been issued under section 69 shall remain in force for the 
term of the international registration upon which it is 
based, except that the extension of protection of any mark 
shall be canceled by the Director unless the holder of the 
international registration files in the United States Patent 
and Trademark Office affidavits that meet the require-
ments of subsection (b), within the following time periods: 
‘‘(1) Within the 1-year period immediately pre-
ceding the expiration of 6 years following the date 
of issuance of the certificate of extension of protec-
tion. 
‘‘(2) Within the 1-year period immediately pre-
ceding the expiration of 10 years following the date 
of issuance of the certificate of extension of protec-
tion, and each successive 10-year period following 
the date of issuance of the certificate of extension of 
protection. 
‘‘(3) The holder may file the affidavit required 
under this section within a grace period of 6 months 
after the end of the applicable time period estab-
lished in paragraph (1) or (2), together with the fee 
described in subsection (b) and the additional grace 
period surcharge prescribed by the Director. 
‘‘(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit 
referred to in subsection (a) shall— 
VerDate Nov 24 2008 
23:09 Jan 27, 2010
Jkt 089200
PO 00000
Frm 00008
Fmt 6652
Sfmt 6201
E:\BILLS\H4515.IH
H4515
srobinson on DSKHWCL6B1PROD with BILLS
‘‘(1)(A) state that the mark is in use in com-
merce; 
‘‘(B) set forth the goods and services recited in 
the extension of protection on or in connection with 
which the mark is in use in commerce; 
‘‘(C) be accompanied by such number of speci-
mens or facsimiles showing current use of the mark 
in commerce as may be required by the Director; 
and 
‘‘(D) be accompanied by the fee prescribed by 
the Director; or 
‘‘(2)(A) set forth the goods and services recited 
in the extension of protection on or in connection 
with which the mark is not in use in commerce; 
‘‘(B) include a showing that any nonuse is due 
to special circumstances which excuse such nonuse 
and is not due to any intention to abandon the 
mark; and 
‘‘(C) be accompanied by the fee prescribed by 
the Director. 
‘‘(c) DEFICIENT AFFIDAVIT.—If any submission filed 
within the period set forth in subsection (a) is deficient, 
including that the affidavit was not filed in the name of 
the holder of the international registration, the deficiency 
may be corrected after the statutory time period, within 
VerDate Nov 24 2008 
23:09 Jan 27, 2010
Jkt 089200
PO 00000
Frm 00009
Fmt 6652
Sfmt 6201
E:\BILLS\H4515.IH
H4515
srobinson on DSKHWCL6B1PROD with BILLS
the time prescribed after notification of the deficiency. 
Such submission shall be accompanied by the additional 
deficiency surcharge prescribed by the Director. 
‘‘(d) NOTICE OF REQUIREMENT.—Special notice of 
the requirement for such affidavit shall be attached to 
each certificate of extension of protection. 
‘‘(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.— 
The Director shall notify the holder of the international 
registration who files any affidavit required by this section 
of the Director’s acceptance or refusal thereof and, in the 
case of a refusal, the reasons therefor. 
‘‘(f) DESIGNATION OF RESIDENT FOR SERVICE OF 
PROCESS
AND NOTICES.—If the holder of the inter-
national registration of the mark is not domiciled in the 
United States, the holder may designate, by a document 
filed in the United States 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 pro-
ceedings 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 last des-
ignated address, or if the holder does not designate by a 
document filed in the United States Patent and Trade-
VerDate Nov 24 2008 
23:09 Jan 27, 2010
Jkt 089200
PO 00000
Frm 00010
Fmt 6652
Sfmt 6201
E:\BILLS\H4515.IH
H4515
srobinson on DSKHWCL6B1PROD with BILLS
mark 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 on the Director.’’. 
SEC. 4. STUDY AND REPORT. 
(a) IN GENERAL.—Not later than 1 year after the 
date of enactment of this Act, the Secretary of Commerce, 
in consultation with the Intellectual Property Enforcement 
Coordinator, shall study and report to the Committee on 
the Judiciary of the Senate and the Committee on the Ju-
diciary of the House of Representatives on— 
(1) the extent to which small businesses may be 
harmed by litigation tactics by corporations attempt-
ing to enforce trademark rights beyond a reasonable 
interpretation of the scope of the rights granted to 
the trademark owner; and 
(2) the best use of Federal Government services 
to protect trademarks and prevent counterfeiting. 
(b) RECOMMENDATIONS.—The study and report re-
quired under paragraph (1) shall also include any policy 
recommendations the Secretary of Commerce and the In-
tellectual Property Enforcement Coordinator deem appro-
priate. 
Æ 
VerDate Nov 24 2008 
23:09 Jan 27, 2010
Jkt 089200
PO 00000
Frm 00011
Fmt 6652
Sfmt 6301
E:\BILLS\H4515.IH
H4515
srobinson on DSKHWCL6B1PROD with BILLS