S. 2968 

One Hundred Eleventh Congress 

of the 

United States of America 

AT THE SECOND SESSION 

Begun and held at the City of Washington on Tuesday, 

the fifth day of January, two thousand and ten 

An Act 

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

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 ‘‘Trademark Technical and Conforming Amendment Act of 2010.’’. 

SEC. 2. DEFINITION. 

For purposes of this Act, 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 (commonly referred to as the ‘‘Lanham 

Act’’; 15 U.S.C. 1051 et. seq). 

SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS. 

(a) CERTIFICATES OF REGISTRATION.—Section 7 of the Trademark Act of 1946 (15 U.S.C. 1057) is amended— 

(1) by inserting ‘‘United States’’ before ‘‘Patent and Trademark Office’’ each place that term appears; 

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

that appears and inserting ‘‘owner’s’’; 

(3) in subsection (e)— 

(A) by striking ‘‘registrant’’ each place that term 

appears and inserting ‘‘owner’’; and 

(B) in the third sentence, by striking ‘‘or, if said certificate is lost or destroyed, upon a certified copy thereof’’; 

and 

(4) by amending subsection (g) to read as follows: 

‘‘(g) CORRECTION OF PATENT AND TRADEMARK OFFICE MIS- TAKE.—Whenever a material mistake in a registration, incurred 

through the fault of the United States Patent and Trademark 

Office, is clearly disclosed by the records of the Office a certificate 

stating the fact and nature of such mistake shall be issued without 

charge and recorded and a printed copy thereof shall be attached 

to each printed copy of the registration and such corrected registration shall thereafter have the same effect as if the same had 

been originally issued in such corrected form, or in the discretion 

of the Director a new certificate of registration may be issued 

without charge. All certificates of correction heretofore issued in 

accordance with the rules of the United States Patent and Trademark Office and the registrations to which they are attached shall 
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have the same force and effect as if such certificates and their 

issue had been specifically authorized by statute.’’. 

(b) INCONTESTABILITY OF RIGHT TO USE MARK UNDER CERTAIN

CONDITIONS.—Section 15 of the Trademark Act of 1946 (15 U.S.C. 

1065) is amended— 

(1) by striking ‘‘right of the registrant’’ and inserting ‘‘right 

of the owner’’; 

(2) by amending paragraph (1) to read as follows: 

‘‘(1) there has been no final decision adverse to the owner’s 

claim of ownership of such mark for such goods or services, 

or to the owner’s right to register the same or to keep the 

same on the register; and’’; and 

(3) in paragraph (2), by inserting ‘‘United States’’ before 

‘‘Patent and Trademark Office’’. 

(c) APPEAL TO COURTS.—Section 21 of the Trademark Act of 

1946 (15 U.S.C. 1071) is amended— 

(1) by inserting ‘‘United States’’ before ‘‘Patent and Trademark Office’’ each place that term appears; 

(2) in subsection (a)(1), by inserting ‘‘or section 71’’ after 

‘‘section 8’’; and 

(3) in subsection (b)(4), by striking ‘‘If there be’’ and 

inserting ‘‘If there are’’. 

(d) CONFORMING REQUIREMENTS FOR AFFIDAVITS.— (1) DURATION, AFFIDAVITS AND FEES.—Section 8 of the 

Trademark Act of 1946 (15 U.S.C. 1058) is amended to read 

as follows: 

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

‘‘(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each registration shall remain in force for 10 years, except that the registration 

of any mark shall be canceled by the Director unless the owner 

of the registration files in the United States Patent and Trademark 

Office affidavits that meet the requirements of subsection (b), within 

the following time periods: 

‘‘(1) Within the 1-year period immediately preceding the 

expiration of 6 years following the date of registration under 

this Act or the date of the publication under section 12(c). 

‘‘(2) Within the 1-year period immediately preceding the 

expiration of 10 years following the date of registration, and 

each successive 10-year period following the date of registration. 

‘‘(3) The owner may file the affidavit required under this 

section within the 6-month grace period immediately following 

the expiration of the periods established in paragraphs (1) 

and (2), together with the fee described in subsection (b) and 

the additional grace period surcharge prescribed by the 

Director. 

‘‘(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit referred to 

in subsection (a) shall— 

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

‘‘(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in 

commerce; 

‘‘(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may 

be required by the Director; and 

‘‘(D) be accompanied by the fee prescribed by the Director; 

or 
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‘‘(2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in 

use in commerce; 

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

circumstances which excuse such nonuse and is not due to 

any intention to abandon the mark; and 

‘‘(C) be accompanied by the fee prescribed by the Director. 

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

period set forth in subsection (a) is deficient, including that the 

affidavit was not filed in the name of the owner of the registration, 

the deficiency may be corrected after the statutory time period, 

within the time prescribed after notification of the deficiency. Such 

submission shall be accompanied by the additional deficiency surcharge prescribed by the Director. 

‘‘(d) NOTICE OF REQUIREMENT.—Special notice of the requirement for such affidavit shall be attached to each certificate of 

registration and notice of publication under section 12(c). 

‘‘(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.—The Director 

shall notify any owner who files any affidavit required by this 

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

case of a refusal, the reasons therefor. 

‘‘(f) DESIGNATION OF RESIDENT FOR SERVICE OF PROCESS AND

NOTICES.—If the owner is not domiciled in the United States, the 

owner may designate, by a document filed in the United States 

Patent and Trademark Office, the name and address of a 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 last designated address, or if the owner 

does not designate by a document filed in the United States Patent 

and Trademark Office the name and address of a 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 on the Director.’’. 

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

Act of 1946 (15 U.S.C. 1141k) is amended to read as follows: 

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

‘‘(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each extension 

of protection for which a certificate has been issued under section 

69 shall remain in force for the term of the international registration 

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

of any mark shall be canceled by the Director unless the holder 

of the international registration files in the United States Patent 

and Trademark Office affidavits that meet the requirements of 

subsection (b), within the following time periods: 

‘‘(1) Within the 1-year period immediately preceding the 

expiration of 6 years following the date of issuance of the 

certificate of extension of protection. 

‘‘(2) Within the 1-year period immediately preceding the 

expiration of 10 years following the date of issuance of the 

certificate of extension of protection, and each successive 10- 

year period following the date of issuance of the certificate 

of extension of protection. 
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‘‘(3) The holder may file the affidavit required under this 

section within a grace period of 6 months after the end of 

the applicable time period established in paragraph (1) or (2), 

together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director. 

‘‘(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit referred to 

in subsection (a) shall— 

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

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

of protection on or in connection with which the mark is in 

use in commerce; 

‘‘(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may 

be required by the Director; and 

‘‘(D) be accompanied by the fee prescribed by the Director; 

or 

‘‘(2)(A) set forth the goods and services recited in the extension of protection on or in connection with which the mark 

is not in use in commerce; 

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

circumstances which excuse such nonuse and is not due to 

any intention to abandon the mark; and 

‘‘(C) be accompanied by the fee prescribed by the Director. 

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

period set forth in subsection (a) is deficient, including that the 

affidavit was not filed in the name of the holder of the international 

registration, the deficiency may be corrected after the statutory 

time period, within the time prescribed after notification of the 

deficiency. Such submission shall be accompanied by the additional 

deficiency surcharge prescribed by the Director. 

‘‘(d) NOTICE OF REQUIREMENT.—Special notice of the requirement for such affidavit shall be attached to each certificate of 

extension of protection. 

‘‘(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.—The Director 

shall notify the holder of the international registration who files 

any affidavit required by this section of the Director’s acceptance 

or refusal thereof and, in the case of a refusal, the reasons therefor. 

‘‘(f) DESIGNATION OF RESIDENT FOR SERVICE OF PROCESS AND

NOTICES.—If the holder of the international registration of the 

mark is not domiciled in the United States, the holder may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a 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 last designated address, or if the holder does 

not designate by a document filed in the United States Patent 

and Trademark Office the name and address of a 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 on the Director.’’. 

SEC. 4. STUDY AND REPORT. 

(a) IN GENERAL.—Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with 
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the Intellectual Property Enforcement Coordinator, shall study and 

report to the Committee on the Judiciary of the Senate and the 

Committee on the Judiciary of the House of Representatives on— 

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

by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope 

of the rights granted to the trademark owner; and 

(2) the best use of Federal Government services to protect 

trademarks and prevent counterfeiting. 

(b) RECOMMENDATIONS.—The study and report required under 

paragraph (1) shall also include any policy recommendations the 

Secretary of Commerce and the Intellectual Property Enforcement 

Coordinator deem appropriate. 

Speaker of the House of Representatives. 

Vice President of the United States and

President of the Senate.