IB
Union Calendar No. 120
105TH CONGRESS
1ST SESSION
H. R. 1661
[Report No. 105–194]
To implement the provisions of the Trademark Law Treaty.
IN THE HOUSE OF REPRESENTATIVES
MAY 20, 1997
Mr. COBLE introduced the following bill; which was referred to the Committee
on the Judiciary
JULY 21, 1997
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 20, 1997]
A BILL
To implement the provisions of the Trademark Law Treaty.
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 ‘‘Trademark Law Treaty
Implementation Act’’.
SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.
For purposes of this Act, the Act entitled ‘‘An Act to
provide for the registration and protection of trademarks
used in commerce, to carry out the provisions of certain
international conventions, and for other purposes’’, ap-
proved July 5, 1946 (15 U.S.C. 1051 et seq.), shall be re-
ferred to as the ‘‘Trademark Act of 1946’’.
SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.
(a) APPLICATION FOR USE OF TRADEMARK.—Section
1(a) of the Trademark Act of 1946 (15 U.S.C. 1051(a)) is
amended to read as follows:
‘‘SECTION 1. (a)(1) The owner of a trademark used in
commerce may request registration of its trademark on the
principal register hereby established by paying the pre-
scribed fee and filing in the Patent and Trademark Office
an application and a verified statement, in such form as
may be prescribed by the Commissioner, and such number
of specimens or facsimiles of the mark as used as may be
required by the Commissioner.
‘‘(2) The application shall include specification of the
applicant’s domicile and citizenship, the date of the appli-
cant’s first use of the mark, the date of the applicant’s first
use of the mark in commerce, the goods in connection with
which the mark is used, and a drawing of the mark.
‘‘(3) The statement shall be verified by the applicant
and specify that—
‘‘(A) the person making the verification believes
that he or she, or the juristic person in whose behalf
he or she makes the verification, to be the owner of
the mark sought to be registered;
‘‘(B) to the best of the verifier’s knowledge and
belief, the facts recited in the application are accu-
rate;
‘‘(C) the mark is in use in commerce; and
‘‘(D) to the best of the verifier’s knowledge and
belief, no other person has the right to use such mark
in commerce either in the identical form thereof or in
such near resemblance thereto as to be likely, when
used on or in connection with the goods of such other
person, to cause confusion, or to cause mistake, or to
deceive, except that, in the case of every application
claiming concurrent use, the applicant shall—
‘‘(i) state exceptions to the claim of exclu-
sive use; and
‘‘(ii) shall specify, to the extent of the verifi-
er’s knowledge—
‘‘(I) any concurrent use by others;
‘‘(II) the goods on or in connection
with which and the areas in which each
concurrent use exists;
‘‘(III) the periods of each use; and
‘‘(IV) the goods and area for which the
applicant desires registration.
‘‘(4) The applicant shall comply with such rules or reg-
ulations as may be prescribed by the Commissioner. The
Commissioner shall promulgate rules prescribing the re-
quirements for the application and for obtaining a filing
date herein.’’.
(b) APPLICATION FOR BONA FIDE INTENTION TO USE
TRADEMARK.—Subsection (b) of section 1 of the Trademark
Act of 1946 (15 U.S.C. 1051(b)) is amended to read as fol-
lows:
‘‘(b)(1) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use
a trademark in commerce may request registration of its
trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement,
in such form as may be prescribed by the Commissioner.
‘‘(2) The application shall include specification of the
applicant’s domicile and citizenship, the goods in connec-
tion with which the applicant has a bona fide intention
to use the mark, and a drawing of the mark.
‘‘(3) The statement shall be verified by the applicant
and specify—
‘‘(A) that the person making the verification be-
lieves that he or she, or the juristic person in whose
behalf he or she makes the verification, to be entitled
to use the mark in commerce;
‘‘(B) the applicant’s bona fide intention to use
the mark in commerce;
‘‘(C) that, to the best of the verifier’s knowledge
and belief, the facts recited in the application are ac-
curate; and
‘‘(D) that, to the best of the verifier’s knowledge
and belief, no other person has the right to use such
mark in commerce either in the identical form thereof
or in such near resemblance thereto as to be likely,
when used on or in connection with the goods of such
other person, to cause confusion, or to cause mistake,
or to deceive.
Except for applications filed pursuant to section 44, no
mark shall be registered until the applicant has met the
requirements of subsections (c) and (d) of this section.
‘‘(4) The applicant shall comply with such rules or reg-
ulations as may be prescribed by the Commissioner. The
Commissioner shall promulgate rules prescribing the re-
quirements for the application and for obtaining a filing
date herein.’’.
(c) CONSEQUENCE OF DELAYS.—Paragraph (4) of sec-
tion 1(d) of the Trademark Act of 1946 (15 U.S.C.
1051(d)(4)) is amended to read as follows:
‘‘(4) The failure to timely file a verified statement of
use under paragraph (1) or an extension request under
paragraph (2) shall result in abandonment of the applica-
tion, unless it can be shown to the satisfaction of the Com-
missioner that the delay in responding was unintentional,
in which case the time for filing may be extended, but for
a period not to exceed the period specified in paragraphs
(1) and (2) for filing a statement of use.’’.
SEC. 4. REVIVAL OF ABANDONED APPLICATION.
Section 12(b) of the Trademark Act of 1946 (15 U.S.C.
1062(b)) is amended in the last sentence by striking ‘‘un-
avoidable’’ and by inserting ‘‘unintentional’’.
SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AF-
FIDAVIT OF CONTINUED USE; NOTICE OF
COMMISSIONER’S ACTION.
Section 8 of the Trademark Act of 1946 (15 U.S.C.
1058) is amended to read as follows:
‘‘DURATION
‘‘SEC. 8. (a) Each registration shall remain in force
for 10 years, except that the registration of any mark shall
be canceled by the Commissioner for failure to comply with
the provisions of subsection (b) of this section, upon the ex-
piration of the following time periods, as applicable:
‘‘(c) The owner of the registration may make the sub-
missions required by this section, or correct any deficiency
in a timely filed submission, within a grace period of 6
months after the end of the applicable time period set forth
in subsection (a). Such submission must be accompanied
by a surcharge prescribed therefor. If any submission re-
quired by this section filed during the grace period is defi-
cient, the deficiency may be corrected within the time pre-
scribed after notification of the deficiency. Such submission
must be accompanied by a surcharge prescribed therefor.
‘‘(d) Special notice of the requirement for affidavits
under this section shall be attached to each certificate of
registration and notice of publication under section 12(c).
‘‘(e) The Commissioner shall notify any owner who
files 1 of the affidavits required by this section of the Com-
missioner’s acceptance or refusal thereof and, in the case
of a refusal, the reasons therefor.
‘‘(f) If the registrant is not domiciled in the United
States, the registrant shall designate by a written document
filed in the Patent and Trademark Office the name and
address of some person resident in the United States on
whom may be served notices or process in proceedings af-
fecting 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 spec-
ified 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. 6. RENEWAL OF REGISTRATION.
Section 9 of the Trademark Act of 1946 (15 U.S.C.
1059) is amended to read as follows:
‘‘RENEWAL OF REGISTRATION
‘‘SEC. 9. (a) Subject to the provisions of section 8, each
registration may be renewed for periods of 10 years at the
end of each successive 10-year period following the date of
registration upon payment of the prescribed fee and the fil-
ing of a written application, in such form as may be pre-
scribed by the Commissioner. Such application may be
made at any time within 1 year before the end of each suc-
cessive 10-year period for which the registration was issued
or renewed, or it may be made within a grace period of
6 months after the end of each successive 10-year period,
upon payment of a fee and surcharge prescribed therefor.
If any application filed during the grace period is deficient,
the deficiency may be corrected within the time prescribed
after notification of the deficiency, upon payment of a sur-
charge prescribed therefor.
‘‘(b) If the Commissioner refuses to renew the registra-
tion, the Commissioner shall notify the registrant of the
Commissioner’s refusal and the reasons therefor.
‘‘(c) If the registrant is not domiciled in the United
States, the registrant shall designate by a written document
filed in the Patent and Trademark Office the name and
address of some person resident in the United States on
whom may be served notices or process in proceedings af-
fecting 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 spec-
ified 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. 7. RECORDING ASSIGNMENT OF MARK.
Section 10 of the Trademark Act of 1946 (15 U.S.C.
1060) is amended to read as follows:
‘‘ASSIGNMENT
‘‘SEC. 10. (a) A registered mark or a mark for which
an application to register has been filed shall be assignable
with the good will of the business in which the mark is used,
or with that part of the good will of the business connected
with the use of and symbolized by the mark. Notwithstand-
ing the preceding sentence, no application to register a
mark under section 1(b) shall be assignable prior to the fil-
ing of an amendment under section 1(c) to bring the appli-
cation into conformity with section 1(a) or the filing of the
verified statement of use under section 1(d), except for an
assignment to a successor to the business of the applicant,
or portion thereof, to which the mark pertains, if that busi-
ness is ongoing and existing. In any assignment authorized
by this section, it shall not be necessary to include the good
will of the business connected with the use of and symbolized
by any other mark used in the business or by the name
or style under which the business is conducted. Assignments
shall be by instruments in writing duly executed. Acknowl-
edgment shall be prima facie evidence of the execution of
an assignment, and when the prescribed information re-
porting the assignment is recorded in the Patent and Trade-
mark Office, the record shall be prima facie evidence of exe-
cution. An assignment shall be void against any subsequent
purchaser for valuable consideration without notice, unless
the prescribed information reporting the assignment is re-
corded in the Patent and Trademark Office within 3
months after the date of the subsequent purchase or prior
to the subsequent purchase. The Patent and Trademark Of-
fice shall maintain a record of information on assignments,
in such form as may be prescribed by the Commissioner.
‘‘(b) An assignee not domiciled in the United States
shall designate by a written document filed in the Patent
and Trademark Office the name and address of some person
resident in the United States on whom may be served no-
tices or process in proceedings affecting the mark. Such no-
tices 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 specified in the last designation
so filed. If the person so designated cannot be found at the
address given in the last designation, such notice or process
may be served upon the Commissioner.’’.
SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN
REGISTRATION.
Section 44 of the Trademark Act of 1946 (15 U.S.C.
1126) is amended—
(1) in subsection (d)—
(A) by striking ‘‘23, or 44(e) of this Act’’
and inserting ‘‘or 23 of this Act or under sub-
section (e) of this section’’; and
(B) in paragraphs (3) and (4), by striking
‘‘this subsection (d)’’ and inserting ‘‘this sub-
section’’; and
(2) in subsection (e), by striking the second sen-
tence and inserting the following: ‘‘Such applicant
shall submit, within such time period as may be pre-
scribed by the Commissioner, a certification or a cer-
tified copy of the registration in the country of origin
of the applicant.’’.