S. 2193

One Hundred Fifth Congress

of the

United States of America

AT THE SECOND SESSION

Begun and held at the City of Washington on Tuesday,

the twenty-seventh day of January, one thousand nine hundred and ninety-eight

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;
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‘‘(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
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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.
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‘‘(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.’’.
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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,
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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
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(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—

‘‘§ 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
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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.
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(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.

Speaker of the House of Representatives.

Vice President of the United States and

President of the Senate.