Trademark Law Treaty Implementation Act
PL 105-330 (S.2193), enacted 10/30/1998

112 STAT. 3064 
PUBLIC LAW 105-330—OCT. 30, 1998 
Oct. 30, 1998 
[S. 2193] 
Trademark Law 
Treaty 
Implementation 
Act. 
15 use 1051 
note. 
15 use 1058 
note. 
Public Law 105-330 
105th Congress 
An Act 
To implement the provisions of the Trademark Law Treaty. 
Be it enacted by the Senate and House of Representatives of 
the United States of America in Congress assembled, 
TITLE I—TRADEMARK LAW TREATY 
IMPLEMENTATION 
SEC. 101. SHORT TITLE. 
This title may be cited as the 'Trademark Law Treaty 
Implementation Act*'. 
SEC. 102. REFERENCE TO THE TRADEMARK ACT OF 1946. 
For piirposes of this title, 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", approved July 5, 1946 (15 U.S.C. 1051 
et seq.), shall be referred to as the "Trademark Act of 1946". 
SEC. 108. APPUCATION 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 prescribed fee £ind filing in the 
Patent and Trademark OfBce an application and a verified state-
ment, 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 applicemt'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 tiie applicant and specify 
t h a l ^ 
"(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 appHcation are accurate; 
PUBLIC LAW 105-330—OCT. 30, 1998 
112 STAT. 3065 
"(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 applica-
tion claiming concurrent use, the applicant shall— 
"(i) state exceptions to the claim of exclusive use; and 
"(ii) shall specify, to the extent of the verifier'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 Regulations. 
shall promulgate rules prescribing the requirements for the applica-
tion and for obtaining a filing date herein.". 
(b) APPLICATION FOR BONA FIDE INTENTION TO USE TRADE-
MARK.—Subsection (b) of section 1 of the Trademark Act of 1946 
(15 U.S.C. 1051(b)) is eunended to read as follows: 
"(b)(1) A person who has a bona fide intention, under cir-
cumstEinces showing the good faith of such person, to use a trade-
mark in commerce may request registration of its trademark on 
the principal register hereby established by pa)ang 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 connection 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 believes 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 com-
merce; 
"(B) the applic£int'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 accurate; 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 msirk shall 
be registered until the applicant has met the requirements of sub-
sections (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 Regulations. 
112 STAT. 3066 
PUBLIC LAW 105-330—OCT. 30, 1998 
shall promulgate rules prescribing the requirements for the applica-
tion 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 absmdonment of the application, unless it can be shown 
to the satisfaction of the Commissioner 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. 104. 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 "unavoidable" and 
by inserting "unintentional". 
SEC. 105. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT 
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 following the date of registra-
tion. 
"(2) For registrations published under the provisions of 
section 12(c), at the end of 6 years following the date of publica-
tion under such section. 
"(3) For all registrations, at the end of each successive 
10-year period following the date of registration. 
"(b) During the 1-year period immediately preceding the end 
of the applicable time period set forth in subsection (a), the owner 
of the registration shall pay the prescribed 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 connection with which the mark 
is in use in commerce and such number of specimens or fac-
similes showing current 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 connection 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)(1) The owner of the registration may make the submissions 
required under this section within a grace period of 6 months 
after the end of the applicable time period set forth in subsection 
(a). Such submission is required to be accompemied by a surcharge 
prescribed by the Commissioner. 
PUBLIC LAW 105-330—OCT. 30, 1998 
112 STAT. 3067 
"(2) If any submission filed under this section is deficient, 
the deficiency may be corrected after the statutory time period 
and within the time prescribed after notification of the deficiency. 
Such submission is required to be accompanied by a surcharge 
prescribed by the Commissioner. 
"(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 Commissioner's accept-
ance 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 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. 106. 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 registra-
tion may be renewed for periods of 10 years at the end of each 
successive 10-year period following the date of registration upon 
pajnnent of the prescribed fee and the filing of a written application, 
in such form as may be prescribed by the Commissioner. Such 
application may be made at any time within 1 year before the 
end of each successive 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 
pajntnent of a fee and surcharge prescribed therefor. If any applica-
tion filed under this section is deficient, the deficiency may be 
corrected within the time prescribed after notification of the defi-
ciency, upon payment of a surcharge prescribed therefor. 
"(b) If the Commissioner refiises to renew the registration, 
the Commissioner shall notify the registreint 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 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.". 
112 STAT. 3068 
PUBLIC LAW 105-330—OCT. 30, 1998 
SEC. 107. 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 applica-
tion 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 s5rmbolized by the mark. Notwithstanding the preceding sen-
tence, 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 business of the applicEint, 
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 connected with the use of and s3mabolized 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. Acknowledgment shall be prima facie 
evidence of the execution of an assignment, and when the prescribed 
information reporting the assignment is recorded in the Patent 
and Trademark Office, the record shall be prima facie evidence 
of execution. An assignment shall be void against any subsequent 
purchaser for valuable consideration without notice, unless the 
P
rescribed information reporting the assignment is recorded in the 
'atent emd Trademark Office within 3 months after the date of 
the subsequent purchase or prior to the subsequent purchase. The 
Patent and Trademark Office shall maintain a record of information 
on assignments, in such form as may be prescribed by the Commis-
sioner. 
"(b) An assignee not domiciled in the United States shall des-
ignate 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 
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. 108. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REG-
ISTRATION. 
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 subsection (e) of this section"; 
and 
(B) in paragraphs (3) and (4) by striking "this sub-
section (d)" and inserting "this subsection"; and 
(2) in subsection (e), by striking the second sentence and 
inserting the following: "Such applicant shall submit, within 
such time period as may be prescribed by the Commissioner, 
PUBLIC LAW 105-330—OCT. 30, 1998 
112 STAT. 3069 
a certification or a certified copy of the registration in the 
country of origin of the apphcant.'. 
SEC. 109. TRANSITION PROVISIONS. 
Applicability. 
(a) REGISTRATIONS IN 20-YEAR TERM.—The provisions of section is use loss 
8 of the Trademark Act of 1946, as amended by section 105 of note. 
this Act, shall apply to a registration for trademark issued or 
renewed for a 20-year term, if the expiration date of the registration 
is on or after the effective date of this Act. 
(b) APPLICATIONS FOR REGISTRATION.—This title and the 
is use losi 
amendments made by this title shall apply to any application for note. 
registration of a trademark pending on, or filed on or after, the 
efifective date of this Act. 
(c) AFFIDAVITS.—The provisions of section 8 of the Trademark 
is use loss 
Act of 1946, as amended by section 105 of this Act, shall apply note. 
to the filing of an affidavit if the sixth or tenth anniversary of 
the registration, or the sixth anniversary of publication of the 
registration under section 12(c) of the Trademark Act of 1946, 
for which the affidavit is filed is on or after the effective date 
of this Act. 
(d) RENEWAL APPLICATIONS.—The amendment made by section 
is use 1059 
106 shall apply to the filing of an application for renewal of a note, 
registration if the expiration date of the registration for which 
the renewal application is filed is on or after the effective date 
of this Act. 
SEC. 110. EFFECTIVE DATE. 
IS USC 1051 
This title and the amendments made by this title 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. 
TITLE II—TECHNICAL CORRECTIONS 
SEC. 201. TECHNICAL CORRECTIONS TO TRADEMARK ACT OF 1946. 
(a) IN GENERAL.—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, emid 
for other purposes", approved July 5, 1946 (15 U.S.C. 1051 et 
seq.) (commonly referred to as the Trademark Act of 1946), is 
amended as follows: 
(1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended— 
(A) by inserting "and," after "specifying the date of 
the applicant's first use of the mark in commerce"; and 
(B) by striking "and, the mode or manner in which 
the mark is used on or in connection with such goods 
or services". 
(2) Section 2 (15 U.S.C. 1052) is amended— 
(A) in subsection (e)— 
(i) in paragraph (3) by striking "or" after "them,"; 
£ind 
(ii) by inserting before the period at the end the 
following: ", or (5) comprises any matter that, as a 
whole, is functional"; and 
112 STAT. 3070 
PUBLIC LAW 105-330—OCT. 30, 1998 
15 use 1052, 
1124. 
Applicability. 
15 use 1051 
note. 
(B) in subsection (f), by striking "paragraphs (a), (b), 
(c), (d), and (e)(3)" and inserting "subsections (a), (b), (c), 
(d), (e)(3), and (e)(5)". 
(3) Section 7(a) (15 U.S.C. 1057(a)) is amended in the 
first sentence by striking the second period at the end. 
(4) Section 14(3) (15 U.S.C. 1064(3)) is amended by insert-
ing "or is functional," before "or has been abandoned". 
(5) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking 
"or device" and inserting ", device, any matter that as a whole 
is not functional,". 
(6) Section 26 (15 U.S.C. 1094) is amended by striking 
"7(c),," and inserting ", 7(c),". 
(7) Section 31 (15 U.S.C. 1113) is amended— 
(A) by striking— 
"§31. Fees"; 
and 
(B) by striking "(a)" and inserting "SEC. 31. (a)". 
(8) Section 32(1) (15 U.S.C. 1114(1)) is amended by striking 
"As used in this subsection" and inserting "As used in this 
paragraph". 
(9) Section 33(b) (15 U.S.C. 1115(b)) is amended— 
(A) by redesignating paragraph (8) as paragraph (9); 
and 
(B) by inserting after paragraph (7) the following: 
"(8) That the mark is functional; or". 
(10) Section 39(a) (15 U.S.C. 1121(a)) is amended by strik-
ing "circuit courts" and inserting "courts". 
(11) Section 42 (15 U.S.C. 1124) is amended by striking 
"the any domestic" and inserting "any domestic". 
(12) The Act is amended by striking "trade-mark" each 
place it appears in the text and the title and inserting "trade-
mark". 
(b) EFFECTIVE DATE.—^The amendments made by this section 
shall take efTect on the date of enactment of this Act, and shall 
apply only to any civil action filed or proceeding before the United 
States Patent and Trademark Office commenced on or after such 
date relating to the registration of a mark. 
TITLE III—MISCELLANEOUS 
PROVISIONS 
SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTISING OR PRO-
MOTIONAL PURPOSES. 
Section 14 of the Act entitled "An Act to provide for the registra-
tion and protection of trademarks used in commerce, to ceirry out 
the provisions of certain international conventions, and for other 
purposes", approved July 5, 1946 (15 U.S.C. 1064) (commonly 
referred to as the Trademark Act of 1946) is amended by adding 
at the end the following: "Nothing in paragraph (5) shall be deemed 
to prohibit the registrant fi*om using its certification mark in 
advertising or promoting recognition of the certification progrsim 
or of the goods or services meeting the certification standards 
of the registrant. Such uses of the certification mark shall not 
be grounds for cancellation under paragraph (5), so long as the 
registrant does not itself produce, manufacture, or sell any of the 
PUBLIC LAW 105-330—OCT. 30, 1998 
112 STAT. 3071 
certified goods or services to which its identical certification mark 
is applied.". 
SEC. 302. OFFICIAL INSIGNIA OF NATIVE INDIAN TRIBES. 
(a) IN GENERAL.—^The Commissioner of Patents and Trade-
marks shall study the issues surrounding the protection of the 
official insignia of federally and State recognized Native American 
tribes. The study shall address at least the following issues: 
(1) The impact on Native American tribes, trademark own-
ers, the Patent and Trademark Office, any other interested 
party, or the international legal obligations of the United 
States, of any change in law or policy with respect to— 
(A) the prohibition of the Federal registration of trade-
marks identical to the official insignia of Native American 
tribes; 
(B) the prohibition of any new use of the official insig-
nia of Native American tribes; and 
(C) appropriate defenses, including fair use, to any 
claims of infidngement. 
(2) The means for establishing and maintaining a listing 
of the official insignia of federally or State recognized Native 
American tribes. 
(3) An acceptable definition of the term "official insignia" 
with respect to a federally or State recognized Native American 
tribe. 
(4) The administrative feasibiUty, including the cost, of 
changing the current law or policy to— 
(A) prohibit the registration, or prohibit any new uses 
of the official insignia of State or federally recognized 
Native American tribes; or 
(B) otherwise give additional protection to the official 
insignia of federally and State recognized Native American 
tribes. 
(5) A determination of whether such protection should be 
offered prospectively or retrospectively and the impact of such 
protection. 
(6) Any statutory changes that would be necessary in order 
to provide such protection. 
(7) Any other factors which may be relevant. 
(b) COMMENT AND REPORT.— 
Deadlines. 
(1) COMMENT.—Not later than 60 days after the date of 
enactment of this Act, the Commissioner shall initiate a request 
for public comment on the issues identified and studied by 
the Commissioner imder subsection (a) and invite comment 
on any additional issues that are not included in such request. 
During the course of the public comment period, the Commis-
sioner shall use any appropriate additional measures, including 
field hearings, to obtain as wide a range of views as possible 
fi'om Native American tribes, trademark owners, and other 
interested parties. 
112 STAT. 3072 
PUBLIC LAW 105-330—OCT. 30, 1998 
(2) REPORT.—Not later than September 30, 1999, the 
Commissioner of Patents and Trademarks shall complete the 
study under this section and submit a report including the 
findings and conclusions of the study to the chairman of the 
Committee on the Judiciary of the Senate and the chsdrman 
of the Committee on the Judiciary of the House of Representa-
tives. 
Approved October 30, 1998. 
LEGISLATIVE HISTORY—S. 2193 (H.R. 1661): 
HOUSE REPORTS: No. 105-194 accompanying H.R. 1661 (Comm. on the Judici-
ary). 
CONGRESSIONAL RECORD, Vol. 144 (1998): 
Sept. 17, considered and passed Senate. 
Oct. 9, considered and passed House.