II 109th CONGRESS 1st Session S. 1604 IN THE SENATE OF THE UNITED STATES July 29, 2005 Mr. Craig (for himself and Mr. Roberts) introduced the following bill; which was read twice and referred to the Committee on the Judiciary A BILL To restore to the judiciary the power to decide all trademark and trade name cases arising under the laws and treaties of the United States, and for other purposes.

1.

Short title

This Act may be cited as the Judicial Powers Restoration Act of 2005.

2.

Findings and purpose

(a)

Findings

Congress makes the following findings: (1)Section 1 of Article III of the Constitution of the United States of America vests judicial Power exclusively in the courts. Section 2 of Article III states that this judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, the Laws of the United States, and Treaties… In interpreting Article III of the Constitution, the Supreme Court in Muskrat v. United States defined the term judicial power to mean the right to determine actual controversies arising between adverse litigants, duly instituted in courts of proper jurisdiction. (2)In 1996, a holder of a trademark registration issued by the Patent and Trademark Office asserted trademark infringement and other claims in a United States district court against an alleged infringer. The plaintiff’s claims for relief were based upon laws and treaties of the United States, including the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) and the Inter-American Convention for Trademark and Commercial Protection. (3)In October 1998, just prior to commencement of the trial, the alleged infringer procured an amendment to the Department of Commerce and Related Agencies Appropriations Act, 1999 (as contained in section 101(b) of division A of Public Law 105–277; 112 Stat. 2681–88). That amendment is commonly referred to as section 211 and has been of singular benefit to that defendant in the courts. (4)Section 211(a)(2) and (b) provides that No United States court shall recognize, enforce, or otherwise validate any assertion of rights of certain trademarks or commercial names of the type at issue in the litigation referred to in paragraph (2). Section 211(a)(1) also rescinds the general authority permitting payment of the fees necessary for registration and renewal of such trademarks with the United States Patent and Trademark Office. (5)The intended and actual effect of section 211 is to strip United States courts of the authority to decide the ownership and enforceability of such trademarks and trade names, including those at issue in the litigation described in paragraph (2). As a result of section 211, the plaintiff in the litigation was prevented from asserting the plaintiff's infringement claim. By preventing the payment of fees for trademark registration and renewal in the Patent and Trademark Office, section 211 also denies parties the ability to preserve claims of ownership in such trademarks pending judicial determination of enforcement rights. (6)Section 211 is not needed for the courts to reach equitable results with respect to the United States trademark and trade name rights of foreign nationals who have suffered from confiscation of their businesses at home. It has been the longstanding practice of the Federal courts to do equity in adjudicating disputes involving such rights. (7)Repeal of section 211 is necessary and desirable to restore to the courts the power to determine the ownership and enforceability of all trademarks and trade names and to preserve trademark registrations pending such determinations. (b)

Purpose

The purpose of this Act is to restore to the judiciary the power to decide all trademark and trade name cases arising under the laws and treaties of the United States, and for other purposes.

3.

Restoration of judicial powers

(a)

In general

Section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999 (as contained in section 101(b) of division A of Public Law 105–277; 112 Stat. 2681–88) is repealed. (b)

Regulations

Not later than 30 days after the date of enactment of this Act, the Secretary of the Treasury shall issue such regulations as are necessary to carry out the repeal made by subsection (a), including removing any prohibition on transactions or payments to which subsection (a)(1) of section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999 applied. (c)

Authority of courts

United States courts shall have the authority to recognize, enforce, or otherwise validate any assertion of rights in any mark or trade name based on common law rights or registration or under subsection (b) or (e) of section 44 of the Trademark Act of 1946 (15 U.S. C. 1126 (b) or (e)) or based on any treaty to which the United States is a party.