105TH CONGRESS
1ST SESSION
H. R. 1661
AN ACT
To implement the provisions of the Trademark Law
Treaty.
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 there-
of or in such near resemblance thereto as to be like-
ly, 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 appli-
cant shall—
‘‘(i) state exceptions to the claim of exclu-
sive use; and
‘‘(ii) shall specify, to the extent of the ver-
ifier’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
regulations as may be prescribed by the Commissioner.
The Commissioner shall promulgate rules prescribing the
requirements 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 follows:
‘‘(b)(1) A person who has a bona fide intention,
under circumstances showing the good faith of such per-
son, to use a trademark in commerce may request reg-
istration 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 Com-
missioner.
‘‘(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 enti-
tled 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 knowl-
edge and belief, the facts recited in the application
are accurate; and
‘‘(D) that, to the best of the verifier’s knowl-
edge 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
regulations as may be prescribed by the Commissioner.
The Commissioner shall promulgate rules prescribing the
requirements for the application and for obtaining a filing
date herein.’’.
(c) CONSEQUENCE OF DELAYS.—Paragraph (4) of
section 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 strik-
ing ‘‘unavoidable’’ 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 expiration of the following time periods, as applicable:
‘‘(1) For registrations issued pursuant to the
provisions of this Act, at the end of 6 years follow-
ing the date of registration.
‘‘(2) For registrations published under the pro-
visions of section 12(c), at the end of 6 years follow-
ing the date of publication under such section.
‘‘(3) For all registrations, at the end of each
successive 10-year period following the date of reg-
istration.
‘‘(b) During the 1-year period immediately preceding
the end of the applicable time period set forth in sub-
section (a), the owner of the registration shall pay the pre-
scribed fee and file in the Patent and Trademark Office—
‘‘(1) an affidavit setting forth those goods or
services recited in the registration on or in connec-
tion with which the mark is in use in commerce and
such number of specimens or facsimiles showing cur-
rent use of the mark as may be required by the
Commissioner; or
‘‘(2) an affidavit setting forth those goods or
services recited in the registration on or in connec-
tion with which the mark is not in use in commerce
and showing that any such nonuse is due to special
circumstances which excuse such nonuse and is not
due to any intention to abandon the mark.
‘‘(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 accom-
panied by a surcharge prescribed therefor. If any submis-
sion required by this section filed during the grace period
is deficient, the deficiency may be corrected within the
time prescribed after notification of the deficiency. Such
submission must be accompanied by a surcharge pre-
scribed 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.
10-year period, upon payment of a fee and surcharge pre-
scribed 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 surcharge prescribed therefor.
‘‘(b) If the Commissioner refuses to renew the reg-
istration, 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 docu-
ment 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
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
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. 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.
Notwithstanding the preceding sentence, no application to
register a mark under section 1(b) shall be assignable
prior to the filing of an amendment under section 1(c)
to bring the application 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 busi-
ness of the applicant, or portion thereof, to which the
mark pertains, if that business is ongoing and existing.
In any assignment authorized by this section, it shall not
be necessary to include the good will of the business con-
nected 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 instru-
ments in writing duly executed. Acknowledgment shall be
prima facie evidence of the execution of an assignment,
and when the prescribed information reporting the assign-
ment is recorded in the Patent and Trademark Office, the
record shall be prima facie evidence of execution. An as-
signment shall be void against any subsequent purchaser
for valuable consideration without notice, unless the pre-
scribed information reporting the assignment is recorded
in the Patent and Trademark Office within 3 months after
the date of the subsequent purchase or prior to the subse-
quent purchase. The Patent and Trademark Office 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 per-
son 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 des-
ignated by leaving with that person or mailing to that per-
son a copy thereof at the address specified in the last des-
ignation 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
sentence and inserting the following: ‘‘Such appli-
cant shall submit, within such time period as may be
prescribed by the Commissioner, a certification or a
certified copy of the registration in the country of
origin of the applicant.’’.
SEC. 9. MISCELLANEOUS AMENDMENTS.
(a) CANCELLATION OF FUNCTIONAL MARKS.—Sec-
tion 14(3) of the Trademark Act of 1946 (15 U.S.C.
1064(3)) is amended by inserting ‘‘or is functional,’’ be-
fore ‘‘or has been abandoned’’.
(b) INCONTESTABILITY DEFENSES.—Section 33(b)
of the Trademark Act of 1946 (15 U.S.C. 1115(b)) is
amended—
(1) by redesignating paragraph (8) as para-
graph (9); and
(2) by inserting after paragraph (7) the follow-
ing:
‘‘(8) That the mark is functional; or’’.
(c) REMEDIES IN CASES OF DILUTION OF FAMOUS
MARKS.—
(1) INJUNCTIONS.—(A) Section 34(a) of the
Trademark Act of 1946 (15 U.S.C. 1116(a)) is
amended in the first sentence by striking ‘‘section
43(a)’’ and inserting ‘‘subsection (a) or (c) of sec-
tion 43’’.
(B) Section 43(c)(2) of the Trademark Act of
1946 (15 U.S.C. 1125(c)(2)) is amended in the first
sentence by inserting ‘‘as set forth in section 34’’
after ‘‘relief’’.
(2) DAMAGES.—Section 35(a) of the Trade-
mark Act of 1946 (15 U.S.C. 1117(a)) is amended
in the first sentence by striking ‘‘or a violation
under section 43(a),’’ and inserting ‘‘a violation
under section 43(a), or a willful violation under sec-
tion 43(c),’’.
(3) DESTRUCTION OF ARTICLES.—Section 36 of
the Trademark Act of 1946 (15 U.S.C. 1118) is
amended in the first sentence—
(A) by striking ‘‘or a violation under sec-
tion 43(a),’’ and inserting ‘‘a violation under
section 43(a), or a willful violation under sec-
tion 43(c),’’; and
(B) by inserting after ‘‘in the case of a vio-
lation of section 43(a)’’ the following: ‘‘or a
willful violation under section 43(c)’’.
SEC. 10. EFFECTIVE DATE.
This Act and the amendments made by this Act shall
take effect—
(1) on the date that is 1 year after the date of
the enactment of this Act, or
(2) upon the entry into force of the Trademark
Law Treaty with respect to the United States,
whichever occurs first.
Passed the House of Representatives July 22, 1997.
Attest:
Clerk.