I

103D CONGRESS

1ST SESSION H. R. 2129

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

MAY 17, 1993

Mr. HUGHES (for himself and Mr. MOORHEAD) 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.

20 ‘‘SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNIT21 ED STATES APPLICATIONS OR REGISTRA22 TIONS.

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

24 Patent and Trademark Office, or the owner of a basic reg25 istration granted by the Patent and Trademark Office,
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1 may file an international application by submitting to the

2 Patent and Trademark Office a written application in

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

4 by the Commissioner.

5 ‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI6 CATION.

7 ‘‘Upon the filing of an application for international

8 registration and payment of the prescribed fees, the Com9 missioner shall examine the international application for

10 the purpose of certifying that the information contained

11 in the international application corresponds to the infor12 mation contained in the basic application or basic registra13 tion at the time of the certification. Upon examination and

14 certification of the international application, the Commis15 sioner shall transmit the international application to the

16 International Bureau.

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

18 OR EXPIRATION OF A BASIC APPLICATION OR

19 BASIC REGISTRATION.

20 ‘‘With respect to an international application trans21 mitted to the International Bureau under section 62, the

22 Commissioner shall notify the International Bureau when23 ever the basic application or basic registration which is

24 the basis for the international application has been re25 stricted, abandoned, or cancelled, or has expired, with re-
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1 spect to some or all of the goods and services listed in

2 the international registration—

3 ‘‘(1) within 5 years after the international reg4 istration date; or

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

6 registration date if the restriction, abandonment, or

7 cancellation of the basic application or basic reg8 istration resulted from an action that began before

9 the end of that 5-year period.

10 ‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB11 SEQUENT TO INTERNATIONAL REGISTRA12 TION.

13 ‘‘The holder of an international registration that is

14 based upon a basic application filed with the Patent and

15 Trademark Office or a basic registration granted by the

16 Patent and Trademark Office may request an extension

17 of protection of its international registration by filing such

18 a request—

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

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

21 transmittal to the International Bureau, if the re22 quest is in such form, and contains such transmittal

23 fee, as may be prescribed by the Commissioner.
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1 ‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER2 NATIONAL REGISTRATION TO THE UNITED

3 STATES UNDER THE MADRID PROTOCOL.

4 ‘‘(a) IN GENERAL.—Subject to the provisions of sec5 tion 68, the holder of an international registration shall

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

7 international registration to the United States to the ex8 tent necessary to give effect to any provision of the Madrid

9 Protocol.

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

11 extension of protection resulting from an international

12 registration of a mark shall not apply to the United States

13 if the Patent and Trademark Office is the office of origin

14 with respect to that mark.

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

16 OF PROTECTION OF AN INTERNATIONAL

17 REGISTRATION TO THE UNITED STATES.

18 ‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION

19 OF PROTECTION.—A request for extension of protection

20 of an international registration to the United States that

21 the International Bureau transmits to the Patent and

22 Trademark Office shall be deemed to be properly filed in

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

24 International Bureau, has attached to it a declaration of

25 bona fide intention to use the mark in commerce that is
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1 verified by the applicant for, or holder of, the international

2 registration.

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

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

5 of the request for extension of protection under subsection

6 (a) shall constitute constructive use of the mark, confer7 ring the same rights as those specified in section 7(c), as

8 of the earliest of the following:

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

10 request for extension of protection was filed in the

11 international application.

12 ‘‘(2) The date of recordal of the request for ex13 tension of protection, if the request for extension of

14 protection was made after the international registra15 tion date.

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

17 section 67.

18 ‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN19 SION OF PROTECTION TO THE UNITED

20 STATES.

21 ‘‘The holder of an international registration with an

22 extension of protection to the United States shall be enti23 tled to claim a date of priority based on the right of prior24 ity within the meaning of Article 4 of the Paris Convention

25 for the Protection of Industrial Property if—
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1 ‘‘(1) the international registration contained a

2 claim of such priority; and

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

4 a request for extension of protection to the United

5 States, or

6 ‘‘(B) the date of recordal of the request for ex7 tension of protection to the United States is not

8 later than 6 months after the date of the first regu9 lar national filing (within the meaning of Article

10 4(A)(3) of the Paris Convention for the Protection

11 of Industrial Property) or a subsequent application

12 (within the meaning of Article 4(C)(4) of the Paris

13 Convention).

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

15 FOR EXTENSION OF PROTECTION; NOTIFICA16 TION OF REFUSAL.

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

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

19 be examined as an application for registration on the Prin20 cipal Register under this Act, and if on such examination

21 it appears that the applicant is entitled to extension of

22 protection under this title, the Commissioner shall cause

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

24 Patent and Trademark Office.
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1 ‘‘(2) Subject to the provisions of subsection (c), a re2 quest for extension of protection under this title shall be

3 subject to opposition under section 13. Unless successfully

4 opposed, the request for extension of protection shall not

5 be refused.

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

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

8 been used in commerce.

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

10 this section to any mark not registrable on the Principal

11 Register.

12 ‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for

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

14 Commissioner shall declare in a notification of refusal (as

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

16 cannot be granted, together with a statement of all

17 grounds on which the refusal was based.

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

19 Within 18 months after the date on which the Inter20 national Bureau transmits to the Patent and Trademark

21 Office a notification of a request for extension of protec22 tion, the Commissioner shall transmit to the International

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

24 ‘‘(A) A notification of refusal based on an ex25 amination of the request for extension of protection.
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1 ‘‘(B) A notification of refusal based on the fil2 ing of an opposition to the request.

3 ‘‘(C) A notification of the possibility that an op4 position to the request may be filed after the end of

5 that 18-month period.

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

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

8 Commissioner shall, if applicable, transmit to the Inter9 national Bureau a notification of refusal on the basis of

10 the opposition, together with a statement of all the

11 grounds for the opposition, within 7 months after the be12 ginning of the opposition period or within 1 month after

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

14 ‘‘(3) If a notification of refusal of a request for exten15 sion of protection is transmitted under paragraph (1) or

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

17 those set forth in such notification may be transmitted to

18 the International Bureau by the Commissioner after the

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

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

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

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

23 period set forth in such paragraph, with respect to a re24 quest for extension of protection, the request for extension

25 of protection shall not be refused and the Commissioner
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1 shall issue a certificate of extension of protection pursuant

2 to the request.

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

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

5 respect to a mark, the holder of the international registra6 tion of the mark shall designate, by a written document

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

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

9 may be served notices or process in proceedings affecting

10 the mark. Such notices or process may be served upon

11 the person so designated by leaving with that person, or

12 mailing to that person, a copy thereof at the address speci13 fied in the last designation so filed. If the person so des14 ignated cannot be found at the address given in the last

15 designation, such notice or process may be served upon

16 the Commissioner.

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

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

19 Unless a request for extension of protection is refused

20 under section 68, the Commissioner shall issue a certifi21 cate of extension of protection pursuant to the request and

22 shall cause notice of such certificate of extension of protec23 tion to be published in the Official Gazette of the Patent

24 and Trademark Office.
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1 ‘‘(b) EFFECT OF EXTENSION OF PROTECTION.—

2 From the date on which a certificate of extension of pro3 tection is issued under subsection (a)—

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

5 same effect and validity as a registration on the

6 Principal Register, and

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

8 shall have the same rights and remedies as the

9 owner of a registration on the Principal Register.

10 ‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO

11 THE UNITED STATES ON THE UNDERLYING

12 INTERNATIONAL REGISTRATION.

13 ‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL

14 REGISTRATION.—If the International Bureau notifies the

15 Patent and Trademark Office of the cancellation of an

16 international registration with respect to some or all of

17 the goods and services listed in the international registra18 tion, the Commissioner shall cancel any extension of pro19 tection to the United States with respect to such goods

20 and services as of the date on which the international reg21 istration was cancelled.

22 ‘‘(b) EFFECT OF FAILURE TO RENEW INTER23 NATIONAL REGISTRATION.—If the International Bureau

24 does not renew an international registration, the cor25 responding extension of protection to the United States
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1 shall cease to be valid as of the date of the expiration of

2 the international registration.

3 ‘‘(c) TRANSFORMATION OF AN EXTENSION OF PRO4 TECTION INTO A UNITED STATES APPLICATION.—The

5 holder of an international registration cancelled in whole

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

7 the office of origin, under Article 6(4) of the Madrid Pro8 tocol, may file an application, under section 1 or 44 of

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

10 of the goods and services to which the cancellation applies

11 that were covered by an extension of protection to the

12 United States based on that international registration.

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

14 on the international registration date or the date of

15 recordal of the request for extension of protection with the

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

17 extension of protection enjoyed priority under section 67

18 of this title, shall enjoy the same priority. Such an applica19 tion shall be entitled to the benefits conferred by this sub20 section only if the application is filed not later than 3

21 months after the date on which the international registra22 tion was canceled, in whole or in part, and only if the ap23 plication complies with all the requirements of this Act

24 which apply to any application filed pursuant to section

25 1 or 44.
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1 ‘‘SEC. 71. AFFIDAVITS AND FEES.

2 ‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An exten3 sion of protection for which a certificate of extension of

4 protection has been issued under section 69 shall remain

5 in force for the term of the international registration upon

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

7 of any mark shall be cancelled by the Commissioner—

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

9 on the date on which the certificate of extension of

10 protection was issued by the Commissioner, unless

11 within the 1-year period preceding the expiration of

12 that 6-year period the holder of the international

13 registration files in the Patent and Trademark Of14 fice an affidavit under subsection (b) together with

15 a fee prescribed by the Commissioner; and

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

17 on the date on which the certificate of extension of

18 protection was issued by the Commissioner, and at

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

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

21 the expiration of such 10-year period the holder

22 of the international registration files in the Pat23 ent and Trademark Office an affidavit under

24 subsection (b) together with a fee prescribed by

25 the Commissioner; or
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1 ‘‘(B) within 3 months after the expiration

2 of such 10-year period, the holder of the inter3 national registration files in the Patent and

4 Trademark Office an affidavit under subsection

5 (b) together with the fee described in subpara6 graph (A) and an additional fee prescribed by

7 the Commissioner.

8 ‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit re9 ferred to in subsection (a) shall set forth those goods or

10 services recited in the extension of protection on or in con11 nection with which the mark is in use in commerce and

12 the holder of the international registration shall attach to

13 the affidavit a specimen or facsimile showing the current

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

15 nonuse is due to special circumstances which excuse such

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

17 mark. Special notice of the requirement for such affidavit

18 shall be attached to each certificate of extension of protec19 tion.

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

21 ‘‘An extension of protection may be assigned, to22 gether with the goodwill associated with the mark, only

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

24 a bona fide and effective industrial or commercial estab25 lishment either in a country that is a Contracting Party
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1 or in a country that is a member of an intergovernmental

2 organization that is a Contracting Party.

3 ‘‘SEC. 73. INCONTESTABILITY.

4 ‘‘The period of continuous use prescribed under sec5 tion 15 for a mark covered by an extension of protection

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

7 on which the Commissioner issues the certificate of the

8 extension of protection by under section 69.’’.

9 SEC. 3. EFFECTIVE DATE.

10 This Act shall take effect on the date on which the

11 Madrid Protocol enters into force with respect to the Unit12 ed States.

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