IB
Union Calendar No. 122
105TH CONGRESS
1ST SESSION
H. R. 567
[Report No. 105–199]
To amend the Trademark Act of 1946 to provide for the registration and
protection of trademarks used in commerce, in order to carry out provi-
sions of certain international conventions, and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
FEBRUARY 4, 1997
Mr. COBLE introduced the following bill; which was referred to the Committee
on the Judiciary
JULY 24, 1997
Committed to the Committee of the Whole House on the State of the Union
and ordered to be printed
A BILL
To amend the Trademark Act of 1946 to provide for the
registration and protection of trademarks used in com-
merce, in order to carry out provisions of certain inter-
national conventions, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Madrid Protocol Imple-
mentation Act’’.
SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RE-
LATING TO THE MADRID AGREEMENT CON-
CERNING THE INTERNATIONAL REGISTRA-
TION OF MARKS.
The Act entitled ‘‘An Act to provide for the registra-
tion and protection of trade-marks used in commerce, to
carry out the provisions of certain international conven-
tions, and for other purposes’’, approved July 5, 1946, as
amended (15 U.S.C. 1051 and following) (commonly re-
ferred to as the ‘‘Trademark Act of 1946’’) is amended
by adding after section 51 the following new title:
‘‘TITLE XII—THE MADRID PROTOCOL
‘‘SEC. 60. DEFINITIONS.
‘‘For purposes of this title:
‘‘(1) MADRID
PROTOCOL.—The term ‘Madrid
Protocol’ means the Protocol Relating to the Madrid
Agreement Concerning the International Registra-
tion of Marks, adopted at Madrid, Spain, on June
27, 1989.
‘‘(2) BASIC APPLICATION.—The term ‘basic ap-
plication’ means the application for the registration
of a mark that has been filed with an Office of a
Contracting Party and that constitutes the basis for
an application for the international registration of
that mark.
‘‘(3) BASIC
REGISTRATION.—The term ‘basic
registration’ means the registration of a mark that
has been granted by an Office of a Contracting
Party and that constitutes the basis for an applica-
tion for the international registration of that mark.
‘‘(4) CONTRACTING
PARTY.—The term ‘Con-
tracting Party’ means any country or inter-govern-
mental organization that is a party to the Madrid
Protocol.
‘‘(5) DATE OF RECORDAL.—The term ‘date of
recordal’ means the date on which a request for ex-
tension of protection that is filed after an inter-
national registration is granted is recorded on the
International Register.
‘‘(6) DECLARATION OF BONA FIDE INTENTION
TO USE THE MARK IN COMMERCE.—The term ‘dec-
laration of bona fide intention to use the mark in
commerce’ means a declaration that is signed by the
applicant for, or holder of, an international registra-
tion who is seeking extension of protection of a mark
to the United States and that contains a statement
that—
‘‘(A) the applicant or holder has a bona
fide intention to use the mark in commerce,
‘‘(B) the person making the declaration be-
lieves himself or herself, or the firm, corpora-
tion, or association in whose behalf he or she
makes the declaration, to be entitled to use the
mark in commerce, and
‘‘(C) no other person, firm, corporation, or
association, to the best of his or her knowledge
and belief, has the right to use such mark in
commerce either in the identical form of the
mark or in such near resemblance to the mark
as to be likely, when used on or in connection
with the goods of such other person, firm, cor-
poration, or association, to cause confusion, or
to cause mistake, or to deceive.
‘‘(7) EXTENSION OF PROTECTION.—The term
‘extension of protection’ means the protection result-
ing from an international registration that extends
to a Contracting Party at the request of the holder
of the international registration, in accordance with
the Madrid Protocol.
‘‘(8) HOLDER
OF
AN
INTERNATIONAL
REG-
ISTRATION.—A ‘holder’ of an international registra-
tion is the natural or juristic person in whose name
the international registration is recorded on the
International Register.
‘‘(9) INTERNATIONAL APPLICATION.—The term
‘international application’ means an application for
international registration that is filed under the Ma-
drid Protocol.
‘‘(10) INTERNATIONAL
BUREAU.—The term
‘International Bureau’ means the International Bu-
reau of the World Intellectual Property Organiza-
tion.
‘‘(11) INTERNATIONAL
REGISTER.—The term
‘International Register’ means the official collection
of such data concerning international registrations
maintained by the International Bureau that the
Madrid Protocol or its implementing regulations re-
quire or permit to be recorded, regardless of the me-
dium which contains such data.
‘‘(12) INTERNATIONAL
REGISTRATION.—The
term ‘international registration’ means the registra-
tion of a mark granted under the Madrid Protocol.
‘‘(13) INTERNATIONAL REGISTRATION DATE.—
The term ‘international registration date’ means the
date assigned to the international registration by the
International Bureau.
‘‘(14) NOTIFICATION OF REFUSAL.—The term
‘notification of refusal’ means the notice sent by an
Office of a Contracting Party to the International
Bureau declaring that an extension of protection
cannot be granted.
‘‘(15) OFFICE OF A CONTRACTING PARTY.—The
term ‘Office of a Contracting Party’ means—
‘‘(A) the office, or governmental entity, of
a Contracting Party that is responsible for the
registration of marks, or
‘‘(B) the common office, or governmental
entity, of more than 1 Contracting Party that
is responsible for the registration of marks and
is so recognized by the International Bureau.
‘‘(16) OFFICE OF ORIGIN.—The term ‘office of
origin’ means the Office of a Contracting Party with
which a basic application was filed or by which a
basic registration was granted.
‘‘(17) OPPOSITION PERIOD.—The term ‘opposi-
tion period’ means the time allowed for filing an op-
position in the Patent and Trademark Office, includ-
ing any extension of time granted under section 13.
‘‘SEC. 
61. 
INTERNATIONAL 
APPLICATIONS 
BASED 
ON
UNITED 
STATES 
APPLICATIONS 
OR 
REG-
ISTRATIONS.
‘‘The owner of a basic application pending before the
Patent and Trademark Office, or the owner of a basic reg-
istration granted by the Patent and Trademark Office,
who—
‘‘(1) is a national of the United States,
‘‘(2) is domiciled in the United States, or
‘‘(3) has a real and effective industrial or com-
mercial establishment in the United States,
may file an international application by submitting to the
Patent and Trademark Office a written application in
such form, together with such fees, as may be prescribed
by the Commissioner.
‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI-
CATION.
‘‘Upon the filing of an application for international
registration and payment of the prescribed fees, the Com-
missioner shall examine the international application for
the purpose of certifying that the information contained
in the international application corresponds to the infor-
mation contained in the basic application or basic registra-
tion at the time of the certification. Upon examination and
certification of the international application, the Commis-
sioner shall transmit the international application to the
International Bureau.
‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION,
OR EXPIRATION OF A BASIC APPLICATION OR
BASIC REGISTRATION.
‘‘With respect to an international application trans-
mitted to the International Bureau under section 62, the
Commissioner shall notify the International Bureau when-
ever the basic application or basic registration which is
the basis for the international application has been re-
stricted, abandoned, or canceled, or has expired, with re-
spect to some or all of the goods and services listed in
the international registration—
‘‘(1) within 5 years after the international reg-
istration date; or
‘‘(2) more than 5 years after the international
registration date if the restriction, abandonment, or
cancellation of the basic application or basic reg-
istration resulted from an action that began before
the end of that 5-year period.
‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB-
SEQUENT 
TO 
INTERNATIONAL 
REGISTRA-
TION.
‘‘The holder of an international registration that is
based upon a basic application filed with the Patent and
Trademark Office or a basic registration granted by the
Patent and Trademark Office may request an extension
of protection of its international registration by filing such
a request—
‘‘(1) directly with the International Bureau, or
‘‘(2) with the Patent and Trademark Office for
transmittal to the International Bureau, if the re-
quest is in such form, and contains such transmittal
fee, as may be prescribed by the Commissioner.
‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER-
NATIONAL REGISTRATION TO THE UNITED
STATES UNDER THE MADRID PROTOCOL.
‘‘(a) IN GENERAL.—Subject to the provisions of sec-
tion 68, the holder of an international registration shall
be entitled to the benefits of extension of protection of that
international registration to the United States to the ex-
tent necessary to give effect to any provision of the Madrid
Protocol.
‘‘(b) IF UNITED STATES IS OFFICE OF ORIGIN.—An
extension of protection resulting from an international
registration of a mark shall not apply to the United States
if the Patent and Trademark Office is the office of origin
with respect to that mark.
‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION
OF PROTECTION OF AN INTERNATIONAL
REGISTRATION TO THE UNITED STATES.
‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION
OF PROTECTION.—A request for extension of protection
of an international registration to the United States that
the International Bureau transmits to the Patent and
Trademark Office shall be deemed to be properly filed in
the United States if such request, when received by the
International Bureau, has attached to it a declaration of
bona fide intention to use the mark in commerce that is
verified by the applicant for, or holder of, the international
registration.
‘‘(b) EFFECT OF PROPER FILING.—Unless extension
of protection is refused under section 68, the proper filing
of the request for extension of protection under subsection
(a) shall constitute constructive use of the mark, confer-
ring the same rights as those specified in section 7(c), as
of the earliest of the following:
‘‘(1) The international registration date, if the
request for extension of protection was filed in the
international application.
‘‘(2) The date of recordal of the request for ex-
tension of protection, if the request for extension of
protection was made after the international registra-
tion date.
‘‘(3) The date of priority claimed pursuant to
section 67.
‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN-
SION 
OF 
PROTECTION 
TO 
THE 
UNITED
STATES.
‘‘The holder of an international registration with an
extension of protection to the United States shall be enti-
tled to claim a date of priority based on the right of prior-
ity within the meaning of Article 4 of the Paris Convention
for the Protection of Industrial Property if—
‘‘(1) the international registration contained a
claim of such priority; and
‘‘(2)(A) the international application contained
a request for extension of protection to the United
States, or
‘‘(B) the date of recordal of the request for ex-
tension of protection to the United States is not
later than 6 months after the date of the first regu-
lar national filing (within the meaning of Article
4(A)(3) of the Paris Convention for the Protection
of Industrial Property) or a subsequent application
(within the meaning of Article 4(C)(4) of the Paris
Convention).
‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST
FOR EXTENSION OF PROTECTION; NOTIFICA-
TION OF REFUSAL.
‘‘(a) EXAMINATION AND OPPOSITION.—(1) A request
for extension of protection described in section 66(a) shall
be examined as an application for registration on the Prin-
cipal Register under this Act, and if on such examination
it appears that the applicant is entitled to extension of
protection under this title, the Commissioner shall cause
the mark to be published in the Official Gazette of the
Patent and Trademark Office.
‘‘(2) Subject to the provisions of subsection (c), a re-
quest for extension of protection under this title shall be
subject to opposition under section 13. Unless successfully
opposed, the request for extension of protection shall not
be refused.
‘‘(3) Extension of protection shall not be refused
under this section on the ground that the mark has not
been used in commerce.
‘‘(4) Extension of protection shall be refused under
this section to any mark not registrable on the Principal
Register.
‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for
extension of protection is refused under subsection (a), the
Commissioner shall declare in a notification of refusal (as
provided in subsection (c)) that the extension of protection
cannot be granted, together with a statement of all
grounds on which the refusal was based.
‘‘(c) NOTICE
TO
INTERNATIONAL
BUREAU.—(1)
Within 18 months after the date on which the Inter-
national Bureau transmits to the Patent and Trademark
Office a notification of a request for extension of protec-
tion, the Commissioner shall transmit to the International
Bureau any of the following that applies to such request:
‘‘(A) A notification of refusal based on an ex-
amination of the request for extension of protection.
‘‘(B) A notification of refusal based on the fil-
ing of an opposition to the request.
‘‘(C) A notification of the possibility that an op-
position to the request may be filed after the end of
that 18-month period.
‘‘(2) If the Commissioner has sent a notification of
the possibility of opposition under paragraph (1)(C), the
Commissioner shall, if applicable, transmit to the Inter-
national Bureau a notification of refusal on the basis of
the opposition, together with a statement of all the
grounds for the opposition, within 7 months after the be-
ginning of the opposition period or within 1 month after
the end of the opposition period, whichever is earlier.
‘‘(3) If a notification of refusal of a request for exten-
sion of protection is transmitted under paragraph (1) or
(2), no grounds for refusal of such request other than
those set forth in such notification may be transmitted to
the International Bureau by the Commissioner after the
expiration of the time periods set forth in paragraph (1)
or (2), as the case may be.
‘‘(4) If a notification specified in paragraph (1) or
(2) is not sent to the International Bureau within the time
period set forth in such paragraph, with respect to a re-
quest for extension of protection, the request for extension
of protection shall not be refused and the Commissioner
shall issue a certificate of extension of protection pursuant
to the request.
‘‘(d) DESIGNATION
OF AGENT
FOR SERVICE
OF
PROCESS.—In responding to a notification of refusal with
respect to a mark, the holder of the international registra-
tion of the mark shall designate, by a written document
filed in the 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 speci-
fied in the last designation so filed. If the person so des-
ignated cannot be found at the address given in the last
designation, such notice or process may be served upon
the Commissioner.
‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—
Unless a request for extension of protection is refused
under section 68, the Commissioner shall issue a certifi-
cate of extension of protection pursuant to the request and
shall cause notice of such certificate of extension of protec-
tion to be published in the Official Gazette of the Patent
and Trademark Office.
‘‘(b) EFFECT
OF EXTENSION
OF PROTECTION.—
From the date on which a certificate of extension of pro-
tection is issued under subsection (a)—
‘‘(1) such extension of protection shall have the
same effect and validity as a registration on the
Principal Register, and
‘‘(2) the holder of the international registration
shall have the same rights and remedies as the
owner of a registration on the Principal Register.
‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO
THE UNITED STATES ON THE UNDERLYING
INTERNATIONAL REGISTRATION.
‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL
REGISTRATION.—If the International Bureau notifies the
Patent and Trademark Office of the cancellation of an
international registration with respect to some or all of
the goods and services listed in the international registra-
tion, the Commissioner shall cancel any extension of pro-
tection to the United States with respect to such goods
and services as of the date on which the international reg-
istration was canceled.
‘‘(b) EFFECT
OF FAILURE TO
RENEW INTER-
NATIONAL REGISTRATION.—If the International Bureau
does not renew an international registration, the cor-
responding extension of protection to the United States
shall cease to be valid as of the date of the expiration of
the international registration.
‘‘(c) TRANSFORMATION OF AN EXTENSION OF PRO-
TECTION INTO A UNITED STATES APPLICATION.—The
holder of an international registration canceled in whole
or in part by the International Bureau at the request of
the office of origin, under Article 6(4) of the Madrid Pro-
tocol, may file an application, under section 1 or 44 of
this Act, for the registration of the same mark for any
of the goods and services to which the cancellation applies
that were covered by an extension of protection to the
United States based on that international registration.
Such an application shall be treated as if it had been filed
on the international registration date or the date of
recordal of the request for extension of protection with the
International Bureau, whichever date applies, and, if the
extension of protection enjoyed priority under section 67
of this title, shall enjoy the same priority. Such an applica-
tion shall be entitled to the benefits conferred by this sub-
section only if the application is filed not later than 3
months after the date on which the international registra-
tion was canceled, in whole or in part, and only if the ap-
plication complies with all the requirements of this Act
which apply to any application filed pursuant to section
1 or 44.
‘‘SEC. 71. AFFIDAVITS AND FEES.
‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An exten-
sion of protection for which a certificate of extension of
protection 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 Commissioner—
‘‘(1) at the end of the 6-year period beginning
on the date on which the certificate of extension of
protection was issued by the Commissioner, unless
within the 1-year period preceding the expiration of
that 6-year period the holder of the international
registration files in the Patent and Trademark Of-
fice an affidavit under subsection (b) together with
a fee prescribed by the Commissioner; and
‘‘(2) at the end of the 10-year period beginning
on the date on which the certificate of extension of
protection was issued by the Commissioner, and at
the end of each 10-year period thereafter, unless—
‘‘(A) within the 6-month period preceding
the expiration of such 10-year period the holder
of the international registration files in the Pat-
ent and Trademark Office an affidavit under
subsection (b) together with a fee prescribed by
the Commissioner; or
‘‘(B) within 3 months after the expiration
of such 10-year period, the holder of the inter-
national registration files in the Patent and
Trademark Office an affidavit under subsection
(b) together with the fee described in subpara-
graph (A) and an additional fee prescribed by
the Commissioner.
‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit re-
ferred to in subsection (a) shall set forth those goods or
services recited in the extension of protection on or in con-
nection with which the mark is in use in commerce and
the holder of the international registration shall attach to
the affidavit a specimen or facsimile showing the current
use of the mark in commerce, or shall set forth that any
nonuse is due to special circumstances which excuse such
nonuse and is not due to any intention to abandon the
mark. Special notice of the requirement for such affidavit
shall be attached to each certificate of extension of protec-
tion.
‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.
‘‘An extension of protection may be assigned, to-
gether with the goodwill associated with the mark, only
to a person who is a national of, is domiciled in, or has
a bona fide and effective industrial or commercial estab-
lishment either in a country that is a Contracting Party
or in a country that is a member of an intergovernmental
organization that is a Contracting Party.
‘‘SEC. 73. INCONTESTABILITY.
‘‘The period of continuous use prescribed under sec-
tion 15 for a mark covered by an extension of protection
issued under this title may begin no earlier than the date
on which the Commissioner issues the certificate of the
extension of protection under section 69, except as pro-
vided in section 74.
‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
‘‘An extension of protection shall convey the same
rights as an existing registration for the same mark, if—
‘‘(1) the extension of protection and the exist-
ing registration are owned by the same person;
‘‘(2) the goods and services listed in the exist-
ing registration are also listed in the extension of
protection; and
‘‘(3) the certificate of extension of protection is
issued after the date of the existing registration.’’.
SEC. 3. EFFECTIVE DATE.
This Act and the amendments made by this Act shall
take effect on the date on which the Madrid Protocol (as
defined in section 60(1) of the Trademark Act of 1946)
enters into force with respect to the United States.