(156)             Nonregistrability of Misleading Geographic
                 Indications--Amendment of the Trademark Act
                      by the North American Free Trade
                        Agreement Implementation Act 

   Article 1712 of the North American Free Trade
Agreement (NAFTA) requires the United States, Canada and Mexico to
prohibit the use or Trademark registration of geographical indications in
connection with goods that do not originate in the indicated territory,
region or locality, if the public would be misled as to the geographical
origin of the goods.1
   President Clinton signed the "North American Free Trade Agreement
Implementation Act," Public Law 103-182, 107 Stat. 2057, on Dec. 8, 1993.
The legislation. amending Sections 2(e), 2(f) and 23(a) of the Trademark
Act, applies to applications filed on or after Dec. 8, 1993, and took
effect on Jan. 1, 1994. The Act, entitled "An Act to provide for the
registration and protection of trademarks in commerce, to carry out the
provisions of certain international conventions, and for other purposes,"
approved July 5, 1946, commonly referred to as the Trademark Act of 1946,
has been amended as indicated. Amendments are shown in italics:

I. Subsection 2(e) (15 U.S.C. 1052(e)):
   
   "(e) Consists of a mark which (1) when used on or in connection with
the goods of the applicant is merely descriptive or deceptively
misdescriptive of them, (2) when used on or in connection with the goods
of the applicant is primarily geographically descriptive of them, except
as indications of regional origin may be registrable under section 4, (3)
when used on or in connection with the goods of the applicant is primarily
geographically deceptively misdescriptive of them, or (4) is primarily
merely a surname."

II. Subsection (f) (15 U.S.C. 1052(f)):
   
   "(f) Except as expressly excluded in paragraphs (a), (b), (c), (d), and
(e)(3) of this section, nothing herein shall prevent the registration of a
mark used by the applicant which has become distinctive of the applicant's
goods in commerce. The Commissioner may accept as prima facie evidence
that the mark has become distinctive, as used on or in connection with the
applicant's goods in commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant in commerce for the five
years before the date on which the claim of distinctiveness is made.
Nothing in this section shall prevent the registration of a mark which,
when used on or in connection with the goods of the goods of the
applicant, is primarily geographically deceptively misdescriptive of them,
and which became distinctive of the applicant's goods in commerce before
the date of the enactment of the North American Free Trade Agreement
Implementation Act."

III. Section 23(a)(15 U.S.C 1091(a)):
   
   "(a) In addition to the principle register, the Commissioner shall keep
a continuation of the register provided in paragraph (b) of section 1 of
the Act of March 19, 1920, entitled "An Act to give effect to certain
provisions of the convention for the protection of trademarks and
commercial names, made and signed in the city of Buenos Aires, in the
Argentine Republic, August 20, 1910, and for other purposes", to be called
the supplemental register. All marks capable of distinguishing applicant's
goods or services and not register herein provided, except those declared
to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of
section 2 of this Act, which are in lawful use in commerce by the owner
thereof, on or in connection with any goods or services may be registered
on the supplemental register upon the payment of the prescribed fee and
compliance with the provisions of subsections (a) and (e) of section 1 so
far as they are applicable. Nothing in this section shall prevent the
registration on the supplemental register of a mark, capable of
distinguishing the applicant's goods or services and not registrable on
the principal register under this Act, that is declared to be
unregistrable under section 2(e)(3), if such mark has been in lawful use
in commerce by the owner thereof, on or in connection with any goods or
services, since before the date of the enactment of the North American
Free Trade Agreement Implementation Act."
   
   A mark which is unregistrable on the Principal Register under 2(e)(3)
of the Trademark Act, as amended, on the ground that it is primarily
geographically deceptively misdescriptive of the goods or services, may be
registered under 2(f) only if it became distinctive of the goods or
services in commerce before December 8, 1993. Similarly, such a mark,
capable of distinguishing the applicant's goods or services, may be
registered on the Supplemental Register only if it has been in lawful use
in commerce by the owner since before December 8, 1993. A mark that is
unregistrable under 2 (e)(3) because it contains matter which is primarily
geographically deceptively misdescriptive of the goods or services will
not be rendered registrable by a disclaimer of the geographically
deceptively misdescriptive component. Matter which is primarily
geographically deceptively misdescrip- tive may be omitted or deleted from
the drawing in appropriate cases. 

[1] The Article also prohibits any use constituting unfair competition
within the meaning of Article 10bis (Unfair Competition) of the Paris
Convention.

April 1, 1994                                              ROBERT ANDERSON
                                             Acting Assistant Commissioner
                                                            for Trademarks

                              [1162 TMOG 15]