[Congressional Bills 107th Congress]
[From the U.S. Government Publishing Office]
[S. 407 Reported in Senate (RS)]
Calendar No. 101
107th CONGRESS
1st Session
S. 407
[Report No. 107-46]
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 SENATE OF THE UNITED STATES
February 27, 2001
Mr. Leahy (for himself and Mr. Hatch) introduced the following bill;
which was read twice and referred to the Committee on the Judiciary
July 25, 2001
Reported by Mr. Leahy, with an amendment
[Strike out all after the enacting clause and insert the part printed
in italic]
_______________________________________________________________________
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,
<DELETED>SECTION 1. SHORT TITLE.</DELETED>
<DELETED> This Act may be cited as the ``Madrid Protocol
Implementation Act''.</DELETED>
<DELETED>SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS.</DELETED>
<DELETED> 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:</DELETED>
<DELETED>``TITLE XII--THE MADRID PROTOCOL</DELETED>
<DELETED>``SEC. 60. DEFINITIONS.</DELETED>
<DELETED> ``For purposes of this title:</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(4) Contracting party.--The term `Contracting
Party' means any country or inter-governmental organization
that is a party to the Madrid Protocol.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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--
</DELETED>
<DELETED> ``(A) the applicant or holder has a bona
fide intention to use the mark in commerce;</DELETED>
<DELETED> ``(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</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(9) International application.--The term
`international application' means an application for
international registration that is filed under the Madrid
Protocol.</DELETED>
<DELETED> ``(10) International bureau.--The term
`International Bureau' means the International Bureau of the
World Intellectual Property Organization.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(12) International registration.--The term
`international registration' means the registration of a mark
granted under the Madrid Protocol.</DELETED>
<DELETED> ``(13) International registration date.--The term
`international registration date' means the date assigned to
the international registration by the International
Bureau.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(15) Office of a contracting party.--The term
`Office of a Contracting Party' means--</DELETED>
<DELETED> ``(A) the office, or governmental entity,
of a Contracting Party that is responsible for the
registration of marks; or</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED>``SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES
APPLICATIONS OR REGISTRATIONS.</DELETED>
<DELETED> ``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--</DELETED>
<DELETED> ``(1) is a national of the United
States;</DELETED>
<DELETED> ``(2) is domiciled in the United States;
or</DELETED>
<DELETED> ``(3) has a real and effective industrial or
commercial establishment in the United States,</DELETED>
<DELETED>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
Director.</DELETED>
<DELETED>``SEC. 62. CERTIFICATION OF THE INTERNATIONAL
APPLICATION.</DELETED>
<DELETED> ``Upon the filing of an application for international
registration and payment of the prescribed fees, the Director 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 Director shall
transmit the international application to the International
Bureau.</DELETED>
<DELETED>``SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR
EXPIRATION OF A BASIC APPLICATION OR BASIC
REGISTRATION.</DELETED>
<DELETED> ``With respect to an international application transmitted
to the International Bureau under section 62, the Director 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--</DELETED>
<DELETED> ``(1) within 5 years after the international
registration date; or</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED>``SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO
INTERNATIONAL REGISTRATION.</DELETED>
<DELETED> ``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--</DELETED>
<DELETED> ``(1) directly with the International Bureau;
or</DELETED>
<DELETED> ``(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 Director.</DELETED>
<DELETED>``SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL
REGISTRATION TO THE UNITED STATES UNDER THE MADRID
PROTOCOL.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED>``SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF
PROTECTION OF AN INTERNATIONAL REGISTRATION TO THE UNITED
STATES.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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:</DELETED>
<DELETED> ``(1) The international registration date, if the
request for extension of protection was filed in the
international application.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(3) The date of priority claimed pursuant to
section 67.</DELETED>
<DELETED>``SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF
PROTECTION TO THE UNITED STATES.</DELETED>
<DELETED> ``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--</DELETED>
<DELETED> ``(1) the international registration contained a
claim of such priority; and</DELETED>
<DELETED> ``(2)(A) the international application contained a
request for extension of protection to the United States;
or</DELETED>
<DELETED> ``(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).</DELETED>
<DELETED>``SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR
EXTENSION OF PROTECTION; NOTIFICATION OF
REFUSAL.</DELETED>
<DELETED> ``(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 Director
shall cause the mark to be published in the Official Gazette of the
Patent and Trademark Office.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(3) Extension of protection shall not be refused under
this section on the ground that the mark has not been used in
commerce.</DELETED>
<DELETED> ``(4) Extension of protection shall be refused under this
section to any mark not registrable on the Principal
Register.</DELETED>
<DELETED> ``(b) Notification of Refusal.--If, a request for
extension of protection is refused under subsection (a), the Director
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.</DELETED>
<DELETED> ``(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 Director shall transmit to the
International Bureau any of the following that applies to such
request:</DELETED>
<DELETED> ``(A) A notification of refusal based on an
examination of the request for extension of
protection.</DELETED>
<DELETED> ``(B) A notification of refusal based on the
filing of an opposition to the request.</DELETED>
<DELETED> ``(C) A notification of the possibility that an
opposition to the request may be filed after the end of that
18-month period.</DELETED>
<DELETED> ``(2) If the Director has sent a notification of the
possibility of opposition under paragraph (1)(C), the Director 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.</DELETED>
<DELETED> ``(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
Director after the expiration of the time periods set forth in
paragraph (1) or (2), as the case may be.</DELETED>
<DELETED> ``(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 Director shall issue a certificate of extension of
protection pursuant to the request.</DELETED>
<DELETED> ``(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
Director.</DELETED>
<DELETED>``SEC. 69. EFFECT OF EXTENSION OF PROTECTION.</DELETED>
<DELETED> ``(a) Issuance of Extension of Protection.--Unless a
request for extension of protection is refused under section 68, the
Director 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.</DELETED>
<DELETED> ``(b) Effect of Extension of Protection.--From the date on
which a certificate of extension of protection is issued under
subsection (a)--</DELETED>
<DELETED> ``(1) such extension of protection shall have the
same effect and validity as a registration on the Principal
Register; and</DELETED>
<DELETED> ``(2) the holder of the international registration
shall have the same rights and remedies as the owner of a
registration on the Principal Register.</DELETED>
<DELETED>``SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE UNITED
STATES ON THE UNDERLYING INTERNATIONAL
REGISTRATION.</DELETED>
<DELETED> ``(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 Director 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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED>``SEC. 71. AFFIDAVITS AND FEES.</DELETED>
<DELETED> ``(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 Director--
</DELETED>
<DELETED> ``(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 Director, 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 Director; and</DELETED>
<DELETED> ``(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 Director, and at the end of each 10-year
period thereafter, unless--</DELETED>
<DELETED> ``(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 Director;
or</DELETED>
<DELETED> ``(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 Director.</DELETED>
<DELETED> ``(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.</DELETED>
<DELETED>``SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.</DELETED>
<DELETED> ``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.</DELETED>
<DELETED>``SEC. 73. INCONTESTABILITY.</DELETED>
<DELETED> ``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 Director issues
the certificate of the extension of protection under section 69, except
as provided in section 74.</DELETED>
<DELETED>``SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.</DELETED>
<DELETED> ``An extension of protection shall convey the same rights
as an existing registration for the same mark, if--</DELETED>
<DELETED> ``(1) the extension of protection and the existing
registration are owned by the same person;</DELETED>
<DELETED> ``(2) the goods and services listed in the
existing registration are also listed in the extension of
protection; and</DELETED>
<DELETED> ``(3) the certificate of extension of protection
is issued after the date of the existing
registration.''.</DELETED>
<DELETED>SEC. 3. EFFECTIVE DATE.</DELETED>
<DELETED> 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.</DELETED>
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:
``TITLE XII--THE MADRID PROTOCOL
``SEC. 60. DEFINITIONS.
``In this title:
``(1) 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.
``(2) 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.
``(3) Contracting party.--The term `Contracting Party'
means any country or inter-governmental organization that is a
party to the Madrid Protocol.
``(4) Date of recordal.--The term `date of recordal' means
the date on which a request for extension of protection, filed
after an international registration is granted, is recorded on
the International Register.
``(5) 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, mistake, or deception.
``(6) Extension of protection.--The term `extension of
protection' means the protection resulting from an
international registration that extends to the United States at
the request of the holder of the international registration, in
accordance with the Madrid Protocol.
``(7) 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.
``(8) International application.--The term `international
application' means an application for international
registration that is filed under the Madrid Protocol.
``(9) International bureau.--The term `International
Bureau' means the International Bureau of the World
Intellectual Property Organization.
``(10) International register.--The term `International
Register' means the official collection of data concerning
international registrations maintained by the International
Bureau that the Madrid Protocol or its implementing regulations
require or permit to be recorded.
``(11) International registration.--The term `international
registration' means the registration of a mark granted under
the Madrid Protocol.
``(12) International registration date.--The term
`international registration date' means the date assigned to
the international registration by the International Bureau.
``(13) 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.
``(14) Notification of refusal.--The term `notification of
refusal' means the notice sent by the United States Patent and
Trademark Office 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 United
States Patent and Trademark Office, including any extension of
time granted under section 13.
``SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES
APPLICATIONS OR REGISTRATIONS.
``(a) In General.--The owner of a basic application pending before
the United States Patent and Trademark Office, or the owner of a basic
registration granted by the United States Patent and Trademark Office
may file an international application by submitting to the United
States Patent and Trademark Office a written application in such form,
together with such fees, as may be prescribed by the Director.
``(b) Qualified Owners.--A qualified owner, under subsection (a),
shall--
``(1) be a national of the United States;
``(2) be domiciled in the United States; or
``(3) have a real and effective industrial or commercial
establishment in the United States.
``SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
``(a) Certification Procedure.--Upon the filing of an application
for international registration and payment of the prescribed fees, the
Director 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.
``(b) Transmittal.--Upon examination and certification of the
international application, the Director 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 Director 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 United States 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 United States 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 Director.
``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 the United States Is Office of Origin.--Where the United
States Patent and Trademark Office is the office of origin for a
trademark application or registration, any international registration
based on such application or registration cannot be used to obtain the
benefits of the Madrid Protocol in the United States.
``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 United
States 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 a request for an
extension of protection to the United States shall be entitled to claim
a date of priority based on a right of priority within the meaning of
Article 4 of the Paris Convention for the Protection of Industrial
Property if--
``(1) the request for extension of protection contains a
claim of priority; and
``(2) the date of international registration or the date of
the 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 for the
Protection of Industrial Property).
``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 Director shall cause the
mark to be published in the Official Gazette of the United States
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.
``(3) Extension of protection shall not be refused on the ground
that the mark has not been used in commerce.
``(4) Extension of protection shall be refused 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 Director 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 Director 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 Director has sent a notification of the possibility of
opposition under paragraph (1)(C), the Director 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 Director after
the expiration of the time periods set forth in paragraph (1) or (2),
as the case may be.
``(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 may designate, by a document
filed in the United States Patent and Trademark Office, the name and
address of a person residing in the United States on whom notices or
process in proceedings affecting the mark may be served. Such notices
or process may be served upon the person designated by leaving with
that person, or mailing to that person, a copy thereof at the address
specified in the last designation filed. If the person designated
cannot be found at the address given in the last designation, or if the
holder does not designate by a document filed in the United States
Patent and Trademark Office the name and address of a person residing
in the United States for service of notices or process in proceedings
affecting the mark, the notice or process may be served on the
Director.
``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 Director 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 United States 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 United States 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 Director 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 Director--
``(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 Director, 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 Director; 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 Director, 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 United States
Patent and Trademark Office an affidavit under
subsection (b) together with a fee prescribed by the
Director; 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 the surcharge
prescribed by the Director.
``(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.
``(c) Notification.--The Director shall notify the holder of the
international registration who files 1 of the affidavits of the
Director's acceptance or refusal thereof and, in case of a refusal, the
reasons therefor.
``(d) Service of Notice or Process.--The holder of the
international registration of the mark may designate, by a document
filed in the United States Patent and Trademark Office, the name and
address of a person residing in the United States on whom notices or
process in proceedings affecting the mark may be served. 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 designated
cannot be found at the address given in the last designation, or if the
holder does not designate by a document filed in the United States
Patent and Trademark Office the name and address of a person residing
in the United States for service of notices or process in proceedings
affecting the mark, the notice or process may be served on the
Director.
``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 Director issues the
certificate of the extension of protection under section 69, except as
provided in section 74.
``SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
``When a United States registration and a subsequently issued
certificate of extension of protection to the United States are owned
by the same person, identify the same mark, and list the same goods or
services, the extension of protection shall have the same rights that
accrued to the registration prior to issuance of the certificate of
extension of protection.''.
SEC. 3. EFFECTIVE DATE.
This Act and the amendments made by this Act shall take effect on
the later of--
(1) the date on which the Madrid Protocol (as defined in
section 60 of the Trademark Act of 1946) enters into force with
respect to the United States; or
(2) the date occurring 1 year after the date of enactment
of this Act.
Calendar No. 101
107th CONGRESS
1st Session
S. 407
[Report No. 107-46]
_______________________________________________________________________
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.
_______________________________________________________________________
July 25, 2001
Reported with an amendment