II

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

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

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’’.
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1 SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.

2 (a) APPLICATION FOR USE OF TRADEMARK.—Sec3 tion 1(a) of the Trademark Act of 1946 (15 U.S.C.

4 1051(a)) is amended to read as follows:

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

6 in commerce may request registration of its trademark on

7 the principal register hereby established by paying the pre8 scribed fee and filing in the Patent and Trademark Office

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

10 may be prescribed by the Commissioner, and such number

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

12 be required by the Commissioner.

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

14 applicant’s domicile and citizenship, the date of the appli15 cant’s first use of the mark, the date of the applicant’s

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

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

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

19 and specify that—

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

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

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

23 the mark sought to be registered;

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

25 belief, the facts recited in the application are accu26 rate;
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1 ‘‘(C) the mark is in use in commerce; and

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

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

4 mark in commerce either in the identical form there5 of or in such near resemblance thereto as to be like6 ly, when used on or in connection with the goods of

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

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

9 every application claiming concurrent use, the appli10 cant shall—

11 ‘‘(i) state exceptions to the claim of exclu12 sive use; and

13 ‘‘(ii) shall specify, to the extent of the ver14 ifier’s knowledge—

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

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

17 with which and the areas in which each

18 concurrent use exists;

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

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

21 the applicant desires registration.

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

23 regulations as may be prescribed by the Commissioner.

24 The Commissioner shall promulgate rules prescribing the
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1 requirements for the application and for obtaining a filing

2 date herein.’’.

3 (b) APPLICATION FOR BONA FIDE INTENTION TO

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

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

6 to read as follows:

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

8 under circumstances showing the good faith of such per9 son, to use a trademark in commerce may request reg10 istration of its trademark on the principal register hereby

11 established by paying the prescribed fee and filing in the

12 Patent and Trademark Office an application and a verified

13 statement, in such form as may be prescribed by the Com14 missioner.

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

16 applicant’s domicile and citizenship, the goods in connec17 tion with which the applicant has a bona fide intention

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

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

20 and specify—

21 ‘‘(A) that the person making the verification be22 lieves that he or she, or the juristic person in whose

23 behalf he or she makes the verification, to be enti24 tled to use the mark in commerce;
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1 ‘‘(B) the applicant’s bona fide intention to use

2 the mark in commerce;

3 ‘‘(C) that, to the best of the verifier’s knowl4 edge and belief, the facts recited in the application

5 are accurate; and

6 ‘‘(D) that, to the best of the verifier’s knowl7 edge and belief, no other person has the right to use

8 such mark in commerce either in the identical form

9 thereof or in such near resemblance thereto as to be

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

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

12 mistake, or to deceive.

13 Except for applications filed pursuant to section 44, no

14 mark shall be registered until the applicant has met the

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

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

17 regulations as may be prescribed by the Commissioner.

18 The Commissioner shall promulgate rules prescribing the

19 requirements for the application and for obtaining a filing

20 date herein.’’.

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

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

23 1051(d)(4)) is amended to read as follows:

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

25 of use under paragraph (1) or an extension request under
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1 paragraph (2) shall result in abandonment of the applica2 tion, unless it can be shown to the satisfaction of the Com3 missioner that the delay in responding was unintentional,

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

5 a period not to exceed the period specified in paragraphs

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

7 SEC. 4. REVIVAL OF ABANDONED APPLICATION.

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

9 U.S.C. 1062(b)) is amended in the last sentence by strik10 ing ‘‘unavoidable’’ and by inserting ‘‘unintentional’’.

11 SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AF12 FIDAVIT OF CONTINUED USE; NOTICE OF

13 COMMISSIONER’S ACTION.

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

15 1058) is amended to read as follows:

16 ‘‘DURATION

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

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

19 be canceled by the Commissioner for failure to comply

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

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

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

23 provisions of this Act, at the end of 6 years follow24 ing the date of registration.
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1 ‘‘(2) For registrations published under the pro2 visions of section 12(c), at the end of 6 years follow3 ing the date of publication under such section.

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

5 successive 10-year period following the date of reg6 istration.

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

8 the end of the applicable time period set forth in sub9 section (a), the owner of the registration shall pay the pre10 scribed fee and file in the Patent and Trademark Office—

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

12 services recited in the registration on or in connec13 tion with which the mark is in use in commerce and

14 such number of specimens or facsimiles showing cur15 rent use of the mark as may be required by the

16 Commissioner; or

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

18 services recited in the registration on or in connec19 tion with which the mark is not in use in commerce

20 and showing that any such nonuse is due to special

21 circumstances which excuse such nonuse and is not

22 due to any intention to abandon the mark.

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

24 submissions required under this section within a grace pe25 riod of 6 months after the end of the applicable time pe-
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1 riod set forth in subsection (a). Such submission is re2 quired to be accompanied by a surcharge prescribed by

3 the Commissioner.

4 ‘‘(2) If any submission filed under this section is defi5 cient, the deficiency may be corrected after the statutory

6 time period and within the time prescribed after notifica7 tion of the deficiency. Such submission is required to be

8 accompanied by a surcharge prescribed by the Commis9 sioner.

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

11 under this section shall be attached to each certificate of

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

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

14 files 1 of the affidavits required by this section of the Com15 missioner’s acceptance or refusal thereof and, in the case

16 of a refusal, the reasons therefor.

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

18 States, the registrant shall designate by a written docu19 ment filed in the Patent and Trademark Office the name

20 and address of some person resident in the United States

21 on whom may be served notices or process in proceedings

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

23 upon the person so designated by leaving with that person

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

25 specified in the last designation so filed. If the person so
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1 designated cannot be found at the address given in the

2 last designation, such notice or process may be served

3 upon the Commissioner.’’.

4 SEC. 6. RENEWAL OF REGISTRATION.

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

6 1059) is amended to read as follows:

7 ‘‘RENEWAL OF REGISTRATION

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

9 each registration may be renewed for periods of 10 years

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

11 date of registration upon payment of the prescribed fee

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

13 may be prescribed by the Commissioner. Such application

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

15 of each successive 10-year period for which the registra16 tion was issued or renewed, or it may be made within a

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

18 10-year period, upon payment of a fee and surcharge pre19 scribed therefor. If any application filed under this section

20 is deficient, the deficiency may be corrected within the

21 time prescribed after notification of the deficiency, upon

22 payment of a surcharge prescribed therefor.

23 ‘‘(b) If the Commissioner refuses to renew the reg24 istration, the Commissioner shall notify the registrant of

25 the Commissioner’s refusal and the reasons therefor.
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1 ‘‘(c) If the registrant is not domiciled in the United

2 States, the registrant shall designate by a written docu3 ment filed in the Patent and Trademark Office the name

4 and address of some person resident in the United States

5 on whom may be served notices or process in proceedings

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

7 upon the person so designated by leaving with that person

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

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

10 designated cannot be found at the address given in the

11 last designation, such notice or process may be served

12 upon the Commissioner.’’.

13 SEC. 7. RECORDING ASSIGNMENT OF MARK.

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

15 1060) is amended to read as follows:

16 ‘‘ASSIGNMENT

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

18 an application to register has been filed shall be assignable

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

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

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

22 Notwithstanding the preceding sentence, no application to

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

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

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

26 or the filing of the verified statement of use under section
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1 1(d), except for an assignment to a successor to the busi2 ness of the applicant, or portion thereof, to which the

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

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

5 be necessary to include the good will of the business con6 nected with the use of and symbolized by any other mark

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

8 the business is conducted. Assignments shall be by instru9 ments in writing duly executed. Acknowledgment shall be

10 prima facie evidence of the execution of an assignment,

11 and when the prescribed information reporting the assign12 ment is recorded in the Patent and Trademark Office, the

13 record shall be prima facie evidence of execution. An as14 signment shall be void against any subsequent purchaser

15 for valuable consideration without notice, unless the pre16 scribed information reporting the assignment is recorded

17 in the Patent and Trademark Office within 3 months after

18 the date of the subsequent purchase or prior to the subse19 quent purchase. The Patent and Trademark Office shall

20 maintain a record of information on assignments, in such

21 form as may be prescribed by the Commissioner.

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

23 shall designate by a written document filed in the Patent

24 and Trademark Office the name and address of some per25 son resident in the United States on whom may be served
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1 notices or process in proceedings affecting the mark. Such

2 notices or process may be served upon the person so des3 ignated by leaving with that person or mailing to that per4 son a copy thereof at the address specified in the last des5 ignation so filed. If the person so designated cannot be

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

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

8 SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN

9 REGISTRATION.

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

11 1126) is amended—

12 (1) in subsection (d)—

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

14 and inserting ‘‘or 23 of this Act or under sub15 section (e) of this section’’; and

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

17 ‘‘this subsection (d)’’ and inserting ‘‘this sub18 section’’; and

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

20 sentence and inserting the following: ‘‘Such appli21 cant shall submit, within such time period as may be

22 prescribed by the Commissioner, a certification or a

23 certified copy of the registration in the country of

24 origin of the applicant.’’.
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1 SEC. 9. TRANSITION PROVISIONS.

2 (a) REGISTRATIONS IN 20-YEAR TERM.—The provi3 sions of section 8 of the Trademark Act of 1946, as

4 amended by section 5 of this Act, shall apply to a registra5 tion for trademark issued or renewed for a 20-year term,

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

7 effective date of this Act.

8 (b) APPLICATIONS FOR REGISTRATION.—This Act

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

10 application for registration of a trademark pending on, or

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

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

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

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

15 or tenth anniversary of the registration, or the sixth anni16 versary of publication of the registration under section

17 12(c) of the Trademark Act of 1946, for which the affida18 vit is filed is on or after the effective date of this Act.

19 (d) RENEWAL APPLICATIONS.—The amendment

20 made by section 6 shall apply to the filing of an applica21 tion for renewal of a registration if the expiration date

22 of the registration for which the renewal application is

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

24 SEC. 10. EFFECTIVE DATE.

25 This Act and the amendments made by this Act shall

26 take effect—
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1 (1) on the date that is 1 year after the date of

2 the enactment of this Act, or

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

4 Law Treaty with respect to the United States,

5 whichever occurs first.

Æ