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Calendar No. 474
105th CONGRESS
2d Session
S. 2193
To implement the provisions of the Trademark Law Treaty.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
June 18, 1998
Mr. Hatch (for himself and Mr. Leahy) introduced the following bill;
which was read twice and referred to the Committee on the Judiciary
July 16, 1998
Reported by Mr. Hatch, without amendment
_______________________________________________________________________
A BILL
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,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Trademark Law Treaty Implementation
Act''.
SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.
For purposes of this Act, 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. 3. APPLICATION 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 and filing in the Patent and
Trademark Office an application and a verified statement, 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 applicant'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 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 accurate;
``(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 application 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 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 person, to use a trademark
in commerce may request registration 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 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 commerce;
``(B) the applicant'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 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 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. 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 striking ``unavoidable'' and by
inserting ``unintentional''.
SEC. 5. 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
registration.
``(2) For registrations published under the provisions of
section 12(c), at the end of 6 years following the date of
publication 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
facsimiles 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 accompanied by a surcharge prescribed by
the Commissioner.
``(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 acceptance 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. 6. 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
registration may be renewed for periods of 10 years at the end of each
successive 10-year period following the date of registration upon
payment 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 payment of a fee and surcharge
prescribed therefor. If any application filed under this section 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 registration, 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 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. 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
business 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 connected 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 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 prescribed 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 subsequent 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 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. 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 subsection (e)
of this section''; and
(B) in paragraphs (3) and (4) by striking ``this
subsection (d)'' and inserting ``this subsection''; and
(2) in subsection (e), by striking the second sentence and
inserting the following: ``Such applicant shall submit, within
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