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
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.
OCTOBER 3, 1994
Reported with an amendment, committed to the Commit-
tee of the Whole House on the State of the Union, and
ordered to be printed
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 provi-
sions 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 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 registration
and protection of trade-marks used in commerce, to carry
out the provisions of certain international conventions, and
for other purposes’’, approved July 5, 1946, as amended (15
U.S.C. 1051 and following) (commonly referred to as the
‘‘Trademark Act of 1946’’) is amended by adding after sec-
tion 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 Registration
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 Con-
tracting Party and that constitutes the basis for an
application for the international registration of that
mark.
‘‘(3) BASIC REGISTRATION.—The term ‘basic reg-
istration’ means the registration of a mark that has
been granted by an Office of a Contracting Party and
that constitutes the basis for an application for the
international registration of that mark.
‘‘(4) CONTRACTING PARTY.—The term ‘Contract-
ing Party’ means any country or inter-governmental
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 exten-
sion of protection that is filed after an international
registration is granted is recorded on the Inter-
national Register.
‘‘(6) DECLARATION OF BONA FIDE INTENTION TO
USE THE MARK IN COMMERCE.—The term ‘declara-
tion of bona fide intention to use the mark in com-
merce’ means a declaration that is signed by the ap-
plicant for, or holder of, an international registration
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, corporation,
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 ‘ex-
tension of protection’ means the protection resulting
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 REGISTRA-
TION.—A ‘holder’ of an international registration is
the natural or juristic person in whose name the
international registration is recorded on the Inter-
national 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 Organization.
‘‘(11) INTERNATIONAL
REGISTER.—The term
‘International Register’ means the official collection of
such data concerning international registrations
maintained by the International Bureau that the Ma-
drid Protocol or its implementing regulations require
or permit to be recorded, regardless of the medium
which contains such data.
‘‘(12) INTERNATIONAL REGISTRATION.—The term
‘international registration’ means the registration 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 can-
not 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 reg-
istration of marks, or
‘‘(B) the common office, or governmental en-
tity, 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 or-
igin’ 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 UNIT-
ED STATES APPLICATIONS OR REGISTRA-
TIONS.
‘‘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 informa-
tion contained in the basic application or basic registration
at the time of the certification. Upon examination and cer-
tification 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 restricted,
abandoned, or cancelled, or has expired, with respect to
some or all of the goods and services listed in the inter-
national 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 registra-
tion 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 request
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 section
68, the holder of an international registration shall be enti-
tled to the benefits of extension of protection of that inter-
national registration to the United States to the extent nec-
essary 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 reg-
istration 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 REG-
ISTRATION 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 Trade-
mark Office shall be deemed to be properly filed in the Unit-
ed States if such request, when received by the International
Bureau, has attached to it a declaration of bona fide inten-
tion 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, conferring the
same rights as those specified in section 7(c), as of the earli-
est 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 exten-
sion of protection, if the request for extension of pro-
tection was made after the international registration
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 entitled
to claim a date of priority based on the right of priority
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 exten-
sion of protection to the United States is not later
than 6 months after the date of the first regular na-
tional filing (within the meaning of Article 4(A)(3)
of the Paris Convention for the Protection of Indus-
trial Property) or a subsequent application (within
the meaning of Article 4(C)(4) of the Paris Conven-
tion).
‘‘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 pro-
tection 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 Reg-
ister.
‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for ex-
tension 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) With-
in 18 months after the date on which the International Bu-
reau transmits to the Patent and Trademark Office a notifi-
cation of a request for extension of protection, the Commis-
sioner shall transmit to the International Bureau any of
the following that applies to such request:
‘‘(A) A notification of refusal based on an exam-
ination of the request for extension of protection.
‘‘(B) A notification of refusal based on the filing
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 Com-
missioner shall, if applicable, transmit to the International
Bureau a notification of refusal on the basis of the opposi-
tion, together with a statement of all the grounds for the
opposition, within 7 months after the beginning of the oppo-
sition period or within 1 month after the end of the opposi-
tion 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 expira-
tion 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 pe-
riod set forth in such paragraph, with respect to a request
for extension of protection, the request for extension of pro-
tection shall not be refused and the Commissioner shall issue
a certificate of extension of protection pursuant to the re-
quest.
‘‘(d) DESIGNATION OF AGENT FOR SERVICE OF PROC-
ESS.—In responding to a notification of refusal with re-
spect to a mark, the holder of the international registration
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 per-
son 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 can-
not be found at the address given in the last designation,
such notice or process may be served upon the Commis-
sioner.
‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—Un-
less a request for extension of protection is refused under
section 68, the Commissioner shall issue a certificate of ex-
tension of protection pursuant to the request and shall cause
notice of such certificate of extension of protection to be pub-
lished 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 protection
is issued under subsection (a)—
‘‘(1) such extension of protection shall have the
same effect and validity as a registration on the Prin-
cipal 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 registration,
the Commissioner shall cancel any extension of protection
to the United States with respect to such goods and services
as of the date on which the international registration was
cancelled.
‘‘(b) EFFECT OF FAILURE TO RENEW INTERNATIONAL
REGISTRATION.—If the International Bureau does not
renew an international registration, the corresponding ex-
tension 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 PROTEC-
TION INTO A UNITED STATES APPLICATION.—The holder
of an international registration cancelled in whole or in
part by the International Bureau at the request of the office
of origin, under Article 6(4) of the Madrid Protocol, 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 application shall be entitled to
‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.
‘‘An extension of protection may be assigned, together
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 establishment 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 section
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 provided 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 existing
registration are owned by the same person;
‘‘(2) the goods and services listed in the existing
registration are also listed in the extension of protec-
tion; and
‘‘(3) the certificate of extension of protection is
issued after the date of the existing registration.’’.
SEC. 3. EFFECTIVE DATE.
Subject to the satisfactory resolution of the issues relat-
ing to voting rights of member nations under the Madrid
Protocol, this Act shall take effect on the date on which the
Madrid Protocol enters into force with respect to the United
States.
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