[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