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[Congressional Bills 105th Congress]
[From the U.S. Government Publishing Office]
[S. 2193 Engrossed in Senate (ES)]

  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
  
105th CONGRESS
  2d Session
                                S. 2193

_______________________________________________________________________

                                 AN ACT

 
        To implement the provisions of the Trademark Law Treaty.

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

              TITLE I--TRADEMARK LAW TREATY IMPLEMENTATION

SEC. 101. SHORT TITLE.

    This title may be cited as the ``Trademark Law Treaty 
Implementation Act''.

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

    For purposes of this title, the Act entitled ``An Act to provide 
for the registration and protection of trademarks used in commerce, to 
carry out the provisions of certain international conventions, and for 
other purposes'', approved July 5, 1946 (15 U.S.C. 1051 et seq.), shall 
be referred to as the ``Trademark Act of 1946''.

SEC. 103. APPLICATION FOR REGISTRATION; VERIFICATION.

    (a) Application for Use of Trademark.--Section 1(a) of the 
Trademark Act of 1946 (15 U.S.C. 1051(a)) is amended to read as 
follows:
    ``Section 1. (a)(1) The owner of a trademark used in commerce may 
request registration of its trademark on the principal register hereby 
established by paying the prescribed fee and filing in the Patent and 
Trademark Office an application and a verified statement, in such form 
as may be prescribed by the Commissioner, and such number of specimens 
or facsimiles of the mark as used as may be required by the 
Commissioner.
    ``(2) The application shall include specification of the 
applicant's domicile and citizenship, the date of the applicant's first 
use of the mark, the date of the applicant's first use of the mark in 
commerce, the goods in connection with which the mark is used, and a 
drawing of the mark.
    ``(3) The statement shall be verified by the applicant and specify 
that--
            ``(A) the person making the verification believes that he 
        or she, or the juristic person in whose behalf he or she makes 
        the verification, to be the owner of the mark sought to be 
        registered;
            ``(B) to the best of the verifier's knowledge and belief, 
        the facts recited in the application are accurate;
            ``(C) the mark is in use in commerce; and
            ``(D) to the best of the verifier's knowledge and belief, 
        no other person has the right to use such mark in commerce 
        either in the identical form thereof or in such near 
        resemblance thereto as to be likely, when used on or in 
        connection with the goods of such other person, to cause 
        confusion, or to cause mistake, or to deceive, except that, in 
        the case of every application claiming concurrent use, the 
        applicant shall--
                    ``(i) state exceptions to the claim of exclusive 
                use; and
                    ``(ii) shall specify, to the extent of the 
                verifier's knowledge--
                            ``(I) any concurrent use by others;
                            ``(II) the goods on or in connection with 
                        which and the areas in which each concurrent 
                        use exists;
                            ``(III) the periods of each use; and
                            ``(IV) the goods and area for which the 
                        applicant desires registration.
    ``(4) The applicant shall comply with such rules or regulations as 
may be prescribed by the Commissioner. The Commissioner shall 
promulgate rules prescribing the requirements for the application and 
for obtaining a filing date herein.''.
    (b) Application for Bona Fide Intention To Use Trademark.--
Subsection (b) of section 1 of the Trademark Act of 1946 (15 U.S.C. 
1051(b)) is amended to read as follows:
    ``(b)(1) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a trademark 
in commerce may request registration of its trademark on the principal 
register hereby established by paying the prescribed fee and filing in 
the Patent and Trademark Office an application and a verified 
statement, in such form as may be prescribed by the Commissioner.
    ``(2) The application shall include specification of the 
applicant's domicile and citizenship, the goods in connection with 
which the applicant has a bona fide intention to use the mark, and a 
drawing of the mark.
    ``(3) The statement shall be verified by the applicant and 
specify--
            ``(A) that the person making the verification believes that 
        he or she, or the juristic person in whose behalf he or she 
        makes the verification, to be entitled to use the mark in 
        commerce;
            ``(B) the applicant's bona fide intention to use the mark 
        in commerce;
            ``(C) that, to the best of the verifier's knowledge and 
        belief, the facts recited in the application are accurate; and
            ``(D) that, to the best of the verifier's knowledge and 
        belief, no other person has the right to use such mark in 
        commerce either in the identical form thereof or in such near 
        resemblance thereto as to be likely, when used on or in 
        connection with the goods of such other person, to cause 
        confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 44, no mark shall be 
registered until the applicant has met the requirements of subsections 
(c) and (d) of this section.
    ``(4) The applicant shall comply with such rules or regulations as 
may be prescribed by the Commissioner. The Commissioner shall 
promulgate rules prescribing the requirements for the application and 
for obtaining a filing date herein.''.
    (c) Consequence of Delays.--Paragraph (4) of section 1(d) of the 
Trademark Act of 1946 (15 U.S.C. 1051(d)(4)) is amended to read as 
follows:
    ``(4) The failure to timely file a verified statement of use under 
paragraph (1) or an extension request under paragraph (2) shall result 
in abandonment of the application, unless it can be shown to the 
satisfaction of the Commissioner that the delay in responding was 
unintentional, in which case the time for filing may be extended, but 
for a period not to exceed the period specified in paragraphs (1) and 
(2) for filing a statement of use.''.

SEC. 104. REVIVAL OF ABANDONED APPLICATION.

    Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 1062(b)) is 
amended in the last sentence by striking ``unavoidable'' and by 
inserting ``unintentional''.

SEC. 105. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT OF 
              CONTINUED USE; NOTICE OF COMMISSIONER'S ACTION.

    Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is amended 
to read as follows:

                               ``duration

    ``Sec. 8. (a) Each registration shall remain in force for 10 years, 
except that the registration of any mark shall be canceled by the 
Commissioner for failure to comply with the provisions of subsection 
(b) of this section, upon the expiration of the following time periods, 
as applicable:
            ``(1) For registrations issued pursuant to the provisions 
        of this Act, at the end of 6 years following the date of 
        registration.
            ``(2) For registrations published under the provisions of 
        section 12(c), at the end of 6 years following the date of 
        publication under such section.
            ``(3) For all registrations, at the end of each successive 
        10-year period following the date of registration.
    ``(b) During the 1-year period immediately preceding the end of the 
applicable time period set forth in subsection (a), the owner of the 
registration shall pay the prescribed fee and file in the Patent and 
Trademark Office--
            ``(1) an affidavit setting forth those goods or services 
        recited in the registration on or in connection with which the 
        mark is in use in commerce and such number of specimens or 
        facsimiles showing current use of the mark as may be required 
        by the Commissioner; or
            ``(2) an affidavit setting forth those goods or services 
        recited in the registration on or in connection with which the 
        mark is not in use in commerce and showing that any such nonuse 
        is due to special circumstances which excuse such nonuse and is 
        not due to any intention to abandon the mark.
    ``(c)(1) The owner of the registration may make the submissions 
required under this section within a grace period of 6 months after the 
end of the applicable time period set forth in subsection (a). Such 
submission is required to be accompanied by a surcharge prescribed by 
the Commissioner.
    ``(2) If any submission filed under this section is deficient, the 
deficiency may be corrected after the statutory time period and within 
the time prescribed after notification of the deficiency. Such 
submission is required to be accompanied by a surcharge prescribed by 
the Commissioner.
    ``(d) Special notice of the requirement for affidavits under this 
section shall be attached to each certificate of registration and 
notice of publication under section 12(c).
    ``(e) The Commissioner shall notify any owner who files 1 of the 
affidavits required by this section of the Commissioner's acceptance or 
refusal thereof and, in the case of a refusal, the reasons therefor.
    ``(f) If the registrant is not domiciled in the United States, the 
registrant shall designate by a written document filed in the Patent 
and Trademark Office the name and address of some person resident in 
the United States on whom may be served notices or process in 
proceedings affecting the mark. Such notices or process may be served 
upon the person so designated by leaving with that person or mailing to 
that person a copy thereof at the address specified in the last 
designation so filed. If the person so designated cannot be found at 
the address given in the last designation, such notice or process may 
be served upon the Commissioner.''.

SEC. 106. RENEWAL OF REGISTRATION.

    Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended 
to read as follows:

                       ``renewal of registration

    ``Sec. 9. (a) Subject to the provisions of section 8, each 
registration may be renewed for periods of 10 years at the end of each 
successive 10-year period following the date of registration upon 
payment of the prescribed fee and the filing of a written application, 
in such form as may be prescribed by the Commissioner. Such application 
may be made at any time within 1 year before the end of each successive 
10-year period for which the registration was issued or renewed, or it 
may be made within a grace period of 6 months after the end of each 
successive 10-year period, upon payment of a fee and surcharge 
prescribed therefor. If any application filed under this section is 
deficient, the deficiency may be corrected within the time prescribed 
after notification of the deficiency, upon payment of a surcharge 
prescribed therefor.
    ``(b) If the Commissioner refuses to renew the registration, the 
Commissioner shall notify the registrant of the Commissioner's refusal 
and the reasons therefor.
    ``(c) If the registrant is not domiciled in the United States, the 
registrant shall designate by a written document filed in the Patent 
and Trademark Office the name and address of some person resident in 
the United States on whom may be served notices or process in 
proceedings affecting the mark. Such notices or process may be served 
upon the person so designated by leaving with that person or mailing to 
that person a copy thereof at the address specified in the last 
designation so filed. If the person so designated cannot be found at 
the address given in the last designation, such notice or process may 
be served upon the Commissioner.''.

SEC. 107. RECORDING ASSIGNMENT OF MARK.

    Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is amended 
to read as follows:

                              ``assignment

    ``Sec. 10. (a) A registered mark or a mark for which an application 
to register has been filed shall be assignable with the good will of 
the business in which the mark is used, or with that part of the good 
will of the business connected with the use of and symbolized by the 
mark. Notwithstanding the preceding sentence, no application to 
register a mark under section 1(b) shall be assignable prior to the 
filing of an amendment under section 1(c) to bring the application into 
conformity with section 1(a) or the filing of the verified statement of 
use under section 1(d), except for an assignment to a successor to the 
business of the applicant, or portion thereof, to which the mark 
pertains, if that business is ongoing and existing. In any assignment 
authorized by this section, it shall not be necessary to include the 
good will of the business connected with the use of and symbolized by 
any other mark used in the business or by the name or style under which 
the business is conducted. Assignments shall be by instruments in 
writing duly executed. Acknowledgment shall be prima facie evidence of 
the execution of an assignment, and when the prescribed information 
reporting the assignment is recorded in the Patent and Trademark 
Office, the record shall be prima facie evidence of execution. An 
assignment shall be void against any subsequent purchaser for valuable 
consideration without notice, unless the prescribed information 
reporting the assignment is recorded in the Patent and Trademark Office 
within 3 months after the date of the subsequent purchase or prior to 
the subsequent purchase. The Patent and Trademark Office shall maintain 
a record of information on assignments, in such form as may be 
prescribed by the Commissioner.
    ``(b) An assignee not domiciled in the United States shall 
designate by a written document filed in the Patent and Trademark 
Office the name and address of some person resident in the United 
States on whom may be served notices or process in proceedings 
affecting the mark. Such notices or process may be served upon the 
person so designated by leaving with that person or mailing to that 
person a copy thereof at the address specified in the last designation 
so filed. If the person so designated cannot be found at the address 
given in the last designation, such notice or process may be served 
upon the Commissioner.''.

SEC. 108. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REGISTRATION.

    Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is 
amended--
            (1) in subsection (d)--
                    (A) by striking ``23, or 44(e) of this Act'' and 
                inserting ``or 23 of this Act or under subsection (e) 
                of this section''; and
                    (B) in paragraphs (3) and (4) by striking ``this 
                subsection (d)'' and inserting ``this subsection''; and
            (2) in subsection (e), by striking the second sentence and 
        inserting the following: ``Such applicant shall submit, within 
        such time period as may be prescribed by the Commissioner, a 
        certification or a certified copy of the registration in the 
        country of origin of the applicant.''.

SEC. 109. TRANSITION PROVISIONS.

    (a) Registrations in 20-Year Term.--The provisions of section 8 of 
the Trademark Act of 1946, as amended by section 105 of this Act, shall 
apply to a registration for trademark issued or renewed for a 20-year 
term, if the expiration date of the registration is on or after the 
effective date of this Act.
    (b) Applications for Registration.--This title and the amendments 
made by this title shall apply to any application for registration of a 
trademark pending on, or filed on or after, the effective date of this 
Act.
    (c) Affidavits.--The provisions of section 8 of the Trademark Act 
of 1946, as amended by section 105 of this Act, shall apply to the 
filing of an affidavit if the sixth or tenth anniversary of the 
registration, or the sixth anniversary of publication of the 
registration under section 12(c) of the Trademark Act of 1946, for 
which the affidavit is filed is on or after the effective date of this 
Act.
    (d) Renewal Applications.--The amendment made by section 106 shall 
apply to the filing of an application for renewal of a registration if 
the expiration date of the registration for which the renewal 
application is filed is on or after the effective date of this Act.

SEC. 110. EFFECTIVE DATE.

    This title and the amendments made by this title shall take 
effect--
            (1) on the date that is 1 year after the date of the 
        enactment of this Act, or
            (2) upon the entry into force of the Trademark Law Treaty 
        with respect to the United States,
whichever occurs first.

                    TITLE II--TECHNICAL CORRECTIONS

SEC. 201. TECHNICAL CORRECTIONS TO TRADEMARK ACT OF 1946.

    (a) In General.--The Act entitled ``An Act to provide for the 
registration and protection of trademarks used in commerce, to carry 
out the provisions of certain international conventions, and for other 
purposes'', approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly 
referred to as the Trademark Act of 1946), is amended as follows:
            (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended--
                    (A) by inserting ``and,'' after ``specifying the 
                date of the applicant's first use of the mark in 
                commerce''; and
                    (B) by striking ``and, the mode or manner in which 
                the mark is used on or in connection with such goods or 
                services''.
            (2) Section 2 (15 U.S.C. 1052) is amended--
                    (A) in subsection (e)--
                            (i) in paragraph (3) by striking ``or'' 
                        after ``them,''; and
                            (ii) by inserting before the period at the 
                        end the following: ``, or (5) comprises any 
                        matter that, as a whole, is functional''; and
                    (B) in subsection (f), by striking ``paragraphs 
                (a), (b), (c), (d), and (e)(3)'' and inserting 
                ``subsections (a), (b), (c), (d), (e)(3), and (e)(5)''.
            (3) Section 7(a) (15 U.S.C. 1057(a)) is amended in the 
        first sentence by striking the second period at the end.
            (4) Section 14(3) (15 U.S.C. 1064(3)) is amended by 
        inserting ``or is functional,'' before ``or has been 
        abandoned''.
            (5) Section 23(c) (15 U.S.C. 1091(c)) is amended by 
        striking ``or device'' and inserting ``, device, any matter 
        that as a whole is not functional,''.
            (6) Section 26 (15 U.S.C. 1094) is amended by striking 
        ``7(c),,'' and inserting ``, 7(c),''.
            (7) Section 31 (15 U.S.C. 1113) is amended--
                    (A) by striking--
``Sec. 31. Fees'';
                and
                    (B) by striking ``(a)'' and inserting ``Sec. 31. 
                (a)''.
            (8) Section 32(1) (15 U.S.C. 1114(1)) is amended by 
        striking ``As used in this subsection'' and inserting ``As used 
        in this paragraph''.
            (9) Section 33(b) (15 U.S.C. 1115(b)) is amended--
                    (A) by redesignating paragraph (8) as paragraph 
                (9); and
                    (B) by inserting after paragraph (7) the following:
            ``(8) That the mark is functional; or''.
            (10) Section 39(a) (15 U.S.C. 1121(a)) is amended by 
        striking ``circuit courts'' and inserting ``courts''.
            (11) Section 42 (15 U.S.C. 1124) is amended by striking 
        ``the any domestic'' and inserting ``any domestic''.
            (12) The Act is amended by striking ``trade-mark'' each 
        place it appears in the text and the title and inserting 
        ``trademark''.
    (b) Effective Date.--The amendments made by this section shall take 
effect on the date of enactment of this Act, and shall apply only to 
any civil action filed or proceeding before the United States Patent 
and Trademark Office commenced on or after such date relating to the 
registration of a mark.

                  TITLE III--MISCELLANEOUS PROVISIONS

SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTISING OR PROMOTIONAL 
              PURPOSES.

    Section 14 of the Act entitled ``An Act to provide for the 
registration and protection of trademarks used in commerce, to carry 
out the provisions of certain international conventions, and for other 
purposes'', approved July 5, 1946 (15 U.S.C. 1064) (commonly referred 
to as the Trademark Act of 1946) is amended by adding at the end the 
following: ``Nothing in paragraph (5) shall be deemed to prohibit the 
registrant from using its certification mark in advertising or 
promoting recognition of the certification program or of the goods or 
services meeting the certification standards of the registrant. Such 
uses of the certification mark shall not be grounds for cancellation 
under paragraph (5), so long as the registrant does not itself produce, 
manufacture, or sell any of the certified goods or services to which 
its identical certification mark is applied.''.

SEC. 302. OFFICIAL INSIGNIA OF NATIVE INDIAN TRIBES.

    (a) In General.--The Commissioner of Patents and Trademarks shall 
study the issues surrounding the protection of the official insignia of 
federally and State recognized Native American tribes. The study shall 
address at least the following issues:
            (1) The impact on Native American tribes, trademark owners, 
        the Patent and Trademark Office, any other interested party, or 
        the international legal obligations of the United States, of 
        any change in law or policy with respect to--
                    (A) the prohibition of the Federal registration of 
                trademarks identical to the official insignia of Native 
                American tribes;
                    (B) the prohibition of any new use of the official 
                insignia of Native American tribes; and
                    (C) appropriate defenses, including fair use, to 
                any claims of infringement.
            (2) The means for establishing and maintaining a listing of 
        the official insignia of federally or State recognized Native 
        American tribes.
            (3) An acceptable definition of the term ``official 
        insignia'' with respect to a federally or State recognized 
        Native American tribe.
            (4) The administrative feasibility, including the cost, of 
        changing the current law or policy to--
                    (A) prohibit the registration, or prohibit any new 
                uses of the official insignia of State or federally 
                recognized Native American tribes; or
                    (B) otherwise give additional protection to the 
                official insignia of federally and State recognized 
                Native American tribes.
            (5) A determination of whether such protection should be 
        offered prospectively or retrospectively and the impact of such 
        protection.
            (6) Any statutory changes that would be necessary in order 
        to provide such protection.
            (7) Any other factors which may be relevant.
    (b) Comment and Report.--
            (1) Comment.--Not later than 60 days after the date of 
        enactment of this Act, the Commissioner shall initiate a 
        request for public comment on the issues identified and studied 
        by the Commissioner under subsection (a) and invite comment on 
        any additional issues that are not included in such request. 
        During the course of the public comment period, the 
        Commissioner shall use any appropriate additional measures, 
        including field hearings, to obtain as wide a range of views as 
        possible from Native American tribes, trademark owners, and 
        other interested parties.
            (2) Report.--Not later than September 30, 1999, the 
        Commissioner of Patents and Trademarks shall complete the study 
        under this section and submit a report including the findings 
        and conclusions of the study to the chairman of the Committee 
        on the Judiciary of the Senate and the chairman of the 
        Committee on the Judiciary of the House of Representatives.

            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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