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.
Passed the House of Representatives May 5, 1998.
Attest:
Clerk.