105TH CONGRESS

2D SESSION S. 2193

AN ACT

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,
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1 TITLE I—TRADEMARK LAW

2 TREATY IMPLEMENTATION

3 SEC. 101. SHORT TITLE.

4 This title may be cited as the ‘‘Trademark Law Trea5 ty Implementation Act’’.

6 SEC. 102. REFERENCE TO THE TRADEMARK ACT OF 1946.

7 For purposes of this title, 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

10 certain international conventions, and for other purposes’’,

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

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

13 SEC. 103. APPLICATION FOR REGISTRATION; VERIFICA14 TION.

15 (a) APPLICATION FOR USE OF TRADEMARK.—Sec16 tion 1(a) of the Trademark Act of 1946 (15 U.S.C.

17 1051(a)) is amended to read as follows:

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

19 in commerce may request registration of its trademark on

20 the principal register hereby established by paying the pre21 scribed fee and filing in the Patent and Trademark Office

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

23 may be prescribed by the Commissioner, and such number

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

25 be required by the Commissioner.
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1 ‘‘(2) The application shall include specification of the

2 applicant’s domicile and citizenship, the date of the appli3 cant’s first use of the mark, the date of the applicant’s

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

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

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

7 and specify that—

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

9 that he or she, or the juristic person in whose behalf

10 he or she makes the verification, to be the owner of

11 the mark sought to be registered;

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

13 belief, the facts recited in the application are accu14 rate;

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

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

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

18 mark in commerce either in the identical form there19 of or in such near resemblance thereto as to be like20 ly, when used on or in connection with the goods of

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

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

23 every application claiming concurrent use, the appli24 cant shall—
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1 ‘‘(i) state exceptions to the claim of exclu2 sive use; and

3 ‘‘(ii) shall specify, to the extent of the ver4 ifier’s knowledge—

5 ‘‘(I) any concurrent use by others;

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

7 with which and the areas in which each

8 concurrent use exists;

9 ‘‘(III) the periods of each use; and

10 ‘‘(IV) the goods and area for which

11 the applicant desires registration.

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

13 regulations as may be prescribed by the Commissioner.

14 The Commissioner shall promulgate rules prescribing the

15 requirements for the application and for obtaining a filing

16 date herein.’’.

17 (b) APPLICATION FOR BONA FIDE INTENTION TO

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

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

20 to read as follows:

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

22 under circumstances showing the good faith of such per23 son, to use a trademark in commerce may request reg24 istration of its trademark on the principal register hereby

25 established by paying the prescribed fee and filing in the
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1 Patent and Trademark Office an application and a verified

2 statement, in such form as may be prescribed by the Com3 missioner.

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

5 applicant’s domicile and citizenship, the goods in connec6 tion with which the applicant has a bona fide intention

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

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

9 and specify—

10 ‘‘(A) that the person making the verification be11 lieves that he or she, or the juristic person in whose

12 behalf he or she makes the verification, to be enti13 tled to use the mark in commerce;

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

15 the mark in commerce;

16 ‘‘(C) that, to the best of the verifier’s knowl17 edge and belief, the facts recited in the application

18 are accurate; and

19 ‘‘(D) that, to the best of the verifier’s knowl20 edge and belief, no other person has the right to use

21 such mark in commerce either in the identical form

22 thereof or in such near resemblance thereto as to be

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

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

25 mistake, or to deceive.
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1 Except for applications filed pursuant to section 44, no

2 mark shall be registered until the applicant has met the

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

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

5 regulations as may be prescribed by the Commissioner.

6 The Commissioner shall promulgate rules prescribing the

7 requirements for the application and for obtaining a filing

8 date herein.’’.

9 (c) CONSEQUENCE OF DELAYS.—Paragraph (4) of

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

11 1051(d)(4)) is amended to read as follows:

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

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

14 paragraph (2) shall result in abandonment of the applica15 tion, unless it can be shown to the satisfaction of the Com16 missioner that the delay in responding was unintentional,

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

18 a period not to exceed the period specified in paragraphs

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

20 SEC. 104. REVIVAL OF ABANDONED APPLICATION.

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

22 U.S.C. 1062(b)) is amended in the last sentence by strik23 ing ‘‘unavoidable’’ and by inserting ‘‘unintentional’’.
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1 SEC. 105. DURATION OF REGISTRATION; CANCELLATION;

2 AFFIDAVIT OF CONTINUED USE; NOTICE OF

3 COMMISSIONER’S ACTION.

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

5 1058) is amended to read as follows:

6 ‘‘DURATION

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

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

9 be canceled by the Commissioner for failure to comply

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

11 the expiration of the following time periods, as applicable:

12 ‘‘(1) For registrations issued pursuant to the

13 provisions of this Act, at the end of 6 years follow14 ing the date of registration.

15 ‘‘(2) For registrations published under the pro16 visions of section 12(c), at the end of 6 years follow17 ing the date of publication under such section.

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

19 successive 10-year period following the date of reg20 istration.

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

22 the end of the applicable time period set forth in sub23 section (a), the owner of the registration shall pay the pre24 scribed fee and file in the Patent and Trademark Office—

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

26 services recited in the registration on or in connec-
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1 tion with which the mark is in use in commerce and

2 such number of specimens or facsimiles showing cur3 rent use of the mark as may be required by the

4 Commissioner; or

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

6 services recited in the registration on or in connec7 tion with which the mark is not in use in commerce

8 and showing that any such nonuse is due to special

9 circumstances which excuse such nonuse and is not

10 due to any intention to abandon the mark.

11 ‘‘(c)(1) The owner of the registration may make the

12 submissions required under this section within a grace pe13 riod of 6 months after the end of the applicable time pe14 riod set forth in subsection (a). Such submission is re15 quired to be accompanied by a surcharge prescribed by

16 the Commissioner.

17 ‘‘(2) If any submission filed under this section is defi18 cient, the deficiency may be corrected after the statutory

19 time period and within the time prescribed after notifica20 tion of the deficiency. Such submission is required to be

21 accompanied by a surcharge prescribed by the Commis22 sioner.

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

24 under this section shall be attached to each certificate of

25 registration and notice of publication under section 12(c).
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1 ‘‘(e) The Commissioner shall notify any owner who

2 files 1 of the affidavits required by this section of the Com3 missioner’s acceptance or refusal thereof and, in the case

4 of a refusal, the reasons therefor.

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

6 States, the registrant shall designate by a written docu7 ment filed in the Patent and Trademark Office the name

8 and address of some person resident in the United States

9 on whom may be served notices or process in proceedings

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

11 upon the person so designated by leaving with that person

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

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

14 designated cannot be found at the address given in the

15 last designation, such notice or process may be served

16 upon the Commissioner.’’.

17 SEC. 106. RENEWAL OF REGISTRATION.

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

19 1059) is amended to read as follows:

20 ‘‘RENEWAL OF REGISTRATION

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

22 each registration may be renewed for periods of 10 years

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

24 date of registration upon payment of the prescribed fee

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

26 may be prescribed by the Commissioner. Such application
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1 may be made at any time within 1 year before the end

2 of each successive 10-year period for which the registra3 tion was issued or renewed, or it may be made within a

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

5 10-year period, upon payment of a fee and surcharge pre6 scribed therefor. If any application filed under this section

7 is deficient, the deficiency may be corrected within the

8 time prescribed after notification of the deficiency, upon

9 payment of a surcharge prescribed therefor.

10 ‘‘(b) If the Commissioner refuses to renew the reg11 istration, the Commissioner shall notify the registrant of

12 the Commissioner’s refusal and the reasons therefor.

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

14 States, the registrant shall designate by a written docu15 ment filed in the Patent and Trademark Office the name

16 and address of some person resident in the United States

17 on whom may be served notices or process in proceedings

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

19 upon the person so designated by leaving with that person

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

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

22 designated cannot be found at the address given in the

23 last designation, such notice or process may be served

24 upon the Commissioner.’’.
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1 SEC. 107. RECORDING ASSIGNMENT OF MARK.

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

3 1060) is amended to read as follows:

4 ‘‘ASSIGNMENT

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

6 an application to register has been filed shall be assignable

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

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

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

10 Notwithstanding the preceding sentence, no application to

11 register a mark under section 1(b) shall be assignable

12 prior to the filing of an amendment under section 1(c)

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

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

15 1(d), except for an assignment to a successor to the busi16 ness of the applicant, or portion thereof, to which the

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

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

19 be necessary to include the good will of the business con20 nected with the use of and symbolized by any other mark

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

22 the business is conducted. Assignments shall be by instru23 ments in writing duly executed. Acknowledgment shall be

24 prima facie evidence of the execution of an assignment,

25 and when the prescribed information reporting the assign26 ment is recorded in the Patent and Trademark Office, the
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1 record shall be prima facie evidence of execution. An as2 signment shall be void against any subsequent purchaser

3 for valuable consideration without notice, unless the pre4 scribed information reporting the assignment is recorded

5 in the Patent and Trademark Office within 3 months after

6 the date of the subsequent purchase or prior to the subse7 quent purchase. The Patent and Trademark Office shall

8 maintain a record of information on assignments, in such

9 form as may be prescribed by the Commissioner.

10 ‘‘(b) An assignee not domiciled in the United States

11 shall designate by a written document filed in the Patent

12 and Trademark Office the name and address of some per13 son resident in the United States on whom may be served

14 notices or process in proceedings affecting the mark. Such

15 notices or process may be served upon the person so des16 ignated by leaving with that person or mailing to that per17 son a copy thereof at the address specified in the last des18 ignation so filed. If the person so designated cannot be

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

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

21 SEC. 108. INTERNATIONAL CONVENTIONS; COPY OF FOR22 EIGN REGISTRATION.

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

24 1126) is amended—

25 (1) in subsection (d)—
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1 (A) by striking ‘‘23, or 44(e) of this Act’’

2 and inserting ‘‘or 23 of this Act or under sub3 section (e) of this section’’; and

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

5 ‘‘this subsection (d)’’ and inserting ‘‘this sub6 section’’; and

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

8 sentence and inserting the following: ‘‘Such appli9 cant shall submit, within such time period as may be

10 prescribed by the Commissioner, a certification or a

11 certified copy of the registration in the country of

12 origin of the applicant.’’.

13 SEC. 109. TRANSITION PROVISIONS.

14 (a) REGISTRATIONS IN 20-YEAR TERM.—The provi15 sions of section 8 of the Trademark Act of 1946, as

16 amended by section 105 of this Act, shall apply to a reg17 istration for trademark issued or renewed for a 20-year

18 term, if the expiration date of the registration is on or

19 after the effective date of this Act.

20 (b) APPLICATIONS FOR REGISTRATION.—This title

21 and the amendments made by this title shall apply to any

22 application for registration of a trademark pending on, or

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

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

25 Trademark Act of 1946, as amended by section 105 of
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1 this Act, shall apply to the filing of an affidavit if the sixth

2 or tenth anniversary of the registration, or the sixth anni3 versary of publication of the registration under section

4 12(c) of the Trademark Act of 1946, for which the affida5 vit is filed is on or after the effective date of this Act.

6 (d) RENEWAL APPLICATIONS.—The amendment

7 made by section 106 shall apply to the filing of an applica8 tion for renewal of a registration if the expiration date

9 of the registration for which the renewal application is

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

11 SEC. 110. EFFECTIVE DATE.

12 This title and the amendments made by this title

13 shall take effect—

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

15 the enactment of this Act, or

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

17 Law Treaty with respect to the United States,

18 whichever occurs first.

19 TITLE II—TECHNICAL

20 CORRECTIONS

21 SEC. 201. TECHNICAL CORRECTIONS TO TRADEMARK ACT

22 OF 1946.

23 (a) IN GENERAL.—The Act entitled ‘‘An Act to pro24 vide for the registration and protection of trademarks used

25 in commerce, to carry out the provisions of certain inter-
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1 national conventions, and for other purposes’’, approved

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

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

4 (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is

5 amended—

6 (A) by inserting ‘‘and,’’ after ‘‘specifying

7 the date of the applicant’s first use of the mark

8 in commerce’’; and

9 (B) by striking ‘‘and, the mode or manner

10 in which the mark is used on or in connection

11 with such goods or services’’.

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

13 (A) in subsection (e)—

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

15 after ‘‘them,’’; and

16 (ii) by inserting before the period at

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

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

19 and

20 (B) in subsection (f), by striking ‘‘para21 graphs (a), (b), (c), (d), and (e)(3)’’ and insert22 ing ‘‘subsections (a), (b), (c), (d), (e)(3), and

23 (e)(5)’’.
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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 14(3) (15 U.S.C. 1064(3)) is

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

6 has been abandoned’’.

7 (5) Section 23(c) (15 U.S.C. 1091(c)) is

8 amended by striking ‘‘or device’’ and inserting ‘‘, de9 vice, any matter that as a whole is not functional,’’.

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

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

12 (7) Section 31 (15 U.S.C. 1113) is amended—

13 (A) by striking—

14 ‘‘§ 31. Fees’’;

15 and

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

17 31. (a)’’.

18 (8) Section 32(1) (15 U.S.C. 1114(1)) is

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

20 and inserting ‘‘As used in this paragraph’’.

21 (9) Section 33(b) (15 U.S.C. 1115(b)) is

22 amended—

23 (A) by redesignating paragraph (8) as

24 paragraph (9); and
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1 (B) by inserting after paragraph (7) the

2 following:

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

4 (10) Section 39(a) (15 U.S.C. 1121(a)) is

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

6 ‘‘courts’’.

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

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

9 domestic’’.

10 (12) The Act is amended by striking ‘‘trade11 mark’’ each place it appears in the text and the title

12 and inserting ‘‘trademark’’.

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

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

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

16 proceeding before the United States Patent and Trade17 mark Office commenced on or after such date relating to

18 the registration of a mark.

19 TITLE III—MISCELLANEOUS

20 PROVISIONS

21 SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTIS22 ING OR PROMOTIONAL PURPOSES.

23 Section 14 of the Act entitled ‘‘An Act to provide for

24 the registration and protection of trademarks used in com25 merce, to carry out the provisions of certain international
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1 conventions, and for other purposes’’, approved July 5,

2 1946 (15 U.S.C. 1064) (commonly referred to as the

3 Trademark Act of 1946) is amended by adding at the end

4 the following: ‘‘Nothing in paragraph (5) shall be deemed

5 to prohibit the registrant from using its certification mark

6 in advertising or promoting recognition of the certification

7 program or of the goods or services meeting the certifi8 cation standards of the registrant. Such uses of the certifi9 cation mark shall not be grounds for cancellation under

10 paragraph (5), so long as the registrant does not itself

11 produce, manufacture, or sell any of the certified goods

12 or services to which its identical certification mark is ap13 plied.’’.

14 SEC. 302. OFFICIAL INSIGNIA OF NATIVE INDIAN TRIBES.

15 (a) IN GENERAL.—The Commissioner of Patents and

16 Trademarks shall study the issues surrounding the protec17 tion of the official insignia of federally and State recog18 nized Native American tribes. The study shall address at

19 least the following issues:

20 (1) The impact on Native American tribes,

21 trademark owners, the Patent and Trademark Of22 fice, any other interested party, or the international

23 legal obligations of the United States, of any change

24 in law or policy with respect to—
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1 (A) the prohibition of the Federal registra2 tion of trademarks identical to the official insig3 nia of Native American tribes;

4 (B) the prohibition of any new use of the

5 official insignia of Native American tribes; and

6 (C) appropriate defenses, including fair

7 use, to any claims of infringement.

8 (2) The means for establishing and maintaining

9 a listing of the official insignia of federally or State

10 recognized Native American tribes.

11 (3) An acceptable definition of the term ‘‘offi12 cial insignia’’ with respect to a federally or State

13 recognized Native American tribe.

14 (4) The administrative feasibility, including the

15 cost, of changing the current law or policy to—

16 (A) prohibit the registration, or prohibit

17 any new uses of the official insignia of State or

18 federally recognized Native American tribes; or

19 (B) otherwise give additional protection to

20 the official insignia of federally and State rec21 ognized Native American tribes.

22 (5) A determination of whether such protection

23 should be offered prospectively or retrospectively and

24 the impact of such protection.
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1 (6) Any statutory changes that would be nec2 essary in order to provide such protection.

3 (7) Any other factors which may be relevant.

4 (b) COMMENT AND REPORT.—

5 (1) COMMENT.—Not later than 60 days after

6 the date of enactment of this Act, the Commissioner

7 shall initiate a request for public comment on the

8 issues identified and studied by the Commissioner

9 under subsection (a) and invite comment on any ad10 ditional issues that are not included in such request.

11 During the course of the public comment period, the

12 Commissioner shall use any appropriate additional

13 measures, including field hearings, to obtain as wide

14 a range of views as possible from Native American

15 tribes, trademark owners, and other interested par16 ties.

17 (2) REPORT.—Not later than September 30,

18 1999, the Commissioner of Patents and Trademarks

19 shall complete the study under this section and sub20 mit a report including the findings and conclusions

21 of the study to the chairman of the Committee on

22 the Judiciary of the Senate and the chairman of the
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1 Committee on the Judiciary of the House of Rep2 resentatives.

Passed the Senate September 17, 1998.

Attest:

Secretary.
105TH CONGRESS

2D SESSION S. 2193

AN ACT

To implement the provisions of the Trademark Law

Treaty.
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