II 

111TH CONGRESS 

2D SESSION S. 2968 

To make certain technical and conforming amendments to the Lanham Act. 

IN THE SENATE OF THE UNITED STATES 

JANUARY 28, 2010 

Mr. LEAHY (for himself and Mr. SESSIONS) introduced the following bill; 

which was considered, read the third time, and passed 

A BILL 

To make certain technical and conforming amendments to 

the Lanham Act. 

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 ‘‘Trademark Technical 

5 and Conforming Amendment Act of 2010.’’. 

6 SEC. 2. DEFINITION. 

7 For purposes of this Act, the term ‘‘Trademark Act 

8 of 1946’’ means the Act entitled ‘‘An Act to provide for 

9 the registration and protection of trademarks used in com10 merce, to carry out the provisions of certain international 

11 conventions, and for other purposes’’, approved July 5, 


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1 1946 (commonly referred to as the ‘‘Lanham Act’’; 15 

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

3 SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS. 

4 (a) CERTIFICATES OF REGISTRATION.—Section 7 of 

5 the Trademark Act of 1946 (15 U.S.C. 1057) is amend6 ed— 

7 (1) by inserting ‘‘United States’’ before ‘‘Patent 

8 and Trademark Office’’ each place that term ap9 pears; 

10 (2) in subsection (b), by striking ‘‘registrant’s’’ 

11 each place that appears and inserting ‘‘owner’s’’; 

12 (3) in subsection (e)— 

13 (A) by striking ‘‘registrant’’ each place 

14 that term appears and inserting ‘‘owner’’; and 

15 (B) in the third sentence, by striking ‘‘or, 

16 if said certificate is lost or destroyed, upon a 

17 certified copy thereof’’; and 

18 (4) by amending subsection (g) to read as fol19 lows: 

20 ‘‘(g) CORRECTION OF PATENT AND TRADEMARK OF21 FICE MISTAKE.—Whenever a material mistake in a reg22 istration, incurred through the fault of the United States 

23 Patent and Trademark Office, is clearly disclosed by the 

24 records of the Office a certificate stating the fact and na25 ture of such mistake shall be issued without charge and 


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1 recorded and a printed copy thereof shall be attached to 

2 each printed copy of the registration and such corrected 

3 registration shall thereafter have the same effect as if the 

4 same had been originally issued in such corrected form, 

5 or in the discretion of the Director a new certificate of 

6 registration may be issued without charge. All certificates 

7 of correction heretofore issued in accordance with the rules 

8 of the United States Patent and Trademark Office and 

9 the registrations to which they are attached shall have the 

10 same force and effect as if such certificates and their issue 

11 had been specifically authorized by statute.’’. 

12 (b) INCONTESTABILITY OF RIGHT TO USE MARK

13 UNDER CERTAIN CONDITIONS.—Section 15 of the Trade14 mark Act of 1946 (15 U.S.C. 1065) is amended— 

15 (1) by striking ‘‘right of the registrant’’ and in16 serting ‘‘right of the owner’’; 

17 (2) by amending paragraph (1) to read as fol18 lows: 

19 ‘‘(1) there has been no final decision adverse to 

20 the owner’s claim of ownership of such mark for 

21 such goods or services, or to the owner’s right to 

22 register the same or to keep the same on the reg23 ister; and’’; and 

24 (3) in paragraph (2), by inserting ‘‘United 

25 States’’ before ‘‘Patent and Trademark Office’’. 


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1 (c) APPEAL TO COURTS.—Section 21 of the Trade2 mark Act of 1946 (15 U.S.C. 1071) is amended— 

3 (1) by inserting ‘‘United States’’ before ‘‘Patent 

4 and Trademark Office’’ each place that term ap5 pears; 

6 (2) in subsection (a)(1), by inserting ‘‘or section 

7 71’’ after ‘‘section 8’’; and 

8 (3) in subsection (b)(4), by striking ‘‘If there 

9 be’’ and inserting ‘‘If there are’’. 

10 (d) CONFORMING REQUIREMENTS FOR AFFIDA11 VITS.— 

12 (1) DURATION, AFFIDAVITS AND FEES.—Sec13 tion 8 of the Trademark Act of 1946 (15 U.S.C. 

14 1058) is amended to read as follows: 

15 ‘‘SEC. 8. DURATION, AFFIDAVITS AND FEES. 

16 ‘‘(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.— 

17 Each registration shall remain in force for 10 years, ex18 cept that the registration of any mark shall be canceled 

19 by the Director unless the owner of the registration files 

20 in the United States Patent and Trademark Office affida21 vits that meet the requirements of subsection (b), within 

22 the following time periods: 

23 ‘‘(1) Within the 1-year period immediately pre24 ceding the expiration of 6 years following the date 


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1 of registration under this Act or the date of the pub2 lication under section 12(c). 

3 ‘‘(2) Within the 1-year period immediately pre4 ceding the expiration of 10 years following the date 

5 of registration, and each successive 10-year period 

6 following the date of registration. 

7 ‘‘(3) The owner may file the affidavit required 

8 under this section within the 6-month grace period 

9 immediately following the expiration of the periods 

10 established in paragraphs (1) and (2), together with 

11 the fee described in subsection (b) and the additional 

12 grace period surcharge prescribed by the Director. 

13 ‘‘(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit 

14 referred to in subsection (a) shall— 

15 ‘‘(1)(A) state that the mark is in use in com16 merce; 

17 ‘‘(B) set forth the goods and services recited in 

18 the registration on or in connection with which the 

19 mark is in use in commerce; 

20 ‘‘(C) be accompanied by such number of speci21 mens or facsimiles showing current use of the mark 

22 in commerce as may be required by the Director; 

23 and 

24 ‘‘(D) be accompanied by the fee prescribed by 

25 the Director; or 


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1 ‘‘(2)(A) set forth the goods and services recited 

2 in the registration on or in connection with which 

3 the mark is not in use in commerce; 

4 ‘‘(B) include a showing that any nonuse is due 

5 to special circumstances which excuse such nonuse 

6 and is not due to any intention to abandon the 

7 mark; and 

8 ‘‘(C) be accompanied by the fee prescribed by 

9 the Director. 

10 ‘‘(c) DEFICIENT AFFIDAVIT.—If any submission filed 

11 within the period set forth in subsection (a) is deficient, 

12 including that the affidavit was not filed in the name of 

13 the owner of the registration, the deficiency may be cor14 rected after the statutory time period, within the time pre15 scribed after notification of the deficiency. Such submis16 sion shall be accompanied by the additional deficiency sur17 charge prescribed by the Director. 

18 ‘‘(d) NOTICE OF REQUIREMENT.—Special notice of 

19 the requirement for such affidavit shall be attached to 

20 each certificate of registration and notice of publication 

21 under section 12(c). 

22 ‘‘(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.— 

23 The Director shall notify any owner who files any affidavit 

24 required by this section of the Director’s acceptance or 


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1 refusal thereof and, in the case of a refusal, the reasons 

2 therefor. 

3 ‘‘(f) DESIGNATION OF RESIDENT FOR SERVICE OF

4 PROCESS AND NOTICES.—If the owner is not domiciled 

5 in the United States, the owner may designate, by a docu6 ment filed in the United States Patent and Trademark 

7 Office, the name and address of a person resident in the 

8 United States on whom may be served notices or process 

9 in proceedings affecting the mark. Such notices or process 

10 may be served upon the person so designated by leaving 

11 with that person or mailing to that person a copy thereof 

12 at the address specified in the last designation so filed. 

13 If the person so designated cannot be found at the last 

14 designated address, or if the owner does not designate by 

15 a document filed in the United States Patent and Trade16 mark Office the name and address of a person resident 

17 in the United States on whom may be served notices or 

18 process in proceedings affecting the mark, such notices or 

19 process may be served on the Director.’’. 

20 (2) AFFIDAVITS AND FEES.—Section 71 of the 

21 Trademark Act of 1946 (15 U.S.C. 1141k) is 

22 amended to read as follows: 

23 ‘‘SEC. 71. DURATION, AFFIDAVITS AND FEES. 

24 ‘‘(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.— 

25 Each extension of protection for which a certificate has 


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1 been issued under section 69 shall remain in force for the 

2 term of the international registration upon which it is 

3 based, except that the extension of protection of any mark 

4 shall be canceled by the Director unless the holder of the 

5 international registration files in the United States Patent 

6 and Trademark Office affidavits that meet the require7 ments of subsection (b), within the following time periods: 

8 ‘‘(1) Within the 1-year period immediately pre9 ceding the expiration of 6 years following the date 

10 of issuance of the certificate of extension of protec11 tion. 

12 ‘‘(2) Within the 1-year period immediately pre13 ceding the expiration of 10 years following the date 

14 of issuance of the certificate of extension of protec15 tion, and each successive 10-year period following 

16 the date of issuance of the certificate of extension of 

17 protection. 

18 ‘‘(3) The holder may file the affidavit required 

19 under this section within a grace period of 6 months 

20 after the end of the applicable time period estab21 lished in paragraph (1) or (2), together with the fee 

22 described in subsection (b) and the additional grace 

23 period surcharge prescribed by the Director. 

24 ‘‘(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit 

25 referred to in subsection (a) shall— 


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1 ‘‘(1)(A) state that the mark is in use in com2 merce; 

3 ‘‘(B) set forth the goods and services recited in 

4 the extension of protection on or in connection with 

5 which the mark is in use in commerce; 

6 ‘‘(C) be accompanied by such number of speci7 mens or facsimiles showing current use of the mark 

8 in commerce as may be required by the Director; 

9 and 

10 ‘‘(D) be accompanied by the fee prescribed by 

11 the Director; or 

12 ‘‘(2)(A) set forth the goods and services recited 

13 in the extension of protection on or in connection 

14 with which the mark is not in use in commerce; 

15 ‘‘(B) include a showing that any nonuse is due 

16 to special circumstances which excuse such nonuse 

17 and is not due to any intention to abandon the 

18 mark; and 

19 ‘‘(C) be accompanied by the fee prescribed by 

20 the Director. 

21 ‘‘(c) DEFICIENT AFFIDAVIT.—If any submission filed 

22 within the period set forth in subsection (a) is deficient, 

23 including that the affidavit was not filed in the name of 

24 the holder of the international registration, the deficiency 

25 may be corrected after the statutory time period, within 


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1 the time prescribed after notification of the deficiency. 

2 Such submission shall be accompanied by the additional 

3 deficiency surcharge prescribed by the Director. 

4 ‘‘(d) NOTICE OF REQUIREMENT.—Special notice of 

5 the requirement for such affidavit shall be attached to 

6 each certificate of extension of protection. 

7 ‘‘(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.— 

8 The Director shall notify the holder of the international 

9 registration who files any affidavit required by this section 

10 of the Director’s acceptance or refusal thereof and, in the 

11 case of a refusal, the reasons therefor. 

12 ‘‘(f) DESIGNATION OF RESIDENT FOR SERVICE OF

13 PROCESS AND NOTICES.—If the holder of the inter14 national registration of the mark is not domiciled in the 

15 United States, the holder may designate, by a document 

16 filed in the United States Patent and Trademark Office, 

17 the name and address of a person resident in the United 

18 States on whom may be served notices or process in pro19 ceedings affecting the mark. Such notices or process may 

20 be served upon the person so designated by leaving with 

21 that person or mailing to that person a copy thereof at 

22 the address specified in the last designation so filed. If 

23 the person so designated cannot be found at the last des24 ignated address, or if the holder does not designate by a 

25 document filed in the United States Patent and TradeVerDate Nov 24 2008 00:06 Jan 29, 2010 Jkt 089200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6201 E:\BILLS\S2968.CPS S2968

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1 mark Office the name and address of a person resident 

2 in the United States on whom may be served notices or 

3 process in proceedings affecting the mark, such notices or 

4 process may be served on the Director.’’. 

5 SEC. 4. STUDY AND REPORT. 

6 (a) IN GENERAL.—Not later than 1 year after the 

7 date of enactment of this Act, the Secretary of Commerce, 

8 in consultation with the Intellectual Property Enforcement 

9 Coordinator, shall study and report to the Committee on 

10 the Judiciary of the Senate and the Committee on the Ju11 diciary of the House of Representatives on— 

12 (1) the extent to which small businesses may be 

13 harmed by litigation tactics by corporations attempt14 ing to enforce trademark rights beyond a reasonable 

15 interpretation of the scope of the rights granted to 

16 the trademark owner; and 

17 (2) the best use of Federal Government services 

18 to protect trademarks and prevent counterfeiting. 

19 (b) RECOMMENDATIONS.—The study and report re20 quired under paragraph (1) shall also include any policy 

21 recommendations the Secretary of Commerce and the In22 tellectual Property Enforcement Coordinator deem appro23 priate. 

Æ 


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