I 

111TH CONGRESS 

2D SESSION S. 2968 

IN THE HOUSE OF REPRESENTATIVES 

JANUARY 29, 2010 

Referred to the Committee on the Judiciary 

AN ACT 

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, 


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1 SECTION 1. SHORT TITLE. 

2 This Act may be cited as the ‘‘Trademark Technical 

3 and Conforming Amendment Act of 2010.’’. 

4 SEC. 2. DEFINITION. 

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

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

7 the registration and protection of trademarks used in com8 merce, to carry out the provisions of certain international 

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

10 1946 (commonly referred to as the ‘‘Lanham Act’’; 15 

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

12 SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS. 

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

14 the Trademark Act of 1946 (15 U.S.C. 1057) is amend15 ed— 

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

17 and Trademark Office’’ each place that term ap18 pears; 

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

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

21 (3) in subsection (e)— 

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

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

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

25 if said certificate is lost or destroyed, upon a 

26 certified copy thereof’’; and 


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1 (4) by amending subsection (g) to read as fol2 lows: 

3 ‘‘(g) CORRECTION OF PATENT AND TRADEMARK OF4 FICE MISTAKE.—Whenever a material mistake in a reg5 istration, incurred through the fault of the United States 

6 Patent and Trademark Office, is clearly disclosed by the 

7 records of the Office a certificate stating the fact and na8 ture of such mistake shall be issued without charge and 

9 recorded and a printed copy thereof shall be attached to 

10 each printed copy of the registration and such corrected 

11 registration shall thereafter have the same effect as if the 

12 same had been originally issued in such corrected form, 

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

14 registration may be issued without charge. All certificates 

15 of correction heretofore issued in accordance with the rules 

16 of the United States Patent and Trademark Office and 

17 the registrations to which they are attached shall have the 

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

19 had been specifically authorized by statute.’’. 

20 (b) INCONTESTABILITY OF RIGHT TO USE MARK

21 UNDER CERTAIN CONDITIONS.—Section 15 of the Trade22 mark Act of 1946 (15 U.S.C. 1065) is amended— 

23 (1) by striking ‘‘right of the registrant’’ and in24 serting ‘‘right of the owner’’; 


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1 (2) by amending paragraph (1) to read as fol2 lows: 

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

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

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

6 register the same or to keep the same on the reg7 ister; and’’; and 

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

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

10 (c) APPEAL TO COURTS.—Section 21 of the Trade11 mark Act of 1946 (15 U.S.C. 1071) is amended— 

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

13 and Trademark Office’’ each place that term ap14 pears; 

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

16 71’’ after ‘‘section 8’’; and 

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

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

19 (d) CONFORMING REQUIREMENTS FOR AFFIDA20 VITS.— 

21 (1) DURATION, AFFIDAVITS AND FEES.—Sec22 tion 8 of the Trademark Act of 1946 (15 U.S.C. 

23 1058) is amended to read as follows: 


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

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

3 Each registration shall remain in force for 10 years, ex4 cept that the registration of any mark shall be canceled 

5 by the Director unless the owner of the registration files 

6 in the United States Patent and Trademark Office affida7 vits that meet the requirements of subsection (b), within 

8 the following time periods: 

9 ‘‘(1) Within the 1-year period immediately pre10 ceding the expiration of 6 years following the date 

11 of registration under this Act or the date of the pub12 lication under section 12(c). 

13 ‘‘(2) Within the 1-year period immediately pre14 ceding the expiration of 10 years following the date 

15 of registration, and each successive 10-year period 

16 following the date of registration. 

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

18 under this section within the 6-month grace period 

19 immediately following the expiration of the periods 

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

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

22 grace period surcharge prescribed by the Director. 

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

24 referred to in subsection (a) shall— 

25 ‘‘(1)(A) state that the mark is in use in com26 merce; 


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

2 the registration on or in connection with which the 

3 mark is in use in commerce; 

4 ‘‘(C) be accompanied by such number of speci5 mens or facsimiles showing current use of the mark 

6 in commerce as may be required by the Director; 

7 and 

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

9 the Director; or 

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

11 in the registration on or in connection with which 

12 the mark is not in use in commerce; 

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

14 to special circumstances which excuse such nonuse 

15 and is not due to any intention to abandon the 

16 mark; and 

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

18 the Director. 

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

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

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

22 the owner of the registration, the deficiency may be cor23 rected after the statutory time period, within the time pre24 scribed after notification of the deficiency. Such submisVerDate Nov 24 2008 21:57 Jan 29, 2010 Jkt 089200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\S2968.RFH S2968

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1 sion shall be accompanied by the additional deficiency sur2 charge prescribed by the Director. 

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

4 the requirement for such affidavit shall be attached to 

5 each certificate of registration and notice of publication 

6 under section 12(c). 

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

8 The Director shall notify any owner who files any affidavit 

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

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

11 therefor. 

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

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

14 in the United States, the owner may designate, by a docu15 ment filed in the United States Patent and Trademark 

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

17 United States on whom may be served notices or process 

18 in proceedings affecting the mark. Such notices or process 

19 may be served upon the person so designated by leaving 

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

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

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

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

24 a document filed in the United States Patent and Trade25 mark Office the name and address of a person resident 


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

2 process in proceedings affecting the mark, such notices or 

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

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

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

6 amended to read as follows: 

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

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

9 Each extension of protection for which a certificate has 

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

11 term of the international registration upon which it is 

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

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

14 international registration files in the United States Patent 

15 and Trademark Office affidavits that meet the require16 ments of subsection (b), within the following time periods: 

17 ‘‘(1) Within the 1-year period immediately pre18 ceding the expiration of 6 years following the date 

19 of issuance of the certificate of extension of protec20 tion. 

21 ‘‘(2) Within the 1-year period immediately pre22 ceding the expiration of 10 years following the date 

23 of issuance of the certificate of extension of protec24 tion, and each successive 10-year period following 


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1 the date of issuance of the certificate of extension of 

2 protection. 

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

4 under this section within a grace period of 6 months 

5 after the end of the applicable time period estab6 lished in paragraph (1) or (2), together with the fee 

7 described in subsection (b) and the additional grace 

8 period surcharge prescribed by the Director. 

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

10 referred to in subsection (a) shall— 

11 ‘‘(1)(A) state that the mark is in use in com12 merce; 

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

14 the extension of protection on or in connection with 

15 which the mark is in use in commerce; 

16 ‘‘(C) be accompanied by such number of speci17 mens or facsimiles showing current use of the mark 

18 in commerce as may be required by the Director; 

19 and 

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

21 the Director; or 

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

23 in the extension of protection on or in connection 

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


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

2 to special circumstances which excuse such nonuse 

3 and is not due to any intention to abandon the 

4 mark; and 

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

6 the Director. 

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

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

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

10 the holder of the international registration, the deficiency 

11 may be corrected after the statutory time period, within 

12 the time prescribed after notification of the deficiency. 

13 Such submission shall be accompanied by the additional 

14 deficiency surcharge prescribed by the Director. 

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

16 the requirement for such affidavit shall be attached to 

17 each certificate of extension of protection. 

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

19 The Director shall notify the holder of the international 

20 registration who files any affidavit required by this section 

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

22 case of a refusal, the reasons therefor. 

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

24 PROCESS AND NOTICES.—If the holder of the inter25 national registration of the mark is not domiciled in the 


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

2 filed in the United States Patent and Trademark Office, 

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

4 States on whom may be served notices or process in pro5 ceedings affecting the mark. Such notices or process may 

6 be served upon the person so designated by leaving with 

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

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

9 the person so designated cannot be found at the last des10 ignated address, or if the holder does not designate by a 

11 document filed in the United States Patent and Trade12 mark Office the name and address of a person resident 

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

14 process in proceedings affecting the mark, such notices or 

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

16 SEC. 4. STUDY AND REPORT. 

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

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

19 in consultation with the Intellectual Property Enforcement 

20 Coordinator, shall study and report to the Committee on 

21 the Judiciary of the Senate and the Committee on the Ju22 diciary of the House of Representatives on— 

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

24 harmed by litigation tactics by corporations attempt25 ing to enforce trademark rights beyond a reasonable 


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1 interpretation of the scope of the rights granted to 

2 the trademark owner; and 

3 (2) the best use of Federal Government services 

4 to protect trademarks and prevent counterfeiting. 

5 (b) RECOMMENDATIONS.—The study and report re6 quired under paragraph (1) shall also include any policy 

7 recommendations the Secretary of Commerce and the In8 tellectual Property Enforcement Coordinator deem appro9 priate. 

Passed the Senate January 28, 2010. 

Attest: NANCY ERICKSON, 

Secretary. 


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