106TH CONGRESS
1ST SESSION
H. R. 769
AN ACT
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 trademarks 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.