II 

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.

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 ‘‘United States-Cuba 

5 Trademark Protection Act of 2003’’. 

6 SEC. 2. FINDINGS AND PURPOSE. 

7 (a) FINDINGS.—Congress makes the following find8 ings: 
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1 (1) Trademarks and trade names are vital as2 sets of the many United States companies that en3 gage in international trade. 

4 (2) Worldwide sales of branded products of 

5 United States companies contribute in important 

6 ways to the livelihood of American workers and the 

7 well-being and continued healthy growth of numer8 ous United States businesses. These sales depend, in 

9 turn, on the security of the United States trade10 marks and trade names protected by reciprocal trea11 ties and agreements for the protection of intellectual 

12 property. 

13 (3) Among such treaties and agreements are 

14 the Agreement on Trade-Related Aspects of Intellec15 tual Property Rights (TRIPS) of the World Trade 

16 Organization, the Inter-American Convention for 

17 Trademark and Commercial Protection, and the Ma18 drid Protocol. 

19 (4) The United States should ensure that the 

20 trademark and trade names of United States compa21 nies continue to be protected abroad by working to 

22 ensure that countries comply with intellectual prop23 erty rights treaties and agreements. At the same 

24 time, the United States should adhere to its obliga25 tions under such treaties and agreements. 
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1 (5) Hundreds of United States companies have 

2 registered their trademarks in Cuba in order to en3 sure the exclusive right to use those trademarks 

4 when the United States trade embargo on that coun5 try is lifted. Indeed, following the enactment of the 

6 Trade Sanctions Reform and Export Enhancement 

7 Act of 2000, many United States companies are al8 ready exporting branded food products to Cuba. 

9 (6) The United States District Court for the 

10 Southern District of New York ruled that section 

11 211 of the Department of Commerce and Related 

12 Agencies Appropriations Act, 1999 abrogates, with 

13 respect to Cuba, the Inter-American Convention on 

14 Trademarks and Commercial Protection, and the 

15 court’s ruling was affirmed by the United States 

16 Court of Appeals for the Second Circuit. 

17 (7) Cuba’s international remedy under cus18 tomary international law, as codified by Article 60 of 

19 the 1969 Vienna Convention on Treaties, for a 

20 breach by the United States of the Inter-American 

21 Convention, is to suspend or revoke the protections 

22 Cuba currently affords United States trademarks 

23 and trade names. 

24 (8) In order to preserve the rights of United 

25 States nationals holding trademarks in Cuba, the 
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1 United States must repeal section 211 of the De2 partment of Commerce and Related Agencies Appro3 priations Act, 1999, and should take the necessary 

4 steps to promote the long-term protection of trade5 marks, trade names, and domain names held by 

6 United States nationals in that country. 

7 (9) The recent actions by the Government of 

8 Cuba to prosecute and imprison unfairly critics of 

9 the government are unacceptable and should be met 

10 with strong condemnation. 

11 (10) Promoting greater respect for the rule of 

12 law in Cuba, including through the provisions of this 

13 Act, will it is hoped diminish the likelihood for ac14 tions taken in the future that undermine operation 

15 of the rule of law or disregard fundamental fairness 

16 in administrative and juridical proceedings. 

17 (b) PURPOSE.—The purpose of this Act is to promote 

18 global intellectual property rights protections by ensuring 

19 that the United States and the Republic of Cuba continue 

20 to comply with their obligations under international trade21 mark agreements and understandings. 

22 SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS 

23 AND UNDERSTANDINGS. 

24 (a) CONSULTATIONS WITH CUBA.—The President 

25 shall direct the Secretary of State to initiate consultations 
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1 with the Republic of Cuba not later than December 31, 

2 2003, in order to obtain assurances that the Republic of 

3 Cuba will—

4 (1) continue to adhere to—

5 (A) the Paris Convention for the Protec6 tion of Industrial Property; 

7 (B) the Inter-American Convention for 

8 Trademark and Commercial Protection; and 

9 (C) the Madrid Agreement Concerning the 

10 International Registration of Marks and Pro11 tocol Relating to the Madrid Agreement Con12 cerning the International Registration of 

13 Marks; 

14 (2) implement the Joint Recommendation Con15 cerning Provisions on the Protection of Well-Known 

16 Marks adopted by the General Assembly of the 

17 World Intellectual Property Organization (Pub 833 

18 E) in September 1999; and 

19 (3) commit that the manager of the Country20 Code Top-Level Domain (ccTLD) will subscribe to 

21 the Uniform Dispute Resolution Procedure (UDRP) 

22 approved by the Internet Corporation for Assigned 

23 Names and Numbers (ICANN) and provide to 

24 United States nationals nondiscriminatory access to 

25 such procedures.
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1 (b) CONSULTATION WITH SECRETARY OF COM2 MERCE.—The Secretary of State shall initiate and conduct 

3 the consultations under subsection (a) in consultation with 

4 the Secretary of Commerce. 

5 (c) REPORTS TO CONGRESS.—The Secretary of State 

6 and the Secretary of Commerce shall submit to the Con7 gress a report on the progress and results of the consulta8 tions under subsection (a) not later than 6 months after 

9 the date of the enactment of this Act and not later than 

10 every 6 months thereafter. 

11 (d) REPEAL OF PROHIBITION ON TRANSACTIONS OR

12 PAYMENTS WITH RESPECT TO CERTAIN UNITED STATES

13 INTELLECTUAL PROPERTY.—

14 (1) REPEAL.—Section 211 of the Department 

15 of Commerce and Related Agencies Appropriations 

16 Act, 1999 (as contained in section 101(b) of division 

17 A of Public Law 105–277; 112 Stat. 2681–88) is re18 pealed. 

19 (2) REGULATIONS.—The Secretary of the 

20 Treasury shall issue such regulations as are nec21 essary to carry out the repeal made by paragraph 

22 (1), including removing any prohibition on trans23 actions or payments to which subsection (a)(1) of 

24 section 211 of the Department of Commerce and 

25 Related Agencies Appropriations Act, 1999 applied. 
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1 SEC. 4. REGISTRY OF U.S. TRADEMARKS AND WELL-KNOWN 

2 MARKS IN CUBA. 

3 (a) REGISTRY OF U.S. TRADEMARKS.—Not later 

4 than December 31, 2003, the Director of the Patent and 

5 Trademark Office shall establish a registry of trademarks 

6 each of which is owned by a United States national and 

7 was registered in, or submitted for registration to, the Re8 public of Cuba on or after January 1, 1959. 

9 (b) REGISTRY OF WELL-KNOWN MARKS.—

10 (1) ESTABLISHMENT.—Not later than Decem11 ber 31, 2003, the Director of the Patent and Trade12 mark Office shall establish a registry of trademarks 

13 each of which is owned by a United States national 

14 and met the requirements for a well-known mark in 

15 the Republic of Cuba under Article 6bis of the Paris 

16 Convention for the Protection of Industrial Property 

17 as of December 31, 1958, and the Joint Rec18 ommendation Concerning Provisions on the Protec19 tion of Well-Known Marks adopted by the General 

20 Assembly of the World Intellectual Property Associa21 tion (Pub 833 E) in September 1999. 

22 (2) REQUIREMENTS FOR INCLUSION ON REG23 ISTRY.—The Director of the Patent and Trademark 

24 Office shall require any applicant seeking to register 

25 a well-known mark on the registry established under 

26 paragraph (1) to supply documentation to establish 
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1 that the mark met the requirements set forth in 

2 paragraph (1). 

3 (c) ACCESSIBILITY.—The Director of the Patent and 

4 Trademark Office shall ensure that each registry estab5 lished under subsections (a) and (b)—

6 (1) is accessible to the public through the Inter7 net; 

8 (2) allows trademark examiners and applicants 

9 seeking to register trademarks on the registry to 

10 send and receive communications electronically; 

11 (3) allows the United States Patent and Trade12 mark Office to process, maintain, and search elec13 tronically the contents and history of each applica14 tion to register a trademark, and trademark reg15 istration, included in the registry; and 

16 (4) allows the public to access and search elec17 tronically the contents and history of each such ap18 plication and trademark registration. 

19 SEC. 5. AMENDMENTS TO CUBAN ASSET CONTROL REGULA20 TIONS. 

21 The Secretary of the Treasury shall amend the 

22 Cuban Assets Control Regulations (part 515 of title 31, 

23 Code of Federal Regulations) so that—

24 (1) the following transactions by any person 

25 who is not a designated national are authorized: 
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1 (A) the filing and renewal of a blocked for2 eign domain name, the transfer or receipt of a 

3 blocked foreign domain name, and the filing 

4 and prosecution of proceedings to determine 

5 rights to a blocked foreign domain name and 

6 the prosecution of defenses to such proceedings; 

7 and 

8 (B) the filing and renewal of a blocked for9 eign trade name, the transfer or receipt of a 

10 blocked foreign trade name, and the filing and 

11 prosecution of proceedings related to a blocked 

12 foreign trade name and the prosecution of de13 fenses to such proceedings; 

14 (2)(A) the transfer or receipt of any trademark, 

15 trade name, or domain name subject to United 

16 States law in which a designated national has an in17 terest is authorized; and 

18 (B) the filing and prosecution of opposition and 

19 infringement proceedings related to any trademark 

20 or trade name in which a designated national has an 

21 interest, the filing and prosecution of proceedings to 

22 determine rights to any domain name in which a 

23 designated national has an interest, and the prosecu24 tion of defenses to such proceedings, are authorized; 

25 and 
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1 (3) the payment of fees to the government of 

2 any foreign country, either directly or through an at3 torney or representative, is authorized for research 

4 of registries, directories, and government records 

5 with respect to blocked foreign trademarks, blocked 

6 foreign trade names, or blocked foreign domain 

7 names, and the protection and enforcement thereof. 

8 SEC. 6. CONFORMING AMENDMENTS. 

9 (a) INTERNATIONAL CONVENTIONS.—Section 44 of 

10 the Trademark Act of 1946 (15 U.S.C. 1126) is amended 

11 by adding at the end the following: 

12 ‘‘(j)(1) Any designated national shall be entitled to 

13 the benefits of this Act to the extent necessary to give 

14 effect to any provision of any convention or treaty relating 

15 to trade or commercial names, or relating to the repression 

16 of unfair competition, to which the United States and the 

17 Republic of Cuba are parties, or to any reciprocal rights 

18 relating to trade or commercial names or the repression 

19 of unfair competition, that are extended by the Republic 

20 of Cuba to nationals of the United States by law. The ab21 sence of commercial activities within the United States 

22 shall not constitute a lack of standing or any other reason 

23 for the dismissal of any action brought by any such des24 ignated national pursuant to this subsection.
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1 ‘‘(2) No other provision of this section shall be con2 strued to limit the applicability of paragraph (1). 

3 ‘‘(3) As used in this subsection, the term ‘designated 

4 national’ has the meaning given that term in subpart C 

5 of part 515 of title 31, Code of Federal Regulations, as 

6 in effect on April 28, 2003, and includes any national of 

7 a foreign country that is a successor-in-interest to that 

8 designated national.’’. 

9 (b) CIVIL ACTIONS.—Section 43(a) of the Trademark 

10 Act of 1946 (15 U.S.C. 1125(a)) is amended by adding 

11 at the end the following: 

12 ‘‘(4)(A) For purposes of this subsection, any person 

13 who is engaged in the bona fide production, distribution, 

14 marketing, or sale of spirits outside the United States and 

15 who lawfully uses a mark or geographical indication in 

16 connection with such spirits shall be considered to be or 

17 likely to be damaged by a mark or geographical indica18 tion—

19 ‘‘(i) which, when used on or in connection with 

20 other spirits, identifies a place other than origin of 

21 such other spirits; and 

22 ‘‘(ii) of which the first use in commerce on or 

23 in connection with such other spirits was made on 

24 or after one year after the date on which the WTO 

25 Agreement (as defined in section 2(9) of the Uru-
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1 guay Round Agreements Act) entered into force with 

2 respect to the United States. 

3 The preceding sentence shall also apply to any person in 

4 any proceeding under section 13 or 14 of this Act. 

5 ‘‘(B) As used in this paragraph, the term ‘spirits’ 

6 means any article provided for in heading 2207 or 2208 

7 of the Harmonized Tariff Schedule of the United States.’’. 

8 SEC. 7. AUTHORITY OF COURTS. 

9 United States courts shall have the authority to rec10 ognize, enforce, or otherwise validate any assertion by a 

11 designated national of rights in any mark or trade name 

12 based on common law rights or registration or under sub13 section (b) or (e) of section 44 of the Trademark Act of 

14 1946. In this subsection, the term ‘‘designated national’’ 

15 includes any national of a foreign country that is a suc16 cessor-in-interest to that designated national. 

17 SEC. 8. DEFINITIONS. 

18 In this Act: 

19 (1) BLOCKED FOREIGN DOMAIN NAME.—The 

20 term ‘‘blocked foreign domain name’’ means a do21 main name in which a designated national has an in22 terest, including any domain name issued by a des23 ignated national. 

24 (2) BLOCKED FOREIGN TRADE NAME.—The 

25 term ‘‘blocked foreign trade name’’ means any trade 
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1 name in which a designated national has an interest, 

2 including any such trade name issued by a des3 ignated national. 

4 (3) BLOCKED FOREIGN TRADEMARK.—The 

5 term ‘‘blocked foreign trademark’’ has the meaning 

6 given that term in section 515.528(c) of title 31, 

7 Code of Federal Regulations, as in effect on April 

8 28, 2003. 

9 (4) DESIGNATED NATIONAL.—The term ‘‘des10 ignated national’’ has the meaning given that term 

11 in subpart C of part 515 of title 31, Code of Federal 

12 Regulations, as in effect on April 28, 2003. 

13 (5) DIRECTOR OF THE PATENT AND TRADE14 MARK OFFICE.—The term ‘‘Director of the Patent 

15 and Trademark Office’’ means the Under Secretary 

16 of Commerce for Intellectual Property and Director 

17 of the United States Patent and Trademark Office. 

18 (6) DOMAIN NAME; MARK; TRADEMARK.—The 

19 terms ‘‘domain name’’, ‘‘mark’’, and ‘‘trademark’’ 

20 have the meanings given those terms in section 45 

21 of the Trademark Act of 1946. 

22 (7) INTEREST.—The term ‘‘interest’’ has the 

23 meaning given that term in section 515.312 of title 

24 31, Code of Federal Regulations, as in effect on 

25 April 28, 2003. 
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1 (8) TRADEMARK ACT OF 1946.—The term 

2 ‘‘Trademark Act of 1946’’ means the Act entitled 

3 ‘‘An Act to provide for the registration and protec4 tion of trademarks used in commerce, to carry out 

5 the provisions of certain international conventions, 

6 and for other purposes’’, approved July 5, 1946 (15 

7 U.S.C. 1051 et seq.). 

8 (9) TRADE NAME.—The term ‘‘trade name’’ 

9 means a trade name or commercial name as those 

10 terms are defined in section 45 of the Trademark 

11 Act of 1946. 

12 (10) UNITED STATES NATIONAL.—The term 

13 ‘‘United States national’’ means—

14 (A) any United States citizen; or 

15 (B) any other legal entity which is orga16 nized under the laws of the United States, or 

17 of any State, the District of Columbia, or any 

18 commonwealth, territory, or possession of the 

19 United States, and which has its principal place 

20 of business in the United States.

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