I

105TH CONGRESS

1ST SESSION H. R. 567

To amend the Trademark Act of 1946 to provide for the registration and

protection of trademarks used in commerce, in order to carry out provisions of certain international conventions, and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

FEBRUARY 4, 1997

Mr. COBLE introduced the following bill; which was referred to the Committee

on the Judiciary

A BILL

To amend the Trademark Act of 1946 to provide for the

registration and protection of trademarks used in commerce, in order to carry out provisions of certain international conventions, 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 ‘‘Madrid Protocol Imple5 mentation Act’’.
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1 SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RE2 LATING TO THE MADRID AGREEMENT CON3 CERNING THE INTERNATIONAL REGISTRA4 TION OF MARKS.

5 The Act entitled ‘‘An Act to provide for the registra6 tion and protection of trade-marks used in commerce, to

7 carry out the provisions of certain international conven8 tions, and for other purposes’’, approved July 5, 1946, as

9 amended (15 U.S.C. 1051 and following) (commonly re10 ferred to as the ‘‘Trademark Act of 1946’’) is amended

11 by adding after section 51 the following new title:

12 ‘‘TITLE XII—THE MADRID PROTOCOL

13 ‘‘SEC. 60. DEFINITIONS.

14 ‘‘For purposes of this title:

15 ‘‘(1) MADRID PROTOCOL.—The term ‘Madrid

16 Protocol’ means the Protocol Relating to the Madrid

17 Agreement Concerning the International Registra18 tion of Marks, adopted at Madrid, Spain, on June

19 27, 1989.

20 ‘‘(2) BASIC APPLICATION.—The term ‘basic ap21 plication’ means the application for the registration

22 of a mark that has been filed with an Office of a

23 Contracting Party and that constitutes the basis for

24 an application for the international registration of

25 that mark.
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1 ‘‘(3) BASIC REGISTRATION.—The term ‘basic

2 registration’ means the registration of a mark that

3 has been granted by an Office of a Contracting

4 Party and that constitutes the basis for an applica5 tion for the international registration of that mark.

6 ‘‘(4) CONTRACTING PARTY.—The term ‘Con7 tracting Party’ means any country or inter-govern8 mental organization that is a party to the Madrid

9 Protocol.

10 ‘‘(5) DATE OF RECORDAL.—The term ‘date of

11 recordal’ means the date on which a request for ex12 tension of protection that is filed after an inter13 national registration is granted is recorded on the

14 International Register.

15 ‘‘(6) DECLARATION OF BONA FIDE INTENTION

16 TO USE THE MARK IN COMMERCE.—The term ‘dec17 laration of bona fide intention to use the mark in

18 commerce’ means a declaration that is signed by the

19 applicant for, or holder of, an international registra20 tion who is seeking extension of protection of a mark

21 to the United States and that contains a statement

22 that—

23 ‘‘(A) the applicant or holder has a bona

24 fide intention to use the mark in commerce,
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1 ‘‘(B) the person making the declaration be2 lieves himself or herself, or the firm, corpora3 tion, or association in whose behalf he or she

4 makes the declaration, to be entitled to use the

5 mark in commerce, and

6 ‘‘(C) no other person, firm, corporation, or

7 association, to the best of his or her knowledge

8 and belief, has the right to use such mark in

9 commerce either in the identical form of the

10 mark or in such near resemblance to the mark

11 as to be likely, when used on or in connection

12 with the goods of such other person, firm, cor13 poration, or association, to cause confusion, or

14 to cause mistake, or to deceive.

15 ‘‘(7) EXTENSION OF PROTECTION.—The term

16 ‘extension of protection’ means the protection result17 ing from an international registration that extends

18 to a Contracting Party at the request of the holder

19 of the international registration, in accordance with

20 the Madrid Protocol.

21 ‘‘(8) HOLDER OF AN INTERNATIONAL REG22 ISTRATION.—A ‘holder’ of an international registra23 tion is the natural or juristic person in whose name

24 the international registration is recorded on the

25 International Register.
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1 ‘‘(9) INTERNATIONAL APPLICATION.—The term

2 ‘international application’ means an application for

3 international registration that is filed under the Ma4 drid Protocol.

5 ‘‘(10) INTERNATIONAL BUREAU.—The term

6 ‘International Bureau’ means the International Bu7 reau of the World Intellectual Property Organiza8 tion.

9 ‘‘(11) INTERNATIONAL REGISTER.—The term

10 ‘International Register’ means the official collection

11 of such data concerning international registrations

12 maintained by the International Bureau that the

13 Madrid Protocol or its implementing regulations re14 quire or permit to be recorded, regardless of the me15 dium which contains such data.

16 ‘‘(12) INTERNATIONAL REGISTRATION.—The

17 term ‘international registration’ means the registra18 tion of a mark granted under the Madrid Protocol.

19 ‘‘(13) INTERNATIONAL REGISTRATION DATE.—

20 The term ‘international registration date’ means the

21 date assigned to the international registration by the

22 International Bureau.

23 ‘‘(14) NOTIFICATION OF REFUSAL.—The term

24 ‘notification of refusal’ means the notice sent by an

25 Office of a Contracting Party to the International
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1 Bureau declaring that an extension of protection

2 cannot be granted.

3 ‘‘(15) OFFICE OF A CONTRACTING PARTY.—The

4 term ‘Office of a Contracting Party’ means—

5 ‘‘(A) the office, or governmental entity, of

6 a Contracting Party that is responsible for the

7 registration of marks, or

8 ‘‘(B) the common office, or governmental

9 entity, of more than 1 Contracting Party that

10 is responsible for the registration of marks and

11 is so recognized by the International Bureau.

12 ‘‘(16) OFFICE OF ORIGIN.—The term ‘office of

13 origin’ means the Office of a Contracting Party with

14 which a basic application was filed or by which a

15 basic registration was granted.

16 ‘‘(17) OPPOSITION PERIOD.—The term ‘opposi17 tion period’ means the time allowed for filing an op18 position in the Patent and Trademark Office, includ19 ing any extension of time granted under section 13.
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1 ‘‘SEC. 61. INTERNATIONAL APPLICATIONS BASED ON

2 UNITED STATES APPLICATIONS OR REG3 ISTRATIONS.

4 ‘‘The owner of a basic application pending before the

5 Patent and Trademark Office, or the owner of a basic reg6 istration granted by the Patent and Trademark Office,

7 who—

8 ‘‘(1) is a national of the United States,

9 ‘‘(2) is domiciled in the United States, or

10 ‘‘(3) has a real and effective industrial or com11 mercial establishment in the United States,

12 may file an international application by submitting to the

13 Patent and Trademark Office a written application in

14 such form, together with such fees, as may be prescribed

15 by the Commissioner.

16 ‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI17 CATION.

18 ‘‘Upon the filing of an application for international

19 registration and payment of the prescribed fees, the Com20 missioner shall examine the international application for

21 the purpose of certifying that the information contained

22 in the international application corresponds to the infor23 mation contained in the basic application or basic registra24 tion at the time of the certification. Upon examination and
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1 certification of the international application, the Commis2 sioner shall transmit the international application to the

3 International Bureau.

4 ‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION,

5 OR EXPIRATION OF A BASIC APPLICATION OR

6 BASIC REGISTRATION.

7 ‘‘With respect to an international application trans8 mitted to the International Bureau under section 62, the

9 Commissioner shall notify the International Bureau when10 ever the basic application or basic registration which is

11 the basis for the international application has been re12 stricted, abandoned, or canceled, or has expired, with re13 spect to some or all of the goods and services listed in

14 the international registration—

15 ‘‘(1) within 5 years after the international reg16 istration date; or

17 ‘‘(2) more than 5 years after the international

18 registration date if the restriction, abandonment, or

19 cancellation of the basic application or basic reg20 istration resulted from an action that began before

21 the end of that 5-year period.
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1 ‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB2 SEQUENT TO INTERNATIONAL REGISTRA3 TION.

4 ‘‘The holder of an international registration that is

5 based upon a basic application filed with the Patent and

6 Trademark Office or a basic registration granted by the

7 Patent and Trademark Office may request an extension

8 of protection of its international registration by filing such

9 a request—

10 ‘‘(1) directly with the International Bureau, or

11 ‘‘(2) with the Patent and Trademark Office for

12 transmittal to the International Bureau, if the re13 quest is in such form, and contains such transmittal

14 fee, as may be prescribed by the Commissioner.

15 ‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER16 NATIONAL REGISTRATION TO THE UNITED

17 STATES UNDER THE MADRID PROTOCOL.

18 ‘‘(a) IN GENERAL.—Subject to the provisions of sec19 tion 68, the holder of an international registration shall

20 be entitled to the benefits of extension of protection of that

21 international registration to the United States to the ex22 tent necessary to give effect to any provision of the Madrid

23 Protocol.

24 ‘‘(b) IF UNITED STATES IS OFFICE OF ORIGIN.—An

25 extension of protection resulting from an international

26 registration of a mark shall not apply to the United States
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1 if the Patent and Trademark Office is the office of origin

2 with respect to that mark.

3 ‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION

4 OF PROTECTION OF AN INTERNATIONAL

5 REGISTRATION TO THE UNITED STATES.

6 ‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION

7 OF PROTECTION.—A request for extension of protection

8 of an international registration to the United States that

9 the International Bureau transmits to the Patent and

10 Trademark Office shall be deemed to be properly filed in

11 the United States if such request, when received by the

12 International Bureau, has attached to it a declaration of

13 bona fide intention to use the mark in commerce that is

14 verified by the applicant for, or holder of, the international

15 registration.

16 ‘‘(b) EFFECT OF PROPER FILING.—Unless extension

17 of protection is refused under section 68, the proper filing

18 of the request for extension of protection under subsection

19 (a) shall constitute constructive use of the mark, confer20 ring the same rights as those specified in section 7(c), as

21 of the earliest of the following:

22 ‘‘(1) The international registration date, if the

23 request for extension of protection was filed in the

24 international application.
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1 ‘‘(2) The date of recordal of the request for ex2 tension of protection, if the request for extension of

3 protection was made after the international registra4 tion date.

5 ‘‘(3) The date of priority claimed pursuant to

6 section 67.

7 ‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN8 SION OF PROTECTION TO THE UNITED

9 STATES.

10 ‘‘The holder of an international registration with an

11 extension of protection to the United States shall be enti12 tled to claim a date of priority based on the right of prior13 ity within the meaning of Article 4 of the Paris Convention

14 for the Protection of Industrial Property if—

15 ‘‘(1) the international registration contained a

16 claim of such priority; and

17 ‘‘(2)(A) the international application contained

18 a request for extension of protection to the United

19 States, or

20 ‘‘(B) the date of recordal of the request for ex21 tension of protection to the United States is not

22 later than 6 months after the date of the first regu23 lar national filing (within the meaning of Article

24 4(A)(3) of the Paris Convention for the Protection

25 of Industrial Property) or a subsequent application
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1 (within the meaning of Article 4(C)(4) of the Paris

2 Convention).

3 ‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST

4 FOR EXTENSION OF PROTECTION; NOTIFICA5 TION OF REFUSAL.

6 ‘‘(a) EXAMINATION AND OPPOSITION.—(1) A request

7 for extension of protection described in section 66(a) shall

8 be examined as an application for registration on the Prin9 cipal Register under this Act, and if on such examination

10 it appears that the applicant is entitled to extension of

11 protection under this title, the Commissioner shall cause

12 the mark to be published in the Official Gazette of the

13 Patent and Trademark Office.

14 ‘‘(2) Subject to the provisions of subsection (c), a re15 quest for extension of protection under this title shall be

16 subject to opposition under section 13. Unless successfully

17 opposed, the request for extension of protection shall not

18 be refused.

19 ‘‘(3) Extension of protection shall not be refused

20 under this section on the ground that the mark has not

21 been used in commerce.

22 ‘‘(4) Extension of protection shall be refused under

23 this section to any mark not registrable on the Principal

24 Register.
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1 ‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for

2 extension of protection is refused under subsection (a), the

3 Commissioner shall declare in a notification of refusal (as

4 provided in subsection (c)) that the extension of protection

5 cannot be granted, together with a statement of all

6 grounds on which the refusal was based.

7 ‘‘(c) NOTICE TO INTERNATIONAL BUREAU.—(1)

8 Within 18 months after the date on which the Inter9 national Bureau transmits to the Patent and Trademark

10 Office a notification of a request for extension of protec11 tion, the Commissioner shall transmit to the International

12 Bureau any of the following that applies to such request:

13 ‘‘(A) A notification of refusal based on an ex14 amination of the request for extension of protection.

15 ‘‘(B) A notification of refusal based on the fil16 ing of an opposition to the request.

17 ‘‘(C) A notification of the possibility that an op18 position to the request may be filed after the end of

19 that 18-month period.

20 ‘‘(2) If the Commissioner has sent a notification of

21 the possibility of opposition under paragraph (1)(C), the

22 Commissioner shall, if applicable, transmit to the Inter23 national Bureau a notification of refusal on the basis of

24 the opposition, together with a statement of all the
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1 grounds for the opposition, within 7 months after the be2 ginning of the opposition period or within 1 month after

3 the end of the opposition period, whichever is earlier.

4 ‘‘(3) If a notification of refusal of a request for exten5 sion of protection is transmitted under paragraph (1) or

6 (2), no grounds for refusal of such request other than

7 those set forth in such notification may be transmitted to

8 the International Bureau by the Commissioner after the

9 expiration of the time periods set forth in paragraph (1)

10 or (2), as the case may be.

11 ‘‘(4) If a notification specified in paragraph (1) or

12 (2) is not sent to the International Bureau within the time

13 period set forth in such paragraph, with respect to a re14 quest for extension of protection, the request for extension

15 of protection shall not be refused and the Commissioner

16 shall issue a certificate of extension of protection pursuant

17 to the request.

18 ‘‘(d) DESIGNATION OF AGENT FOR SERVICE OF

19 PROCESS.—In responding to a notification of refusal with

20 respect to a mark, the holder of the international registra21 tion of the mark shall designate, by a written document

22 filed in the Patent and Trademark Office, the name and

23 address of a person resident in the United States on whom

24 may be served notices or process in proceedings affecting

25 the mark. Such notices or process may be served upon
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1 the person so designated by leaving with that person, or

2 mailing to that person, a copy thereof at the address speci3 fied in the last designation so filed. If the person so des4 ignated cannot be found at the address given in the last

5 designation, such notice or process may be served upon

6 the Commissioner.

7 ‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.

8 ‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—

9 Unless a request for extension of protection is refused

10 under section 68, the Commissioner shall issue a certifi11 cate of extension of protection pursuant to the request and

12 shall cause notice of such certificate of extension of protec13 tion to be published in the Official Gazette of the Patent

14 and Trademark Office.

15 ‘‘(b) EFFECT OF EXTENSION OF PROTECTION.—

16 From the date on which a certificate of extension of pro17 tection is issued under subsection (a)—

18 ‘‘(1) such extension of protection shall have the

19 same effect and validity as a registration on the

20 Principal Register, and

21 ‘‘(2) the holder of the international registration

22 shall have the same rights and remedies as the

23 owner of a registration on the Principal Register.
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1 ‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO

2 THE UNITED STATES ON THE UNDERLYING

3 INTERNATIONAL REGISTRATION.

4 ‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL

5 REGISTRATION.—If the International Bureau notifies the

6 Patent and Trademark Office of the cancellation of an

7 international registration with respect to some or all of

8 the goods and services listed in the international registra9 tion, the Commissioner shall cancel any extension of pro10 tection to the United States with respect to such goods

11 and services as of the date on which the international reg12 istration was canceled.

13 ‘‘(b) EFFECT OF FAILURE TO RENEW INTER14 NATIONAL REGISTRATION.—If the International Bureau

15 does not renew an international registration, the cor16 responding extension of protection to the United States

17 shall cease to be valid as of the date of the expiration of

18 the international registration.

19 ‘‘(c) TRANSFORMATION OF AN EXTENSION OF PRO20 TECTION INTO A UNITED STATES APPLICATION.—The

21 holder of an international registration canceled in whole

22 or in part by the International Bureau at the request of

23 the office of origin, under Article 6(4) of the Madrid Pro24 tocol, may file an application, under section 1 or 44 of

25 this Act, for the registration of the same mark for any

26 of the goods and services to which the cancellation applies
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1 that were covered by an extension of protection to the

2 United States based on that international registration.

3 Such an application shall be treated as if it had been filed

4 on the international registration date or the date of

5 recordal of the request for extension of protection with the

6 International Bureau, whichever date applies, and, if the

7 extension of protection enjoyed priority under section 67

8 of this title, shall enjoy the same priority. Such an applica9 tion shall be entitled to the benefits conferred by this sub10 section only if the application is filed not later than 3

11 months after the date on which the international registra12 tion was canceled, in whole or in part, and only if the ap13 plication complies with all the requirements of this Act

14 which apply to any application filed pursuant to section

15 1 or 44.

16 ‘‘SEC. 71. AFFIDAVITS AND FEES.

17 ‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An exten18 sion of protection for which a certificate of extension of

19 protection has been issued under section 69 shall remain

20 in force for the term of the international registration upon

21 which it is based, except that the extension of protection

22 of any mark shall be canceled by the Commissioner—

23 ‘‘(1) at the end of the 6-year period beginning

24 on the date on which the certificate of extension of

25 protection was issued by the Commissioner, unless
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1 within the 1-year period preceding the expiration of

2 that 6-year period the holder of the international

3 registration files in the Patent and Trademark Of4 fice an affidavit under subsection (b) together with

5 a fee prescribed by the Commissioner; and

6 ‘‘(2) at the end of the 10-year period beginning

7 on the date on which the certificate of extension of

8 protection was issued by the Commissioner, and at

9 the end of each 10-year period thereafter, unless—

10 ‘‘(A) within the 6-month period preceding

11 the expiration of such 10-year period the holder

12 of the international registration files in the Pat13 ent and Trademark Office an affidavit under

14 subsection (b) together with a fee prescribed by

15 the Commissioner; or

16 ‘‘(B) within 3 months after the expiration

17 of such 10-year period, the holder of the inter18 national registration files in the Patent and

19 Trademark Office an affidavit under subsection

20 (b) together with the fee described in subpara21 graph (A) and an additional fee prescribed by

22 the Commissioner.

23 ‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit re24 ferred to in subsection (a) shall set forth those goods or
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1 services recited in the extension of protection on or in con2 nection with which the mark is in use in commerce and

3 the holder of the international registration shall attach to

4 the affidavit a specimen or facsimile showing the current

5 use of the mark in commerce, or shall set forth that any

6 nonuse is due to special circumstances which excuse such

7 nonuse and is not due to any intention to abandon the

8 mark. Special notice of the requirement for such affidavit

9 shall be attached to each certificate of extension of protec10 tion.

11 ‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

12 ‘‘An extension of protection may be assigned, to13 gether with the goodwill associated with the mark, only

14 to a person who is a national of, is domiciled in, or has

15 a bona fide and effective industrial or commercial estab16 lishment either in a country that is a Contracting Party

17 or in a country that is a member of an intergovernmental

18 organization that is a Contracting Party.

19 ‘‘SEC. 73. INCONTESTABILITY.

20 ‘‘The period of continuous use prescribed under sec21 tion 15 for a mark covered by an extension of protection

22 issued under this title may begin no earlier than the date

23 on which the Commissioner issues the certificate of the

24 extension of protection under section 69, except as pro25 vided in section 74.
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1 ‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

2 ‘‘An extension of protection shall convey the same

3 rights as an existing registration for the same mark, if—

4 ‘‘(1) the extension of protection and the exist5 ing registration are owned by the same person;

6 ‘‘(2) the goods and services listed in the exist7 ing registration are also listed in the extension of

8 protection; and

9 ‘‘(3) the certificate of extension of protection is

10 issued after the date of the existing registration.’’.

11 SEC. 3. EFFECTIVE DATE.

12 This Act and the amendments made by this Act shall

13 take effect on the date on which the Madrid Protocol (as

14 defined in section 60(1) of the Trademark Act of 1946)

15 enters into force with respect to the United States.

Æ