Trademark Law Treaty Implementation, Public Law 105-330-OCT. 30, 1998


[DOCID: f:publ330.105]



                   TRADEMARK LAW TREATY IMPLEMENTATION



Public Law 105-330
105th Congress

                                 An Act


 To implement the provisions of the Trademark Law Treaty. << oct="">>

    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="" act="">> --TRADEMARK
LAW TREATY IMPLEMENTATION

SEC. 101. SHORT TITLE. << usc="" note="">>

    This title may be cited as the ``Trademark Law Treaty Implementation
Act''.

SEC. 102. REFERENCE TO THE TRADEMARK ACT OF 1946. << usc="" note="">>

    For purposes 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. 103. 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. << regulations="">>  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. << regulations="">> 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. 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:

    ``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. 106. RENEWAL OF REGISTRATION.

    Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended
                           to read as follows:

    ``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. 107. RECORDING ASSIGNMENT OF MARK.

    Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is amended
                           to read as follows:

    ``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. 108. 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
        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. 109. TRANSITION PROVISIONS. << applicability="">>

    (a) << usc="" note="">>  Registrations in 20-Year Term.--The
provisions of section 8 of the Trademark Act of 1946, as amended by
section 105 of 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) << usc="" note="">>  Applications for Registration.--
This title and the amendments made by this title shall apply to any
application for registration of a trademark pending on, or filed on or
after, the effective date of this Act.

    (c) << usc="" note="">>  Affidavits.--The provisions of
section 8 of the Trademark Act of 1946, as amended by section 105 of
this Act, shall apply 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) << usc="" note="">>  Renewal Applications.--The
amendment made by section 106 shall apply to the filing of an
application for renewal of a 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. << usc="" note="">>

    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, and 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,''; and
                          (ii) by inserting before the period at the end
                      the following: ``, or (5) comprises any matter
                      that, as a whole, is functional''; and



                    (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
        inserting ``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--

``Sec. 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
        striking ``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) << usc="">>  The Act is amended by
        striking ``trade-mark'' each place it appears in the text and
        the title and inserting ``trademark''.

    (b) << applicability="" usc="" note="">>  Effective Date.--The
amendments made by this section shall take effect 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
                        PROMOTIONAL PURPOSES.

    Section 14 of 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. 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 from using its certification mark in advertising or promoting
recognition of the certification program 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



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 Trademarks 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 owners,
        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
                trademarks identical to the official insignia of Native
                American tribes;
                    (B) the prohibition of any new use of the official
                insignia of Native American tribes; and
                    (C) appropriate defenses, including fair use, to any
                claims of infringement.
            (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 feasibility, 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 under 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 Commissioner shall
        use any appropriate additional measures, including field
        hearings, to obtain as wide a range of views as possible from
        Native American tribes, trademark owners, and other interested
        parties.



            (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 chairman of the Committee on
        the Judiciary of the House of Representatives.

    Approved October 30, 1998.

LEGISLATIVE HISTORY--S. 2193 (H.R. 1661):
---------------------------------------------------------------------------

HOUSE REPORTS: No. 105-194 accompanying H.R. 1661 (Comm. on the
Judiciary).
CONGRESSIONAL RECORD, Vol. 144 (1998):
            Sept. 17, considered and passed Senate.
            Oct. 9, considered and passed House.