Union Calendar No. 427

103D CONGRESS

2D SESSION H. R. 2129

[Report No. 103–780]

A BILL

To amend the Trademark Act of 1946 to provide

other purposes.sions of certain international conventions, and forused in commerce, in order to carry out provifor the registration and protection of trademarks

OCTOBER 3, 1994

Reported with an amendment, committed to the Commitordered to be printed tee of the Whole House on the State of the Union, and
IB

Union Calendar No. 427

103D CONGRESS

2D SESSION H. R. 2129

[Report No. 103–780]

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

OCTOBER 3, 1994

Reported with an amendment, committed to the Committee of the Whole

House on the State of the Union, and ordered to be printed

[Strike out all after the enacting clause and insert the part printed in italic]

[For text of introduced bill, see copy of bill as introduced on May 17, 1993]

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,
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1 SECTION 1. SHORT TITLE.

2 This Act may be cited as the ‘‘Madrid Protocol Imple3 mentation Act’’.

4 SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RE5 LATING TO THE MADRID AGREEMENT CON6 CERNING THE INTERNATIONAL REGISTRA7 TION OF MARKS.

8 The Act entitled ‘‘An Act to provide for the registration

9 and protection of trade-marks used in commerce, to carry

10 out the provisions of certain international conventions, and

11 for other purposes’’, approved July 5, 1946, as amended (15

12 U.S.C. 1051 and following) (commonly referred to as the

13 ‘‘Trademark Act of 1946’’) is amended by adding after sec14 tion 51 the following new title:

15 ‘‘TITLE XII—THE MADRID PROTOCOL

16 ‘‘SEC. 60. DEFINITIONS.

17 ‘‘For purposes of this title:

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

19 Protocol’ means the Protocol Relating to the Madrid

20 Agreement Concerning the International Registration

21 of Marks, adopted at Madrid, Spain, on June 27,

22 1989.

23 ‘‘(2) BASIC APPLICATION.—The term ‘basic ap24 plication’ means the application for the registration

25 of a mark that has been filed with an Office of a Con26 tracting Party and that constitutes the basis for an
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1 application for the international registration of that

2 mark.

3 ‘‘(3) BASIC REGISTRATION.—The term ‘basic reg4 istration’ means the registration of a mark that has

5 been granted by an Office of a Contracting Party and

6 that constitutes the basis for an application for the

7 international registration of that mark.

8 ‘‘(4) CONTRACTING PARTY.—The term ‘Contract9 ing Party’ means any country or inter-governmental

10 organization that is a party to the Madrid Protocol.

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

12 recordal’ means the date on which a request for exten13 sion of protection that is filed after an international

14 registration is granted is recorded on the Inter15 national Register.

16 ‘‘(6) DECLARATION OF BONA FIDE INTENTION TO

17 USE THE MARK IN COMMERCE.—The term ‘declara18 tion of bona fide intention to use the mark in com19 merce’ means a declaration that is signed by the ap20 plicant for, or holder of, an international registration

21 who is seeking extension of protection of a mark to the

22 United States and that contains a statement that—

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

24 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, corporation,

3 or association in whose behalf he or she makes

4 the declaration, to be entitled to use the mark in

5 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 to

14 cause mistake, or to deceive.

15 ‘‘(7) EXTENSION OF PROTECTION.—The term ‘ex16 tension of protection’ means the protection resulting

17 from an international registration that extends to a

18 Contracting Party at the request of the holder of the

19 international registration, in accordance with the

20 Madrid Protocol.

21 ‘‘(8) HOLDER OF AN INTERNATIONAL REGISTRA22 TION.—A ‘holder’ of an international registration is

23 the natural or juristic person in whose name the

24 international registration is recorded on the Inter25 national 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 Organization.

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

9 ‘International Register’ means the official collection of

10 such data concerning international registrations

11 maintained by the International Bureau that the Ma12 drid Protocol or its implementing regulations require

13 or permit to be recorded, regardless of the medium

14 which contains such data.

15 ‘‘(12) INTERNATIONAL REGISTRATION.—The term

16 ‘international registration’ means the registration of

17 a mark granted under the Madrid Protocol.

18 ‘‘(13) INTERNATIONAL REGISTRATION DATE.—

19 The term ‘international registration date’ means the

20 date assigned to the international registration by the

21 International Bureau.

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

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

24 Office of a Contracting Party to the International
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1 Bureau declaring that an extension of protection can2 not 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 a

6 Contracting Party that is responsible for the reg7 istration of marks, or

8 ‘‘(B) the common office, or governmental en9 tity, of more than 1 Contracting Party that is

10 responsible for the registration of marks and is

11 so recognized by the International Bureau.

12 ‘‘(16) OFFICE OF ORIGIN.—The term ‘office of or13 igin’ 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 reg-
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1 istration granted by the Patent and Trademark Office,

2 who—

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

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

5 ‘‘(3) has a real and effective industrial or com6 mercial establishment in the United States,

7 may file an international application by submitting to the

8 Patent and Trademark Office a written application in such

9 form, together with such fees, as may be prescribed by the

10 Commissioner.

11 ‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI12 CATION.

13 ‘‘Upon the filing of an application for international

14 registration and payment of the prescribed fees, the Com15 missioner shall examine the international application for

16 the purpose of certifying that the information contained in

17 the international application corresponds to the informa18 tion contained in the basic application or basic registration

19 at the time of the certification. Upon examination and cer20 tification of the international application, the Commis21 sioner shall transmit the international application to the

22 International Bureau.
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1 ‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION,

2 OR EXPIRATION OF A BASIC APPLICATION OR

3 BASIC REGISTRATION.

4 ‘‘With respect to an international application trans5 mitted to the International Bureau under section 62, the

6 Commissioner shall notify the International Bureau when7 ever the basic application or basic registration which is the

8 basis for the international application has been restricted,

9 abandoned, or cancelled, or has expired, with respect to

10 some or all of the goods and services listed in the inter11 national registration—

12 ‘‘(1) within 5 years after the international reg13 istration date; or

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

15 registration date if the restriction, abandonment, or

16 cancellation of the basic application or basic registra17 tion resulted from an action that began before the end

18 of that 5-year period.

19 ‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB20 SEQUENT TO INTERNATIONAL REGISTRA21 TION.

22 ‘‘The holder of an international registration that is

23 based upon a basic application filed with the Patent and

24 Trademark Office or a basic registration granted by the

25 Patent and Trademark Office may request an extension of
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1 protection of its international registration by filing such

2 a request—

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

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

5 transmittal to the International Bureau, if the request

6 is in such form, and contains such transmittal fee, as

7 may be prescribed by the Commissioner.

8 ‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER9 NATIONAL REGISTRATION TO THE UNITED

10 STATES UNDER THE MADRID PROTOCOL.

11 ‘‘(a) IN GENERAL.—Subject to the provisions of section

12 68, the holder of an international registration shall be enti13 tled to the benefits of extension of protection of that inter14 national registration to the United States to the extent nec15 essary to give effect to any provision of the Madrid Protocol.

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

17 extension of protection resulting from an international reg18 istration of a mark shall not apply to the United States

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

20 with respect to that mark.

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

22 OF PROTECTION OF AN INTERNATIONAL REG23 ISTRATION TO THE UNITED STATES.

24 ‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION OF

25 PROTECTION.—A request for extension of protection of an
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1 international registration to the United States that the

2 International Bureau transmits to the Patent and Trade3 mark Office shall be deemed to be properly filed in the Unit4 ed States if such request, when received by the International

5 Bureau, has attached to it a declaration of bona fide inten6 tion to use the mark in commerce that is verified by the

7 applicant for, or holder of, the international registration.

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

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

10 the request for extension of protection under subsection (a)

11 shall constitute constructive use of the mark, conferring the

12 same rights as those specified in section 7(c), as of the earli13 est of the following:

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

15 request for extension of protection was filed in the

16 international application.

17 ‘‘(2) The date of recordal of the request for exten18 sion of protection, if the request for extension of pro19 tection was made after the international registration

20 date.

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

22 section 67.
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1 ‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN2 SION OF PROTECTION TO THE UNITED

3 STATES.

4 ‘‘The holder of an international registration with an

5 extension of protection to the United States shall be entitled

6 to claim a date of priority based on the right of priority

7 within the meaning of Article 4 of the Paris Convention

8 for the Protection of Industrial Property if—

9 ‘‘(1) the international registration contained a

10 claim of such priority; and

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

12 a request for extension of protection to the United

13 States, or

14 ‘‘(B) the date of recordal of the request for exten15 sion of protection to the United States is not later

16 than 6 months after the date of the first regular na17 tional filing (within the meaning of Article 4(A)(3)

18 of the Paris Convention for the Protection of Indus19 trial Property) or a subsequent application (within

20 the meaning of Article 4(C)(4) of the Paris Conven21 tion).

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

23 FOR EXTENSION OF PROTECTION; NOTIFICA24 TION OF REFUSAL.

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

26 for extension of protection described in section 66(a) shall
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1 be examined as an application for registration on the Prin2 cipal Register under this Act, and if on such examination

3 it appears that the applicant is entitled to extension of pro4 tection under this title, the Commissioner shall cause the

5 mark to be published in the Official Gazette of the Patent

6 and Trademark Office.

7 ‘‘(2) Subject to the provisions of subsection (c), a re8 quest for extension of protection under this title shall be

9 subject to opposition under section 13. Unless successfully

10 opposed, the request for extension of protection shall not be

11 refused.

12 ‘‘(3) Extension of protection shall not be refused under

13 this section on the ground that the mark has not been used

14 in commerce.

15 ‘‘(4) Extension of protection shall be refused under this

16 section to any mark not registrable on the Principal Reg17 ister.

18 ‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for ex19 tension of protection is refused under subsection (a), the

20 Commissioner shall declare in a notification of refusal (as

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

22 cannot be granted, together with a statement of all grounds

23 on which the refusal was based.

24 ‘‘(c) NOTICE TO INTERNATIONAL BUREAU.—(1) With25 in 18 months after the date on which the International Bu-
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1 reau transmits to the Patent and Trademark Office a notifi2 cation of a request for extension of protection, the Commis3 sioner shall transmit to the International Bureau any of

4 the following that applies to such request:

5 ‘‘(A) A notification of refusal based on an exam6 ination of the request for extension of protection.

7 ‘‘(B) A notification of refusal based on the filing

8 of an opposition to the request.

9 ‘‘(C) A notification of the possibility that an op10 position to the request may be filed after the end of

11 that 18-month period.

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

13 possibility of opposition under paragraph (1)(C), the Com14 missioner shall, if applicable, transmit to the International

15 Bureau a notification of refusal on the basis of the opposi16 tion, together with a statement of all the grounds for the

17 opposition, within 7 months after the beginning of the oppo18 sition period or within 1 month after the end of the opposi19 tion period, whichever is earlier.

20 ‘‘(3) If a notification of refusal of a request for exten21 sion of protection is transmitted under paragraph (1) or

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

23 set forth in such notification may be transmitted to the

24 International Bureau by the Commissioner after the expira-
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1 tion of the time periods set forth in paragraph (1) or (2),

2 as the case may be.

3 ‘‘(4) If a notification specified in paragraph (1) or (2)

4 is not sent to the International Bureau within the time pe5 riod set forth in such paragraph, with respect to a request

6 for extension of protection, the request for extension of pro7 tection shall not be refused and the Commissioner shall issue

8 a certificate of extension of protection pursuant to the re9 quest.

10 ‘‘(d) DESIGNATION OF AGENT FOR SERVICE OF PROC11 ESS.—In responding to a notification of refusal with re12 spect to a mark, the holder of the international registration

13 of the mark shall designate, by a written document filed

14 in the Patent and Trademark Office, the name and address

15 of a person resident in the United States on whom may

16 be served notices or process in proceedings affecting the

17 mark. Such notices or process may be served upon the per18 son so designated by leaving with that person, or mailing

19 to that person, a copy thereof at the address specified in

20 the last designation so filed. If the person so designated can21 not be found at the address given in the last designation,

22 such notice or process may be served upon the Commis23 sioner.
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1 ‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.

2 ‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—Un3 less a request for extension of protection is refused under

4 section 68, the Commissioner shall issue a certificate of ex5 tension of protection pursuant to the request and shall cause

6 notice of such certificate of extension of protection to be pub7 lished in the Official Gazette of the Patent and Trademark

8 Office.

9 ‘‘(b) EFFECT OF EXTENSION OF PROTECTION.—From

10 the date on which a certificate of extension of protection

11 is issued under subsection (a)—

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

13 same effect and validity as a registration on the Prin14 cipal Register, and

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

16 shall have the same rights and remedies as the owner

17 of a registration on the Principal Register.

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

19 THE UNITED STATES ON THE UNDERLYING

20 INTERNATIONAL REGISTRATION.

21 ‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL

22 REGISTRATION.—If the International Bureau notifies the

23 Patent and Trademark Office of the cancellation of an

24 international registration with respect to some or all of the

25 goods and services listed in the international registration,

26 the Commissioner shall cancel any extension of protection
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1 to the United States with respect to such goods and services

2 as of the date on which the international registration was

3 cancelled.

4 ‘‘(b) EFFECT OF FAILURE TO RENEW INTERNATIONAL

5 REGISTRATION.—If the International Bureau does not

6 renew an international registration, the corresponding ex7 tension of protection to the United States shall cease to be

8 valid as of the date of the expiration of the international

9 registration.

10 ‘‘(c) TRANSFORMATION OF AN EXTENSION OF PROTEC11 TION INTO A UNITED STATES APPLICATION.—The holder

12 of an international registration cancelled in whole or in

13 part by the International Bureau at the request of the office

14 of origin, under Article 6(4) of the Madrid Protocol, may

15 file an application, under section 1 or 44 of this Act, for

16 the registration of the same mark for any of the goods and

17 services to which the cancellation applies that were covered

18 by an extension of protection to the United States based

19 on that international registration. Such an application

20 shall be treated as if it had been filed on the international

21 registration date or the date of recordal of the request for

22 extension of protection with the International Bureau,

23 whichever date applies, and, if the extension of protection

24 enjoyed priority under section 67 of this title, shall enjoy

25 the same priority. Such an application shall be entitled to
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1 the benefits conferred by this subsection only if the applica2 tion is filed not later than 3 months after the date on which

3 the international registration was canceled, in whole or in

4 part, and only if the application complies with all the re5 quirements of this Act which apply to any application filed

6 pursuant to section 1 or 44.

7 ‘‘SEC. 71. AFFIDAVITS AND FEES.

8 ‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An extension

9 of protection for which a certificate of extension of protec10 tion has been issued under section 69 shall remain in force

11 for the term of the international registration upon which

12 it is based, except that the extension of protection of any

13 mark shall be cancelled by the Commissioner—

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

15 the date on which the certificate of extension of pro16 tection was issued by the Commissioner, unless within

17 the 1-year period preceding the expiration of that 6-

18 year period the holder of the international registra19 tion files in the Patent and Trademark Office an affi20 davit under subsection (b) together with a fee pre21 scribed by the Commissioner; and

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

23 on the date on which the certificate of extension of

24 protection was issued by the Commissioner, and at

25 the end of each 10-year period thereafter, unless—
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1 ‘‘(A) within the 6-month period preceding

2 the expiration of such 10-year period the holder

3 of the international registration files in the Pat4 ent and Trademark Office an affidavit under

5 subsection (b) together with a fee prescribed by

6 the Commissioner; or

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

8 of such 10-year period, the holder of the inter9 national registration files in the Patent and

10 Trademark Office an affidavit under subsection

11 (b) together with the fee described in subpara12 graph (A) and an additional fee prescribed by

13 the Commissioner.

14 ‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit referred

15 to in subsection (a) shall set forth those goods or services

16 recited in the extension of protection on or in connection

17 with which the mark is in use in commerce and the holder

18 of the international registration shall attach to the affidavit

19 a specimen or facsimile showing the current use of the mark

20 in commerce, or shall set forth that any nonuse is due to

21 special circumstances which excuse such nonuse and is not

22 due to any intention to abandon the mark. Special notice

23 of the requirement for such affidavit shall be attached to

24 each certificate of extension of protection.
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1 ‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

2 ‘‘An extension of protection may be assigned, together

3 with the goodwill associated with the mark, only to a person

4 who is a national of, is domiciled in, or has a bona fide

5 and effective industrial or commercial establishment either

6 in a country that is a Contracting Party or in a country

7 that is a member of an intergovernmental organization that

8 is a Contracting Party.

9 ‘‘SEC. 73. INCONTESTABILITY.

10 ‘‘The period of continuous use prescribed under section

11 15 for a mark covered by an extension of protection issued

12 under this title may begin no earlier than the date on which

13 the Commissioner issues the certificate of the extension of

14 protection under section 69, except as provided in section

15 74.

16 ‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

17 ‘‘An extension of protection shall convey the same

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

19 ‘‘(1) the extension of protection and the existing

20 registration are owned by the same person;

21 ‘‘(2) the goods and services listed in the existing

22 registration are also listed in the extension of protec23 tion; and

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

25 issued after the date of the existing registration.’’.
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1 SEC. 3. EFFECTIVE DATE.

2 Subject to the satisfactory resolution of the issues relat3 ing to voting rights of member nations under the Madrid

4 Protocol, this Act shall take effect on the date on which the

5 Madrid Protocol enters into force with respect to the United

6 States.

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