify—
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1 ‘‘(A) that the person making the verification be2 lieves that he or she, or the juristic person in whose

3 behalf he or she makes the verification, to be enti4 tled to use the mark in commerce;

5 ‘‘(B) the applicant’s bona fide intention to use

6 the mark in commerce;

7 ‘‘(C) that, to the best of the verifier’s knowl8 edge and belief, the facts recited in the application

9 are accurate; and

10 ‘‘(D) that, to the best of the verifier’s knowl11 edge and belief, no other person has the right to use

12 such mark in commerce either in the identical form

13 thereof or in such near resemblance thereto as to be

14 likely, when used on or in connection with the goods

15 of such other person, to cause confusion, or to cause

16 mistake, or to deceive.

17 Except for applications filed pursuant to section 44, no

18 mark shall be registered until the applicant has met the

19 requirements of subsections (c) and (d) of this section.

20 ‘‘(4) The applicant shall comply with such rules or

21 regulations as may be prescribed by the Commissioner.

22 The Commissioner shall promulgate rules prescribing the

23 requirements for the application and for obtaining a filing

24 date herein.’’.
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1 (c) CONSEQUENCE OF DELAYS.—Paragraph (4) of

2 section 1(d) of the Trademark Act of 1946 (15 U.S.C.

3 1051(d)(4)) is amended to read as follows:

4 ‘‘(4) The failure to timely file a verified statement

5 of use under paragraph (1) or an extension request under

6 paragraph (2) shall result in abandonment of the applica7 tion, unless it can be shown to the satisfaction of the Com8 missioner that the delay in responding was unintentional,

9 in which case the time for filing may be extended, but for

10 a period not to exceed the period specified in paragraphs

11 (1) and (2) for filing a statement of use.’’.

12 SEC. 4. REVIVAL OF ABANDONED APPLICATION.

13 Section 12(b) of the Trademark Act of 1946 (15

14 U.S.C. 1062(b)) is amended in the last sentence by strik15 ing ‘‘unavoidable’’ and by inserting ‘‘unintentional’’.

16 SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AF17 FIDAVIT OF CONTINUED USE; NOTICE OF

18 COMMISSIONER’S ACTION.

19 Section 8 of the Trademark Act of 1946 (15 U.S.C.

20 1058) is amended to read as follows:

21 ‘‘DURATION

22 ‘‘SEC. 8. (a) Each registration shall remain in force

23 for 10 years, except that the registration of any mark shall

24 be canceled by the Commissioner for failure to comply

25 with the provisions of subsection (b) of this section, upon

26 the expiration of the following time periods, as applicable:
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1 ‘‘(1) For registrations issued pursuant to the

2 provisions of this Act, at the end of 6 years follow3 ing the date of registration.

4 ‘‘(2) For registrations published under the pro5 visions of section 12(c), at the end of 6 years follow6 ing the date of publication under such section.

7 ‘‘(3) For all registrations, at the end of each

8 successive 10-year period following the date of reg9 istration.

10 ‘‘(b) During the 1-year period immediately preceding

11 the end of the applicable time period set forth in sub12 section (a), the owner of the registration shall pay the pre13 scribed fee and file in the Patent and Trademark Office—

14 ‘‘(1) an affidavit setting forth those goods or

15 services recited in the registration on or in connec16 tion with which the mark is in use in commerce and

17 such number of specimens or facsimiles showing cur18 rent use of the mark as may be required by the

19 Commissioner; or

20 ‘‘(2) an affidavit setting forth those goods or

21 services recited in the registration on or in connec22 tion with which the mark is not in use in commerce

23 and showing that any such nonuse is due to special

24 circumstances which excuse such nonuse and is not

25 due to any intention to abandon the mark.
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1 ‘‘(c)(1) The owner of the registration may make the

2 submissions required under this section within a grace pe3 riod of 6 months after the end of the applicable time pe4 riod set forth in subsection (a). Such submission is re5 quired to be accompanied by a surcharge prescribed by

6 the Commissioner.

7 ‘‘(2) If any submission filed under this section is defi8 cient, the deficiency may be corrected after the statutory

9 time period and within the time prescribed after notifica10 tion of the deficiency. Such submission is required to be

11 accompanied by a surcharge prescribed by the Commis12 sioner.

13 ‘‘(d) Special notice of the requirement for affidavits

14 under this section shall be attached to each certificate of

15 registration and notice of publication under section 12(c).

16 ‘‘(e) The Commissioner shall notify any owner who

17 files 1 of the affidavits required by this section of the Com18 missioner’s acceptance or refusal thereof and, in the case

19 of a refusal, the reasons therefor.

20 ‘‘(f) If the registrant is not domiciled in the United

21 States, the registrant shall designate by a written docu22 ment filed in the Patent and Trademark Office the name

23 and address of some person resident in the United States

24 on whom may be served notices or process in proceedings

25 affecting the mark. Such notices or process may be served
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1 upon the person so designated by leaving with that person

2 or mailing to that person a copy thereof at the address

3 specified in the last designation so filed. If the person so

4 designated cannot be found at the address given in the

5 last designation, such notice or process may be served

6 upon the Commissioner.’’.

7 SEC. 6. RENEWAL OF REGISTRATION.

8 Section 9 of the Trademark Act of 1946 (15 U.S.C.

9 1059) is amended to read as follows:

10 ‘‘RENEWAL OF REGISTRATION

11 ‘‘SEC. 9. (a) Subject to the provisions of section 8,

12 each registration may be renewed for periods of 10 years

13 at the end of each successive 10-year period following the

14 date of registration upon payment of the prescribed fee

15 and the filing of a written application, in such form as

16 may be prescribed by the Commissioner. Such application

17 may be made at any time within 1 year before the end

18 of each successive 10-year period for which the registra19 tion was issued or renewed, or it may be made within a

20 grace period of 6 months after the end of each successive

21 10-year period, upon payment of a fee and surcharge pre22 scribed therefor. If any application filed under this section

23 is deficient, the deficiency may be corrected within the

24 time prescribed after notification of the deficiency, upon

25 payment of a surcharge prescribed therefor.
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1 ‘‘(b) If the Commissioner refuses to renew the reg2 istration, the Commissioner shall notify the registrant of

3 the Commissioner’s refusal and the reasons therefor.

4 ‘‘(c) If the registrant is not domiciled in the United

5 States, the registrant shall designate by a written docu6 ment filed in the Patent and Trademark Office the name

7 and address of some person resident in the United States

8 on whom may be served notices or process in proceedings

9 affecting the mark. Such notices or process may be served

10 upon the person so designated by leaving with that person

11 or mailing to that person a copy thereof at the address

12 specified in the last designation so filed. If the person so

13 designated cannot be found at the address given in the

14 last designation, such notice or process may be served

15 upon the Commissioner.’’.

16 SEC. 7. RECORDING ASSIGNMENT OF MARK.

17 Section 10 of the Trademark Act of 1946 (15 U.S.C.

18 1060) is amended to read as follows:

19 ‘‘ASSIGNMENT

20 ‘‘SEC. 10. (a) A registered mark or a mark for which

21 an application to register has been filed shall be assignable

22 with the good will of the business in which the mark is

23 used, or with that part of the good will of the business

24 connected with the use of and symbolized by the mark.

25 Notwithstanding the preceding sentence, no application to

26 register a mark under section 1(b) shall be assignable
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1 prior to the filing of an amendment under section 1(c)

2 to bring the application into conformity with section 1(a)

3 or the filing of the verified statement of use under section

4 1(d), except for an assignment to a successor to the busi5 ness of the applicant, or portion thereof, to which the

6 mark pertains, if that business is ongoing and existing.

7 In any assignment authorized by this section, it shall not

8 be necessary to include the good will of the business con9 nected with the use of and symbolized by any other mark

10 used in the business or by the name or style under which

11 the business is conducted. Assignments shall be by instru12 ments in writing duly executed. Acknowledgment shall be

13 prima facie evidence of the execution of an assignment,

14 and when the prescribed information reporting the assign15 ment is recorded in the Patent and Trademark Office, the

16 record shall be prima facie evidence of execution. An as17 signment shall be void against any subsequent purchaser

18 for valuable consideration without notice, unless the pre19 scribed information reporting the assignment is recorded

20 in the Patent and Trademark Office within 3 months after

21 the date of the subsequent purchase or prior to the subse22 quent purchase. The Patent and Trademark Office shall

23 maintain a record of information on assignments, in such

24 form as may be prescribed by the Commissioner.
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1 ‘‘(b) An assignee not domiciled in the United States

2 shall designate by a written document filed in the Patent

3 and Trademark Office the name and address of some per4 son resident in the United States on whom may be served

5 notices or process in proceedings affecting the mark. Such

6 notices or process may be served upon the person so des7 ignated by leaving with that person or mailing to that per8 son a copy thereof at the address specified in the last des9 ignation so filed. If the person so designated cannot be

10 found at the address given in the last designation, such

11 notice or process may be served upon the Commissioner.’’.

12 SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN

13 REGISTRATION.

14 Section 44 of the Trademark Act of 1946 (15 U.S.C.

15 1126) is amended—

16 (1) in subsection (d)—

17 (A) by striking ‘‘23, or 44(e) of this Act’’

18 and inserting ‘‘or 23 of this Act or under sub19 section (e) of this section’’; and

20 (B) in paragraphs (3) and (4) by striking

21 ‘‘this subsection (d)’’ and inserting ‘‘this sub22 section’’; and

23 (2) in subsection (e), by striking the second

24 sentence and inserting the following: ‘‘Such appli25 cant shall submit, within such time period as may be
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1 prescribed by the Commissioner, a certification or a

2 certified copy of the registration in the country of

3 origin of the applicant.’’.

4 SEC. 9. TRANSITION PROVISIONS.

5 (a) REGISTRATIONS IN 20-YEAR TERM.—The provi6 sions of section 8 of the Trademark Act of 1946, as

7 amended by section 5 of this Act, shall apply to a registra8 tion for trademark issued or renewed for a 20-year term,

9 if the expiration date of the registration is on or after the

10 effective date of this Act.

11 (b) APPLICATIONS FOR REGISTRATION.—This Act

12 and the amendments made by this Act shall apply to any

13 application for registration of a trademark pending on, or

14 filed on or after, the effective date of this Act.

15 (c) AFFIDAVITS.—The provisions of section 8 of the

16 Trademark Act of 1946, as amended by section 5 of this

17 Act, shall apply to the filing of an affidavit if the sixth

18 or tenth anniversary of the registration, or the sixth anni19 versary of publication of the registration under section

20 12(c) of the Trademark Act of 1946, for which the affida21 vit is filed is on or after the effective date of this Act.

22 (d) RENEWAL APPLICATIONS.—The amendment

23 made by section 6 shall apply to the filing of an applica24 tion for renewal of a registration if the expiration date
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1 of the registration for which the renewal application is

2 filed is on or after the effective date of this Act.

3 SEC. 10. EFFECTIVE DATE.

4 This Act and the amendments made by this Act shall

5 take effect—

6 (1) on the date that is 1 year after the date of

7 the enactment of this Act, or

8 (2) upon the entry into force of the Trademark

9 Law Treaty with respect to the United States,

10 whichever occurs first.

Calendar No. 474

105TH CONGRESS

2D SESSION S. 2193

A BILL

To implement the provisions of the Trademark Law

Treaty.

JULY 16, 1998

Reported without amendment