[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[H.R. 769 Reported in House (RH)]





                                                  Union Calendar No. 43

106th CONGRESS

  1st Session

                               H. R. 769

                          [Report No. 106-81]

_______________________________________________________________________

                                 A BILL

To amend the Trademark Act of 1946 to provide for the registration and 
   protection of trademarks used in commerce, in order to carry out 
    provisions of certain international conventions, and for other 
                               purposes.

_______________________________________________________________________

                             April 12, 1999

Committed to the Committee of the Whole House on the State of the Union 
                       and ordered to be printed





                                                  Union Calendar No. 43
106th CONGRESS
  1st Session
                                H. R. 769

                          [Report No. 106-81]

To amend the Trademark Act of 1946 to provide for the registration and 
   protection of trademarks used in commerce, in order to carry out 
    provisions of certain international conventions, and for other 
                               purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                           February 23, 1999

  Mr. Coble introduced the following bill; which was referred to the 
                       Committee on the Judiciary

                             April 12, 1999

                     Additional sponsor: Mr. Berman

                             April 12, 1999

Committed to the Committee of the Whole House on the State of the Union 
                       and ordered to be printed

_______________________________________________________________________

                                 A BILL


 
To amend the Trademark Act of 1946 to provide for the registration and 
   protection of trademarks used in commerce, in order to carry out 
    provisions of certain international conventions, and for other 
                               purposes.

    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 ``Madrid Protocol Implementation 
Act''.

SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RELATING TO THE MADRID 
              AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF 
              MARKS.

    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, as amended (15 U.S.C. 1051 and following) 
(commonly referred to as the ``Trademark Act of 1946'') is amended by 
adding after section 51 the following new title:

                    ``TITLE XII--THE MADRID PROTOCOL

``SEC. 60. DEFINITIONS.

    ``For purposes of this title:
            ``(1) Madrid protocol.--The term `Madrid Protocol' means 
        the Protocol Relating to the Madrid Agreement Concerning the 
        International Registration of Marks, adopted at Madrid, Spain, 
        on June 27, 1989.
            ``(2) Basic application.--The term `basic application' 
        means the application for the registration of a mark that has 
        been filed with an Office of a Contracting Party and that 
        constitutes the basis for an application for the international 
        registration of that mark.
            ``(3) Basic registration.--The term `basic registration' 
        means the registration of a mark that has been granted by an 
        Office of a Contracting Party and that constitutes the basis 
        for an application for the international registration of that 
        mark.
            ``(4) Contracting party.--The term `Contracting Party' 
        means any country or inter-governmental organization that is a 
        party to the Madrid Protocol.
            ``(5) Date of recordal.--The term `date of recordal' means 
        the date on which a request for extension of protection that is 
        filed after an international registration is granted is 
        recorded on the International Register.
            ``(6) Declaration of bona fide intention to use the mark in 
        commerce.--The term `declaration of bona fide intention to use 
        the mark in commerce' means a declaration that is signed by the 
        applicant for, or holder of, an international registration who 
        is seeking extension of protection of a mark to the United 
        States and that contains a statement that--
                    ``(A) the applicant or holder has a bona fide 
                intention to use the mark in commerce,
                    ``(B) the person making the declaration believes 
                himself or herself, or the firm, corporation, or 
                association in whose behalf he or she makes the 
                declaration, to be entitled to use the mark in 
                commerce, and
                    ``(C) no other person, firm, corporation, or 
                association, to the best of his or her knowledge and 
                belief, has the right to use such mark in commerce 
                either in the identical form of the mark or in such 
                near resemblance to the mark as to be likely, when used 
                on or in connection with the goods of such other 
                person, firm, corporation, or association, to cause 
                confusion, or to cause mistake, or to deceive.
            ``(7) Extension of protection.--The term `extension of 
        protection' means the protection resulting from an 
        international registration that extends to a Contracting Party 
        at the request of the holder of the international registration, 
        in accordance with the Madrid Protocol.
            ``(8) Holder of an international registration.--A `holder' 
        of an international registration is the natural or juristic 
        person in whose name the international registration is recorded 
        on the International Register.
            ``(9) International application.--The term `international 
        application' means an application for international 
        registration that is filed under the Madrid Protocol.
            ``(10) International bureau.--The term `International 
        Bureau' means the International Bureau of the World 
        Intellectual Property Organization.
            ``(11) International register.--The term `International 
        Register' means the official collection of such data concerning 
        international registrations maintained by the International 
        Bureau that the Madrid Protocol or its implementing regulations 
        require or permit to be recorded, regardless of the medium 
        which contains such data.
            ``(12) International registration.--The term `international 
        registration' means the registration of a mark granted under 
        the Madrid Protocol.
            ``(13) International registration date.--The term 
        `international registration date' means the date assigned to 
        the international registration by the International Bureau.
            ``(14) Notification of refusal.--The term `notification of 
        refusal' means the notice sent by an Office of a Contracting 
        Party to the International Bureau declaring that an extension 
        of protection cannot be granted.
            ``(15) Office of a contracting party.--The term `Office of 
        a Contracting Party' means--
                    ``(A) the office, or governmental entity, of a 
                Contracting Party that is responsible for the 
                registration of marks, or
                    ``(B) the common office, or governmental entity, of 
                more than 1 Contracting Party that is responsible for 
                the registration of marks and is so recognized by the 
                International Bureau.
            ``(16) Office of origin.--The term `office of origin' means 
        the Office of a Contracting Party with which a basic 
        application was filed or by which a basic registration was 
        granted.
            ``(17) Opposition period.--The term `opposition period' 
        means the time allowed for filing an opposition in the Patent 
        and Trademark Office, including any extension of time granted 
        under section 13.

``SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES 
              APPLICATIONS OR REGISTRATIONS.

    ``The owner of a basic application pending before the Patent and 
Trademark Office, or the owner of a basic registration granted by the 
Patent and Trademark Office, who--
            ``(1) is a national of the United States,
            ``(2) is domiciled in the United States, or
            ``(3) has a real and effective industrial or commercial 
        establishment in the United States,
may file an international application by submitting to the Patent and 
Trademark Office a written application in such form, together with such 
fees, as may be prescribed by the Commissioner.

``SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.

    ``Upon the filing of an application for international registration 
and payment of the prescribed fees, the Commissioner shall examine the 
international application for the purpose of certifying that the 
information contained in the international application corresponds to 
the information contained in the basic application or basic 
registration at the time of the certification. Upon examination and 
certification of the international application, the Commissioner shall 
transmit the international application to the International Bureau.

``SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A 
              BASIC APPLICATION OR BASIC REGISTRATION.

    ``With respect to an international application transmitted to the 
International Bureau under section 62, the Commissioner shall notify 
the International Bureau whenever the basic application or basic 
registration which is the basis for the international application has 
been restricted, abandoned, or canceled, or has expired, with respect 
to some or all of the goods and services listed in the international 
registration--
            ``(1) within 5 years after the international registration 
        date; or
            ``(2) more than 5 years after the international 
        registration date if the restriction, abandonment, or 
        cancellation of the basic application or basic registration 
        resulted from an action that began before the end of that 5-
        year period.

``SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO 
              INTERNATIONAL REGISTRATION.

    ``The holder of an international registration that is based upon a 
basic application filed with the Patent and Trademark Office or a basic 
registration granted by the Patent and Trademark Office may request an 
extension of protection of its international registration by filing 
such a request--
            ``(1) directly with the International Bureau, or
            ``(2) with the Patent and Trademark Office for transmittal 
        to the International Bureau, if the request is in such form, 
        and contains such transmittal fee, as may be prescribed by the 
        Commissioner.

``SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO 
              THE UNITED STATES UNDER THE MADRID PROTOCOL.

    ``(a) In General.--Subject to the provisions of section 68, the 
holder of an international registration shall be entitled to the 
benefits of extension of protection of that international registration 
to the United States to the extent necessary to give effect to any 
provision of the Madrid Protocol.
    ``(b) If United States Is Office of Origin.--An extension of 
protection resulting from an international registration of a mark shall 
not apply to the United States if the Patent and Trademark Office is 
the office of origin with respect to that mark.

``SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN 
              INTERNATIONAL REGISTRATION TO THE UNITED STATES.

    ``(a) Requirement for Request for Extension of Protection.--A 
request for extension of protection of an international registration to 
the United States that the International Bureau transmits to the Patent 
and Trademark Office shall be deemed to be properly filed in the United 
States if such request, when received by the International Bureau, has 
attached to it a declaration of bona fide intention to use the mark in 
commerce that is verified by the applicant for, or holder of, the 
international registration.
    ``(b) Effect of Proper Filing.--Unless extension of protection is 
refused under section 68, the proper filing of the request for 
extension of protection under subsection (a) shall constitute 
constructive use of the mark, conferring the same rights as those 
specified in section 7(c), as of the earliest of the following:
            ``(1) The international registration date, if the request 
        for extension of protection was filed in the international 
        application.
            ``(2) The date of recordal of the request for extension of 
        protection, if the request for extension of protection was made 
        after the international registration date.
            ``(3) The date of priority claimed pursuant to section 67.

``SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO 
              THE UNITED STATES.

    ``The holder of an international registration with an extension of 
protection to the United States shall be entitled to claim a date of 
priority based on the right of priority within the meaning of Article 4 
of the Paris Convention for the Protection of Industrial Property if--
            ``(1) the international registration contained a claim of 
        such priority; and
            ``(2)(A) the international application contained a request 
        for extension of protection to the United States, or
            ``(B) the date of recordal of the request for extension of 
        protection to the United States is not later than 6 months 
        after the date of the first regular national filing (within the 
        meaning of Article 4(A)(3) of the Paris Convention for the 
        Protection of Industrial Property) or a subsequent application 
        (within the meaning of Article 4(C)(4) of the Paris 
        Convention).

``SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF 
              PROTECTION; NOTIFICATION OF REFUSAL.

``SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.

    ``Upon the filing of an application for international registration 
and payment of the prescribed fees, the Commissioner shall examine the 
international application for the purpose of certifying that the 
information contained in the international application corresponds to 
the information contained in the basic application or basic 
registration at the time of the certification. Upon examination and 
certification of the international application, the Commissioner shall 
transmit the international application to the International Bureau.

``SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A 
              BASIC APPLICATION OR BASIC REGISTRATION.

    ``With respect to an international application transmitted to the 
International Bureau under section 62, the Commissioner shall notify 
the International Bureau whenever the basic application or basic 
registration which is the basis for the international application has 
been restricted, abandoned, or canceled, or has expired, with respect 
to some or all of the goods and services listed in the international 
registration--
            ``(1) within 5 years after the international registration 
        date; or
            ``(2) more than 5 years after the international 
        registration date if the restriction, abandonment, or 
        cancellation of the basic application or basic registration 
        resulted from an action that began before the end of that 5-
        year period.

``SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO 
              INTERNATIONAL REGISTRATION.

    ``The holder of an international registration that is based upon a 
basic application filed with the Patent and Trademark Office or a basic 
registration granted by the Patent and Trademark Office may request an 
extension of protection of its international registration by filing 
such a request--
            ``(1) directly with the International Bureau, or
            ``(2) with the Patent and Trademark Office for transmittal 
        to the International Bureau, if the request is in such form, 
        and contains such transmittal fee, as may be prescribed by the 
        Commissioner.

``SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO 
              THE UNITED STATES UNDER THE MADRID PROTOCOL.

    ``(a) In General.--Subject to the provisions of section 68, the 
holder of an international registration shall be entitled to the 
benefits of extension of protection of that international registration 
to the United States to the extent necessary to give effect to any 
provision of the Madrid Protocol.
    ``(b) If United States Is Office of Origin.--An extension of 
protection resulting from an international registration of a mark shall 
not apply to the United States if the Patent and Trademark Office is 
the office of origin with respect to that mark.

``SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN 
              INTERNATIONAL REGISTRATION TO THE UNITED STATES.

    ``(a) Requirement for Request for Extension of Protection.--A 
request for extension of protection of an international registration to 
the United States that the International Bureau transmits to the Patent 
and Trademark Office shall be deemed to be properly filed in the United 
States if such request, when received by the International Bureau, has 
attached to it a declaration of bona fide intention to use the mark in 
commerce that is verified by the applicant for, or holder of, the 
international registration.
    ``(b) Effect of Proper Filing.--Unless extension of protection is 
refused under section 68, the proper filing of the request for 
extension of protection under subsection (a) shall constitute 
constructive use of the mark, conferring the same rights as those 
specified in section 7(c), as of the earliest of the following:
            ``(1) The international registration date, if the request 
        for extension of protection was filed in the international 
        application.
            ``(2) The date of recordal of the request for extension of 
        protection, if the request for extension of protection was made 
        after the international registration date.
            ``(3) The date of priority claimed pursuant to section 67.

``SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO 
              THE UNITED STATES.

    ``The holder of an international registration with an extension of 
protection to the United States shall be entitled to claim a date of 
priority based on the right of priority within the meaning of Article 4 
of the Paris Convention for the Protection of Industrial Property if--
            ``(1) the international registration contained a claim of 
        such priority; and
            ``(2)(A) the international application contained a request 
        for extension of protection to the United States, or
            ``(B) the date of recordal of the request for extension of 
        protection to the United States is not later than 6 months 
        after the date of the first regular national filing (within the 
        meaning of Article 4(A)(3) of the Paris Convention for the 
        Protection of Industrial Property) or a subsequent application 
        (within the meaning of Article 4(C)(4) of the Paris 
        Convention).

``SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF 
              PROTECTION; NOTIFICATION OF REFUSAL.

    ``(a) Examination and Opposition.--(1) A request for extension of 
protection described in section 66(a) shall be examined as an 
application for registration on the Principal Register under this Act, 
and if on such examination it appears that the applicant is entitled to 
extension of protection under this title, the Commissioner shall cause 
the mark to be published in the Official Gazette of the Patent and 
Trademark Office.
    ``(2) Subject to the provisions of subsection (c), a request for 
extension of protection under this title shall be subject to opposition 
under section 13. Unless successfully opposed, the request for 
extension of protection shall not be refused.
    ``(3) Extension of protection shall not be refused under this 
section on the ground that the mark has not been used in commerce.
    ``(4) Extension of protection shall be refused under this section 
to any mark not registrable on the Principal Register.
    ``(b) Notification of Refusal.--If, a request for extension of 
protection is refused under subsection (a), the Commissioner shall 
declare in a notification of refusal (as provided in subsection (c)) 
that the extension of protection cannot be granted, together with a 
statement of all grounds on which the refusal was based.
    ``(c) Notice to International Bureau.--(1) Within 18 months after 
the date on which the International Bureau transmits to the Patent and 
Trademark Office a notification of a request for extension of 
protection, the Commissioner shall transmit to the International Bureau 
any of the following that applies to such request:
            ``(A) A notification of refusal based on an examination of 
        the request for extension of protection.
            ``(B) A notification of refusal based on the filing of an 
        opposition to the request.
            ``(C) A notification of the possibility that an opposition 
        to the request may be filed after the end of that 18-month 
        period.
    ``(2) If the Commissioner has sent a notification of the 
possibility of opposition under paragraph (1)(C), the Commissioner 
shall, if applicable, transmit to the International Bureau a 
notification of refusal on the basis of the opposition, together with a 
statement of all the grounds for the opposition, within 7 months after 
the beginning of the opposition period or within 1 month after the end 
of the opposition period, whichever is earlier.
    ``(3) If a notification of refusal of a request for extension of 
protection is transmitted under paragraph (1) or (2), no grounds for 
refusal of such request other than those set forth in such notification 
may be transmitted to the International Bureau by the Commissioner 
after the expiration of the time periods set forth in paragraph (1) or 
(2), as the case may be.
    ``(4) If a notification specified in paragraph (1) or (2) is not 
sent to the International Bureau within the time period set forth in 
such paragraph, with respect to a request for extension of protection, 
the request for extension of protection shall not be refused and the 
Commissioner shall issue a certificate of extension of protection 
pursuant to the request.
    ``(d) Designation of Agent for Service of Process.--In responding 
to a notification of refusal with respect to a mark, the holder of the 
international registration of the mark shall designate, by a written 
document filed in the 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 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. 69. EFFECT OF EXTENSION OF PROTECTION.

    ``(a) Issuance of Extension of Protection.--Unless a request for 
extension of protection is refused under section 68, the Commissioner 
shall issue a certificate of extension of protection pursuant to the 
request and shall cause notice of such certificate of extension of 
protection to be published in the Official Gazette of the Patent and 
Trademark Office.
    ``(b) Effect of Extension of Protection.--From the date on which a 
certificate of extension of protection is issued under subsection (a)--
            ``(1) such extension of protection shall have the same 
        effect and validity as a registration on the Principal 
        Register, and
            ``(2) the holder of the international registration shall 
        have the same rights and remedies as the owner of a 
        registration on the Principal Register.

``SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE UNITED STATES 
              ON THE UNDERLYING INTERNATIONAL REGISTRATION.

    ``(a) Effect of Cancellation of International Registration.--If the 
International Bureau notifies the Patent and Trademark Office of the 
cancellation of an international registration with respect to some or 
all of the goods and services listed in the international registration, 
the Commissioner shall cancel any extension of protection to the United 
States with respect to such goods and services as of the date on which 
the international registration was canceled.
    ``(b) Effect of Failure To Renew International Registration.--If 
the International Bureau does not renew an international registration, 
the corresponding extension of protection to the United States shall 
cease to be valid as of the date of the expiration of the international 
registration.
    ``(c) Transformation of an Extension of Protection Into a United 
States Application.--The holder of an international registration 
canceled in whole or in part by the International Bureau at the request 
of the office of origin, under Article 6(4) of the Madrid Protocol, may 
file an application, under section 1 or 44 of this Act, for the 
registration of the same mark for any of the goods and services to 
which the cancellation applies that were covered by an extension of 
protection to the United States based on that international 
registration. Such an application shall be treated as if it had been 
filed on the international registration date or the date of recordal of 
the request for extension of protection with the International Bureau, 
whichever date applies, and, if the extension of protection enjoyed 
priority under section 67 of this title, shall enjoy the same priority. 
Such an application shall be entitled to the benefits conferred by this 
subsection only if the application is filed not later than 3 months 
after the date on which the international registration was canceled, in 
whole or in part, and only if the application complies with all the 
requirements of this Act which apply to any application filed pursuant 
to section 1 or 44.

``SEC. 71. AFFIDAVITS AND FEES.

    ``(a) Required Affidavits and Fees.--An extension of protection for 
which a certificate of extension of protection has 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 Commissioner--
            ``(1) at the end of the 6-year period beginning on the date 
        on which the certificate of extension of protection was issued 
        by the Commissioner, unless within the 1-year period preceding 
        the expiration of that 6-year period the holder of the 
        international registration files in the Patent and Trademark 
        Office an affidavit under subsection (b) together with a fee 
        prescribed by the Commissioner; and
            ``(2) at the end of the 10-year period beginning on the 
        date on which the certificate of extension of protection was 
        issued by the Commissioner, and at the end of each 10-year 
        period thereafter, unless--
                    ``(A) within the 6-month period preceding the 
                expiration of such 10-year period the holder of the 
                international registration files in the Patent and 
                Trademark Office an affidavit under subsection (b) 
                together with a fee prescribed by the Commissioner; or
                    ``(B) within 3 months after the expiration of such 
                10-year period, the holder of the international 
                registration files in the Patent and Trademark Office 
                an affidavit under subsection (b) together with the fee 
                described in subparagraph (A) and an additional fee 
                prescribed by the Commissioner.
    ``(b) Contents of Affidavit.--The affidavit referred to in 
subsection (a) shall set forth those goods or services recited in the 
extension of protection on or in connection with which the mark is in 
use in commerce and the holder of the international registration shall 
attach to the affidavit a specimen or facsimile showing the current use 
of the mark in commerce, or shall set forth that any nonuse is due to 
special circumstances which excuse such nonuse and is not due to any 
intention to abandon the mark. Special notice of the requirement for 
such affidavit shall be attached to each certificate of extension of 
protection.

``SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

    ``An extension of protection may be assigned, together with the 
goodwill associated with the mark, only to a person who is a national 
of, is domiciled in, or has a bona fide and effective industrial or 
commercial establishment either in a country that is a Contracting 
Party or in a country that is a member of an intergovernmental 
organization that is a Contracting Party.

``SEC. 73. INCONTESTABILITY.

    ``The period of continuous use prescribed under section 15 for a 
mark covered by an extension of protection issued under this title may 
begin no earlier than the date on which the Commissioner issues the 
certificate of the extension of protection under section 69, except as 
provided in section 74.

``SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

    ``An extension of protection shall convey the same rights as an 
existing registration for the same mark, if--
            ``(1) the extension of protection and the existing 
        registration are owned by the same person;
            ``(2) the goods and services listed in the existing 
        registration are also listed in the extension of protection; 
        and
            ``(3) the certificate of extension of protection is issued 
        after the date of the existing registration.''.

SEC. 3. EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect on 
the date on which the Madrid Protocol (as defined in section 60(1) of 
the Trademark Act of 1946) enters into force with respect to the United 
States.