I
105TH CONGRESS
1ST SESSION
H. R. 567
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
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
‘‘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