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[Congressional Bills 108th Congress]
[From the U.S. Government Publishing Office]
[S. 2002 Introduced in Senate (IS)]

108th CONGRESS
  1st Session
                                S. 2002

   To improve and promote compliance with international intellectual 
 property obligations relating to the Republic of Cuba, and for other 
                               purposes.

_______________________________________________________________________

                   IN THE SENATE OF THE UNITED STATES

                            December 9, 2003

 Mr. Baucus (for himself and Mr. Craig) introduced the following bill; 
  which was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL

 
   To improve and promote compliance with international intellectual 
 property obligations relating to the Republic of Cuba, and for other 
                               purposes.

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

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``United States-Cuba Trademark 
Protection Act of 2003''.

SEC. 2. FINDINGS AND PURPOSE.

    (a) Findings.--Congress makes the following findings:
            (1) Trademarks and trade names are vital assets of the many 
        United States companies that engage in international trade.
            (2) Worldwide sales of branded products of United States 
        companies contribute in important ways to the livelihood of 
        American workers and the well-being and continued healthy 
        growth of numerous United States businesses. These sales 
        depend, in turn, on the security of the United States 
        trademarks and trade names protected by reciprocal treaties and 
        agreements for the protection of intellectual property.
            (3) Among such treaties and agreements are the Agreement on 
        Trade-Related Aspects of Intellectual Property Rights (TRIPS) 
        of the World Trade Organization, the Inter-American Convention 
        for Trademark and Commercial Protection, and the Madrid 
        Protocol.
            (4) The United States should ensure that the trademark and 
        trade names of United States companies continue to be protected 
        abroad by working to ensure that countries comply with 
        intellectual property rights treaties and agreements. At the 
        same time, the United States should adhere to its obligations 
        under such treaties and agreements.
            (5) Hundreds of United States companies have registered 
        their trademarks in Cuba in order to ensure the exclusive right 
        to use those trademarks when the United States trade embargo on 
        that country is lifted. Indeed, following the enactment of the 
        Trade Sanctions Reform and Export Enhancement Act of 2000, many 
        United States companies are already exporting branded food 
        products to Cuba.
            (6) The United States District Court for the Southern 
        District of New York ruled that section 211 of the Department 
        of Commerce and Related Agencies Appropriations Act, 1999 
        abrogates, with respect to Cuba, the Inter-American Convention 
        on Trademarks and Commercial Protection, and the court's ruling 
        was affirmed by the United States Court of Appeals for the 
        Second Circuit.
            (7) Cuba's international remedy under customary 
        international law, as codified by Article 60 of the 1969 Vienna 
        Convention on Treaties, for a breach by the United States of 
        the Inter-American Convention, is to suspend or revoke the 
        protections Cuba currently affords United States trademarks and 
        trade names.
            (8) In order to preserve the rights of United States 
        nationals holding trademarks in Cuba, the United States must 
        repeal section 211 of the Department of Commerce and Related 
        Agencies Appropriations Act, 1999, and should take the 
        necessary steps to promote the long-term protection of 
        trademarks, trade names, and domain names held by United States 
        nationals in that country.
            (9) The recent actions by the Government of Cuba to 
        prosecute and imprison unfairly critics of the government are 
        unacceptable and should be met with strong condemnation.
            (10) Promoting greater respect for the rule of law in Cuba, 
        including through the provisions of this Act, will it is hoped 
        diminish the likelihood for actions taken in the future that 
        undermine operation of the rule of law or disregard fundamental 
        fairness in administrative and juridical proceedings.
    (b) Purpose.--The purpose of this Act is to promote global 
intellectual property rights protections by ensuring that the United 
States and the Republic of Cuba continue to comply with their 
obligations under international trademark agreements and 
understandings.

SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS AND UNDERSTANDINGS.

    (a) Consultations With Cuba.--The President shall direct the 
Secretary of State to initiate consultations with the Republic of Cuba 
not later than December 31, 2003, in order to obtain assurances that 
the Republic of Cuba will--
            (1) continue to adhere to--
                    (A) the Paris Convention for the Protection of 
                Industrial Property;
                    (B) the Inter-American Convention for Trademark and 
                Commercial Protection; and
                    (C) the Madrid Agreement Concerning the 
                International Registration of Marks and Protocol 
                Relating to the Madrid Agreement Concerning the 
                International Registration of Marks;
            (2) implement the Joint Recommendation Concerning 
        Provisions on the Protection of Well-Known Marks adopted by the 
        General Assembly of the World Intellectual Property 
        Organization (Pub 833 E) in September 1999; and
            (3) commit that the manager of the Country-Code Top-Level 
        Domain (ccTLD) will subscribe to the Uniform Dispute Resolution 
        Procedure (UDRP) approved by the Internet Corporation for 
        Assigned Names and Numbers (ICANN) and provide to United States 
        nationals nondiscriminatory access to such procedures.
    (b) Consultation With Secretary of Commerce.--The Secretary of 
State shall initiate and conduct the consultations under subsection (a) 
in consultation with the Secretary of Commerce.
    (c) Reports to Congress.--The Secretary of State and the Secretary 
of Commerce shall submit to the Congress a report on the progress and 
results of the consultations under subsection (a) not later than 6 
months after the date of the enactment of this Act and not later than 
every 6 months thereafter.
    (d) Repeal of Prohibition on Transactions or Payments With Respect 
to Certain United States Intellectual Property.--
            (1) Repeal.--Section 211 of the Department of Commerce and 
        Related Agencies Appropriations Act, 1999 (as contained in 
        section 101(b) of division A of Public Law 105-277; 112 Stat. 
        2681-88) is repealed.
            (2) Regulations.--The Secretary of the Treasury shall issue 
        such regulations as are necessary to carry out the repeal made 
        by paragraph (1), including removing any prohibition on 
        transactions or payments to which subsection (a)(1) of section 
        211 of the Department of Commerce and Related Agencies 
        Appropriations Act, 1999 applied.

SEC. 4. REGISTRY OF U.S. TRADEMARKS AND WELL-KNOWN MARKS IN CUBA.

    (a) Registry of U.S. Trademarks.--Not later than December 31, 2003, 
the Director of the Patent and Trademark Office shall establish a 
registry of trademarks each of which is owned by a United States 
national and was registered in, or submitted for registration to, the 
Republic of Cuba on or after January 1, 1959.
    (b)  Registry of well-known marks.--
            (1) Establishment.--Not later than December 31, 2003, the 
        Director of the Patent and Trademark Office shall establish a 
        registry of trademarks each of which is owned by a United 
        States national and met the requirements for a well-known mark 
        in the Republic of Cuba under Article 6bis of the Paris 
        Convention for the Protection of Industrial Property as of 
        December 31, 1958, and the Joint Recommendation Concerning 
        Provisions on the Protection of Well-Known Marks adopted by the 
        General Assembly of the World Intellectual Property Association 
        (Pub 833 E) in September 1999.
            (2) Requirements for inclusion on registry.--The Director 
        of the Patent and Trademark Office shall require any applicant 
        seeking to register a well-known mark on the registry 
        established under paragraph (1) to supply documentation to 
        establish that the mark met the requirements set forth in 
        paragraph (1).
    (c) Accessibility.--The Director of the Patent and Trademark Office 
shall ensure that each registry established under subsections (a) and 
(b)--
            (1) is accessible to the public through the Internet;
            (2) allows trademark examiners and applicants seeking to 
        register trademarks on the registry to send and receive 
        communications electronically;
            (3) allows the United States Patent and Trademark Office to 
        process, maintain, and search electronically the contents and 
        history of each application to register a trademark, and 
        trademark registration, included in the registry; and
            (4) allows the public to access and search electronically 
        the contents and history of each such application and trademark 
        registration.

SEC. 5. AMENDMENTS TO CUBAN ASSET CONTROL REGULATIONS.

    The Secretary of the Treasury shall amend the Cuban Assets Control 
Regulations (part 515 of title 31, Code of Federal Regulations) so 
that--
            (1) the following transactions by any person who is not a 
        designated national are authorized:
                    (A) the filing and renewal of a blocked foreign 
                domain name, the transfer or receipt of a blocked 
                foreign domain name, and the filing and prosecution of 
                proceedings to determine rights to a blocked foreign 
                domain name and the prosecution of defenses to such 
                proceedings; and
                    (B) the filing and renewal of a blocked foreign 
                trade name, the transfer or receipt of a blocked 
                foreign trade name, and the filing and prosecution of 
                proceedings related to a blocked foreign trade name and 
                the prosecution of defenses to such proceedings;
            (2)(A) the transfer or receipt of any trademark, trade 
        name, or domain name subject to United States law in which a 
        designated national has an interest is authorized; and
            (B) the filing and prosecution of opposition and 
        infringement proceedings related to any trademark or trade name 
        in which a designated national has an interest, the filing and 
        prosecution of proceedings to determine rights to any domain 
        name in which a designated national has an interest, and the 
        prosecution of defenses to such proceedings, are authorized; 
        and
            (3) the payment of fees to the government of any foreign 
        country, either directly or through an attorney or 
        representative, is authorized for research of registries, 
        directories, and government records with respect to blocked 
        foreign trademarks, blocked foreign trade names, or blocked 
        foreign domain names, and the protection and enforcement 
        thereof.

SEC. 6. CONFORMING AMENDMENTS.

    (a) International Conventions.--Section 44 of the Trademark Act of 
1946 (15 U.S.C. 1126) is amended by adding at the end the following:
    ``(j)(1) Any designated national shall be entitled to the benefits 
of this Act to the extent necessary to give effect to any provision of 
any convention or treaty relating to trade or commercial names, or 
relating to the repression of unfair competition, to which the United 
States and the Republic of Cuba are parties, or to any reciprocal 
rights relating to trade or commercial names or the repression of 
unfair competition, that are extended by the Republic of Cuba to 
nationals of the United States by law. The absence of commercial 
activities within the United States shall not constitute a lack of 
standing or any other reason for the dismissal of any action brought by 
any such designated national pursuant to this subsection.
    ``(2) No other provision of this section shall be construed to 
limit the applicability of paragraph (1).
    ``(3) As used in this subsection, the term `designated national' 
has the meaning given that term in subpart C of part 515 of title 31, 
Code of Federal Regulations, as in effect on April 28, 2003, and 
includes any national of a foreign country that is a successor-in-
interest to that designated national.''.
    (b) Civil Actions.--Section 43(a) of the Trademark Act of 1946 (15 
U.S.C. 1125(a)) is amended by adding at the end the following:
    ``(4)(A) For purposes of this subsection, any person who is engaged 
in the bona fide production, distribution, marketing, or sale of 
spirits outside the United States and who lawfully uses a mark or 
geographical indication in connection with such spirits shall be 
considered to be or likely to be damaged by a mark or geographical 
indication--
            ``(i) which, when used on or in connection with other 
        spirits, identifies a place other than origin of such other 
        spirits; and
            ``(ii) of which the first use in commerce on or in 
        connection with such other spirits was made on or after one 
        year after the date on which the WTO Agreement (as defined in 
        section 2(9) of the Uruguay Round Agreements Act) entered into 
        force with respect to the United States.
The preceding sentence shall also apply to any person in any proceeding 
under section 13 or 14 of this Act.
    ``(B) As used in this paragraph, the term `spirits' means any 
article provided for in heading 2207 or 2208 of the Harmonized Tariff 
Schedule of the United States.''.

SEC. 7. AUTHORITY OF COURTS.

    United States courts shall have the authority to recognize, 
enforce, or otherwise validate any assertion by a designated national 
of rights in any mark or trade name based on common law rights or 
registration or under subsection (b) or (e) of section 44 of the 
Trademark Act of 1946. In this subsection, the term ``designated 
national'' includes any national of a foreign country that is a 
successor-in-interest to that designated national.

SEC. 8. DEFINITIONS.

    In this Act:
            (1) Blocked foreign domain name.--The term ``blocked 
        foreign domain name'' means a domain name in which a designated 
        national has an interest, including any domain name issued by a 
        designated national.
            (2) Blocked foreign trade name.--The term ``blocked foreign 
        trade name'' means any trade name in which a designated 
        national has an interest, including any such trade name issued 
        by a designated national.
            (3) Blocked foreign trademark.--The term ``blocked foreign 
        trademark'' has the meaning given that term in section 
        515.528(c) of title 31, Code of Federal Regulations, as in 
        effect on April 28, 2003.
            (4) Designated national.--The term ``designated national'' 
        has the meaning given that term in subpart C of part 515 of 
        title 31, Code of Federal Regulations, as in effect on April 
        28, 2003.
            (5) Director of the patent and trademark office.--The term 
        ``Director of the Patent and Trademark Office'' means the Under 
        Secretary of Commerce for Intellectual Property and Director of 
        the United States Patent and Trademark Office.
            (6) Domain name; mark; trademark.--The terms ``domain 
        name'', ``mark'', and ``trademark'' have the meanings given 
        those terms in section 45 of the Trademark Act of 1946.
            (7) Interest.--The term ``interest'' has the meaning given 
        that term in section 515.312 of title 31, Code of Federal 
        Regulations, as in effect on April 28, 2003.
            (8) Trademark act of 1946.--The term ``Trademark Act of 
        1946'' means 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.).
            (9) Trade name.--The term ``trade name'' means a trade name 
        or commercial name as those terms are defined in section 45 of 
        the Trademark Act of 1946.
            (10) United states national.--The term ``United States 
        national'' means--
                    (A) any United States citizen; or
                    (B) any other legal entity which is organized under 
                the laws of the United States, or of any State, the 
                District of Columbia, or any commonwealth, territory, 
                or possession of the United States, and which has its 
                principal place of business in the United States.
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