[Congressional Bills 111th Congress]
[From the U.S. Government Publishing Office]
[S. 2968 Considered and Passed Senate (CPS)]

111th CONGRESS
  2d Session
                                S. 2968

 To make certain technical and conforming amendments to the Lanham Act.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                            January 28, 2010

Mr. Leahy (for himself and Mr. Sessions) introduced the following bill; 
         which was considered, read the third time, and passed

_______________________________________________________________________

                                 A BILL


 
 To make certain technical and conforming amendments to the Lanham Act.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Trademark Technical and Conforming 
Amendment Act of 2010.''.

SEC. 2. DEFINITION.

    For purposes of this Act, the term ``Trademark Act of 1946'' means 
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 ``Lanham Act''; 15 
U.S.C. 1051 et. seq).

SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS.

    (a) Certificates of Registration.--Section 7 of the Trademark Act 
of 1946 (15 U.S.C. 1057) is amended--
            (1) by inserting ``United States'' before ``Patent and 
        Trademark Office'' each place that term appears;
            (2) in subsection (b), by striking ``registrant's'' each 
        place that appears and inserting ``owner's'';
            (3) in subsection (e)--
                    (A) by striking ``registrant'' each place that term 
                appears and inserting ``owner''; and
                    (B) in the third sentence, by striking ``or, if 
                said certificate is lost or destroyed, upon a certified 
                copy thereof''; and
            (4) by amending subsection (g) to read as follows:
    ``(g) Correction of Patent and Trademark Office Mistake.--Whenever 
a material mistake in a registration, incurred through the fault of the 
United States Patent and Trademark Office, is clearly disclosed by the 
records of the Office a certificate stating the fact and nature of such 
mistake shall be issued without charge and recorded and a printed copy 
thereof shall be attached to each printed copy of the registration and 
such corrected registration shall thereafter have the same effect as if 
the same had been originally issued in such corrected form, or in the 
discretion of the Director a new certificate of registration may be 
issued without charge. All certificates of correction heretofore issued 
in accordance with the rules of the United States Patent and Trademark 
Office and the registrations to which they are attached shall have the 
same force and effect as if such certificates and their issue had been 
specifically authorized by statute.''.
    (b) Incontestability of Right to Use Mark Under Certain 
Conditions.--Section 15 of the Trademark Act of 1946 (15 U.S.C. 1065) 
is amended--
            (1) by striking ``right of the registrant'' and inserting 
        ``right of the owner'';
            (2) by amending paragraph (1) to read as follows:
            ``(1) there has been no final decision adverse to the 
        owner's claim of ownership of such mark for such goods or 
        services, or to the owner's right to register the same or to 
        keep the same on the register; and''; and
            (3) in paragraph (2), by inserting ``United States'' before 
        ``Patent and Trademark Office''.
    (c) Appeal to Courts.--Section 21 of the Trademark Act of 1946 (15 
U.S.C. 1071) is amended--
            (1) by inserting ``United States'' before ``Patent and 
        Trademark Office'' each place that term appears;
            (2) in subsection (a)(1), by inserting ``or section 71'' 
        after ``section 8''; and
            (3) in subsection (b)(4), by striking ``If there be'' and 
        inserting ``If there are''.
    (d) Conforming Requirements for Affidavits.--
            (1) Duration, affidavits and fees.--Section 8 of the 
        Trademark Act of 1946 (15 U.S.C. 1058) is amended to read as 
        follows:

``SEC. 8. DURATION, AFFIDAVITS AND FEES.

    ``(a) Time Periods for Required Affidavits.--Each registration 
shall remain in force for 10 years, except that the registration of any 
mark shall be canceled by the Director unless the owner of the 
registration files in the United States Patent and Trademark Office 
affidavits that meet the requirements of subsection (b), within the 
following time periods:
            ``(1) Within the 1-year period immediately preceding the 
        expiration of 6 years following the date of registration under 
        this Act or the date of the publication under section 12(c).
            ``(2) Within the 1-year period immediately preceding the 
        expiration of 10 years following the date of registration, and 
        each successive 10-year period following the date of 
        registration.
            ``(3) The owner may file the affidavit required under this 
        section within the 6-month grace period immediately following 
        the expiration of the periods established in paragraphs (1) and 
        (2), together with the fee described in subsection (b) and the 
        additional grace period surcharge prescribed by the Director.
    ``(b) Requirements for Affidavit.--The affidavit referred to in 
subsection (a) shall--
            ``(1)(A) state that the mark is in use in commerce;
            ``(B) set forth the goods and services recited in the 
        registration on or in connection with which the mark is in use 
        in commerce;
            ``(C) be accompanied by such number of specimens or 
        facsimiles showing current use of the mark in commerce as may 
        be required by the Director; and
            ``(D) be accompanied by the fee prescribed by the Director; 
        or
            ``(2)(A) set forth the goods and services recited in the 
        registration on or in connection with which the mark is not in 
        use in commerce;
            ``(B) include a showing that any nonuse is due to special 
        circumstances which excuse such nonuse and is not due to any 
        intention to abandon the mark; and
            ``(C) be accompanied by the fee prescribed by the Director.
    ``(c) Deficient Affidavit.--If any submission filed within the 
period set forth in subsection (a) is deficient, including that the 
affidavit was not filed in the name of the owner of the registration, 
the deficiency may be corrected after the statutory time period, within 
the time prescribed after notification of the deficiency. Such 
submission shall be accompanied by the additional deficiency surcharge 
prescribed by the Director.
    ``(d) Notice of Requirement.--Special notice of the requirement for 
such affidavit shall be attached to each certificate of registration 
and notice of publication under section 12(c).
    ``(e) Notification of Acceptance or Refusal.--The Director shall 
notify any owner who files any affidavit required by this section of 
the Director's acceptance or refusal thereof and, in the case of a 
refusal, the reasons therefor.
    ``(f) Designation of Resident for Service of Process and Notices.--
If the owner is not domiciled in the United States, the owner may 
designate, by a document filed in the United States 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 last 
designated address, or if the owner does not designate by a document 
filed in the United States 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 on the Director.''.
            (2) Affidavits and fees.--Section 71 of the Trademark Act 
        of 1946 (15 U.S.C. 1141k) is amended to read as follows:

``SEC. 71. DURATION, AFFIDAVITS AND FEES.

    ``(a) Time Periods for Required Affidavits.--Each extension of 
protection for which a certificate 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 unless the holder of the 
international registration files in the United States Patent and 
Trademark Office affidavits that meet the requirements of subsection 
(b), within the following time periods:
            ``(1) Within the 1-year period immediately preceding the 
        expiration of 6 years following the date of issuance of the 
        certificate of extension of protection.
            ``(2) Within the 1-year period immediately preceding the 
        expiration of 10 years following the date of issuance of the 
        certificate of extension of protection, and each successive 10-
        year period following the date of issuance of the certificate 
        of extension of protection.
            ``(3) The holder may file the affidavit required under this 
        section within a grace period of 6 months after the end of the 
        applicable time period established in paragraph (1) or (2), 
        together with the fee described in subsection (b) and the 
        additional grace period surcharge prescribed by the Director.
    ``(b) Requirements for Affidavit.--The affidavit referred to in 
subsection (a) shall--
            ``(1)(A) state that the mark is in use in commerce;
            ``(B) set forth the goods and services recited in the 
        extension of protection on or in connection with which the mark 
        is in use in commerce;
            ``(C) be accompanied by such number of specimens or 
        facsimiles showing current use of the mark in commerce as may 
        be required by the Director; and
            ``(D) be accompanied by the fee prescribed by the Director; 
        or
            ``(2)(A) set forth the goods and services recited in the 
        extension of protection on or in connection with which the mark 
        is not in use in commerce;
            ``(B) include a showing that any nonuse is due to special 
        circumstances which excuse such nonuse and is not due to any 
        intention to abandon the mark; and
            ``(C) be accompanied by the fee prescribed by the Director.
    ``(c) Deficient Affidavit.--If any submission filed within the 
period set forth in subsection (a) is deficient, including that the 
affidavit was not filed in the name of the holder of the international 
registration, the deficiency may be corrected after the statutory time 
period, within the time prescribed after notification of the 
deficiency. Such submission shall be accompanied by the additional 
deficiency surcharge prescribed by the Director.
    ``(d) Notice of Requirement.--Special notice of the requirement for 
such affidavit shall be attached to each certificate of extension of 
protection.
    ``(e) Notification of Acceptance or Refusal.--The Director shall 
notify the holder of the international registration who files any 
affidavit required by this section of the Director's acceptance or 
refusal thereof and, in the case of a refusal, the reasons therefor.
    ``(f) Designation of Resident for Service of Process and Notices.--
If the holder of the international registration of the mark is not 
domiciled in the United States, the holder may designate, by a document 
filed in the United States 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 last designated address, 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 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 on the 
Director.''.

SEC. 4. STUDY AND REPORT.

    (a) In General.--Not later than 1 year after the date of enactment 
of this Act, the Secretary of Commerce, in consultation with the 
Intellectual Property Enforcement Coordinator, shall study and report 
to the Committee on the Judiciary of the Senate and the Committee on 
the Judiciary of the House of Representatives on--
            (1) the extent to which small businesses may be harmed by 
        litigation tactics by corporations attempting to enforce 
        trademark rights beyond a reasonable interpretation of the 
        scope of the rights granted to the trademark owner; and
            (2) the best use of Federal Government services to protect 
        trademarks and prevent counterfeiting.
    (b) Recommendations.--The study and report required under paragraph 
(1) shall also include any policy recommendations the Secretary of 
Commerce and the Intellectual Property Enforcement Coordinator deem 
appropriate.
                                 <all>