I 111th CONGRESS 1st Session H. R. 3499 IN THE HOUSE OF REPRESENTATIVES July 31, 2009 Mr. Maffei introduced the following bill; which was referred to the Committee on the Judiciary A BILL To amend the Trademark Act of 1946 to allow civil actions against persons who use trademarks that are misleading as to the origin of goods in certain cases.

1.

Short title

This Act may be cited as the Trademark Protection Act.

2.

Findings

The Congress finds the following: (1)Trademarks allow quick identification of a seller’s product, and can become an indicator of a product’s quality. Thus, a trademarked good may command a premium in the marketplace because of its reputation. (2)Trademarks that describe some feature or quality of the goods or that are based on someone’s name or a geographic term are considered to be weak, and thus are not protectable under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising, or other public awareness of a weak trademark, the trademark will be considered distinctive and can be registered with the United States Patent and Trademark Office (USPTO). (3)Syracuse China was an upstate New York manufacturer in the city of Syracuse. The company was founded in 1871 as the Onondaga Pottery Co. and was one of the last major china makers in the United States. On April 9, 2009, after more than 130 years in business, Libbey Inc. (of Toledo, Ohio) halted production in Syracuse, eliminating 275 local jobs. Libbey plans to continue selling dinnerware under the name “Syracuse China” even after they stop production at the New York-based plant, but the company will manufacture the product in other countries and import them into the United States.

3.

Amendments to Trademark Act

(a)

False designations of origin

Section 43(a)(1) of 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 (commonly referred to as the Trademark Act of 1946; 15 U.S.C. 1125(a)(1)), is amended— (1)in subparagraph (A), by striking or after the comma at the end; (2)by redesignating subparagraph (B) as subparagraph (C); and (3)by inserting after subparagraph (A) the following: (B)is misleadingly misdirective as to origin, or . (b)

Definitions

Section 45 of such Act (15 U.S.C. 1127) is amended by inserting after the definition of Internet the following: The term misleadingly misdirective as to origin refers to the use of a trademark, which has as an exclusive element the name of a State or municipality within a State, on or in connection with goods that are not or are no longer produced in whole or in part in such State or municipality or that do not contain a component produced in such State or municipality. .

4.

Effective date

The amendments made by this Act apply to any civil action brought on or after the date of the enactment of this Act, with respect to any cause of action arising on or after that date.