[Congressional Record Volume 143, Number 104 (Tuesday, July 22, 1997)]
[House]
[Pages H5505-H5507]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK LAW TREATY IMPLEMENTATION ACT

  Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill 
(H.R. 1661) to implement the provisions of the Trademark Law Treaty, as 
amended.
  The Clerk read as follows:

                               H.R. 1661

       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 Law Treaty 
     Implementation Act''.

     SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

       For purposes of this Act, 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 (15 U.S.C. 1051 et seq.), shall be referred to 
     as the ``Trademark Act of 1946''.

     SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.

       (a) Application for Use of Trademark.--Section 1(a) of the 
     Trademark Act of 1946 (15 U.S.C. 1051(a)) is amended to read 
     as follows:
       ``Section 1. (a)(1) The owner of a trademark used in 
     commerce may request registration of its trademark on the 
     principal register hereby established by paying the 
     prescribed fee and filing in the Patent and Trademark Office 
     an application and a verified statement, in such form as may 
     be prescribed by the Commissioner, and such number of 
     specimens or facsimiles of the mark as used as may be 
     required by the Commissioner.
       ``(2) The application shall include specification of the 
     applicant's domicile and citizenship, the date of the 
     applicant's first use of the mark, the date of the 
     applicant's first use of the mark in commerce, the goods in 
     connection with which the mark is used, and a drawing of the 
     mark.
       ``(3) The statement shall be verified by the applicant and 
     specify that--
       ``(A) the person making the verification believes that he 
     or she, or the juristic person in whose behalf he or she 
     makes the verification, to be the owner of the mark sought to 
     be registered;
       ``(B) to the best of the verifier's knowledge and belief, 
     the facts recited in the application are accurate;
       ``(C) the mark is in use in commerce; and
       ``(D) to the best of the verifier's knowledge and belief, 
     no other person has the right to use such mark in commerce 
     either in the identical form thereof or in such near 
     resemblance thereto as to be likely, when used on or in 
     connection with the goods of such other person, to cause 
     confusion, or to cause mistake, or to deceive, except that, 
     in the case of every application claiming concurrent use, the 
     applicant shall--
       ``(i) state exceptions to the claim of exclusive use; and
       ``(ii) shall specify, to the extent of the verifier's 
     knowledge--
       ``(I) any concurrent use by others;
       ``(II) the goods on or in connection with which and the 
     areas in which each concurrent use exists;
       ``(III) the periods of each use; and
       ``(IV) the goods and area for which the applicant desires 
     registration.
       ``(4) The applicant shall comply with such rules or 
     regulations as may be prescribed by the Commissioner. The 
     Commissioner shall promulgate rules prescribing the 
     requirements for the application and for obtaining a filing 
     date herein.''.
       (b) Application for Bona Fide Intention To Use Trademark.--
     Subsection (b) of section 1 of the Trademark Act of 1946 (15 
     U.S.C. 1051(b)) is amended to read as follows:
       ``(b)(1) A person who has a bona fide intention, under 
     circumstances showing the good faith of such person, to use a 
     trademark in commerce may request registration of its 
     trademark on the principal register hereby established by 
     paying the prescribed fee and filing in the Patent and 
     Trademark Office an application and a verified statement, in 
     such form as may be prescribed by the Commissioner.
       ``(2) The application shall include specification of the 
     applicant's domicile and citizenship, the goods in connection 
     with which the applicant has a bona fide intention to use the 
     mark, and a drawing of the mark.
       ``(3) The statement shall be verified by the applicant and 
     specify--
       ``(A) that the person making the verification believes that 
     he or she, or the juristic person in whose behalf he or she 
     makes the verification, to be entitled to use the mark in 
     commerce;
       ``(B) the applicant's bona fide intention to use the mark 
     in commerce;
       ``(C) that, to the best of the verifier's knowledge and 
     belief, the facts recited in the application are accurate; 
     and
       ``(D) that, to the best of the verifier's knowledge and 
     belief, no other person has the right to use such mark in 
     commerce either in the identical form thereof or in such near 
     resemblance thereto as to be likely, when used on or in 
     connection with the

[[Page H5506]]

     goods of such other person, to cause confusion, or to cause 
     mistake, or to deceive.

     Except for applications filed pursuant to section 44, no mark 
     shall be registered until the applicant has met the 
     requirements of subsections (c) and (d) of this section.
       ``(4) The applicant shall comply with such rules or 
     regulations as may be prescribed by the Commissioner. The 
     Commissioner shall promulgate rules prescribing the 
     requirements for the application and for obtaining a filing 
     date herein.''.
       (c) Consequence of Delays.--Paragraph (4) of section 1(d) 
     of the Trademark Act of 1946 (15 U.S.C. 1051(d)(4)) is 
     amended to read as follows:
       ``(4) The failure to timely file a verified statement of 
     use under paragraph (1) or an extension request under 
     paragraph (2) shall result in abandonment of the application, 
     unless it can be shown to the satisfaction of the 
     Commissioner that the delay in responding was unintentional, 
     in which case the time for filing may be extended, but for a 
     period not to exceed the period specified in paragraphs (1) 
     and (2) for filing a statement of use.''.

     SEC. 4. REVIVAL OF ABANDONED APPLICATION.

       Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 
     1062(b)) is amended in the last sentence by striking 
     ``unavoidable'' and by inserting ``unintentional''.

     SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT OF 
                   CONTINUED USE; NOTICE OF COMMISSIONER'S ACTION.

       Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is 
     amended to read as follows:


                               ``duration

       ``Sec. 8. (a) Each registration shall remain in force for 
     10 years, except that the registration of any mark shall be 
     canceled by the Commissioner for failure to comply with the 
     provisions of subsection (b) of this section, upon the 
     expiration of the following time periods, as applicable:
       ``(1) For registrations issued pursuant to the provisions 
     of this Act, at the end of 6 years following the date of 
     registration.
       ``(2) For registrations published under the provisions of 
     section 12(c), at the end of 6 years following the date of 
     publication under such section.
       ``(3) For all registrations, at the end of each successive 
     10-year period following the date of registration.
       ``(b) During the 1-year period immediately preceding the 
     end of the applicable time period set forth in subsection 
     (a), the owner of the registration shall pay the prescribed 
     fee and file in the Patent and Trademark Office--
       ``(1) an affidavit setting forth those goods or services 
     recited in the registration on or in connection with which 
     the mark is in use in commerce and such number of specimens 
     or facsimiles showing current use of the mark as may be 
     required by the Commissioner; or
       ``(2) an affidavit setting forth those goods or services 
     recited in the registration on or in connection with which 
     the mark is not in use in commerce and showing that any such 
     nonuse is due to special circumstances which excuse such 
     nonuse and is not due to any intention to abandon the mark.
       ``(c) The owner of the registration may make the 
     submissions required by this section, or correct any 
     deficiency in a timely filed submission, within a grace 
     period of 6 months after the end of the applicable time 
     period set forth in subsection (a). Such submission must be 
     accompanied by a surcharge prescribed therefor. If any 
     submission required by this section filed during the grace 
     period is deficient, the deficiency may be corrected within 
     the time prescribed after notification of the deficiency. 
     Such submission must be accompanied by a surcharge prescribed 
     therefor.
       ``(d) Special notice of the requirement for affidavits 
     under this section shall be attached to each certificate of 
     registration and notice of publication under section 12(c).
       ``(e) The Commissioner shall notify any owner who files 1 
     of the affidavits required by this section of the 
     Commissioner's acceptance or refusal thereof and, in the case 
     of a refusal, the reasons therefor.
       ``(f) If the registrant is not domiciled in the United 
     States, the registrant shall designate by a written document 
     filed in the Patent and Trademark Office the name and address 
     of some 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 Commissioner.''.

     SEC. 6. RENEWAL OF REGISTRATION.

       Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is 
     amended to read as follows:


                       ``renewal of registration

       ``Sec. 9. (a) Subject to the provisions of section 8, each 
     registration may be renewed for periods of 10 years at the 
     end of each successive 10-year period following the date of 
     registration upon payment of the prescribed fee and the 
     filing of a written application, in such form as may be 
     prescribed by the Commissioner. Such application may be made 
     at any time within 1 year before the end of each successive 
     10-year period for which the registration was issued or 
     renewed, or it may be made within a grace period of 6 months 
     after the end of each successive 10-year period, upon payment 
     of a fee and surcharge prescribed therefor. If any 
     application filed during the grace period is deficient, the 
     deficiency may be corrected within the time prescribed after 
     notification of the deficiency, upon payment of a surcharge 
     prescribed therefor.
       ``(b) If the Commissioner refuses to renew the 
     registration, the Commissioner shall notify the registrant of 
     the Commissioner's refusal and the reasons therefor.
       ``(c) If the registrant is not domiciled in the United 
     States, the registrant shall designate by a written document 
     filed in the Patent and Trademark Office the name and address 
     of some 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 Commissioner.''.

     SEC. 7. RECORDING ASSIGNMENT OF MARK.

       Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is 
     amended to read as follows:


                              ``assignment

       ``Sec. 10. (a) A registered mark or a mark for which an 
     application to register has been filed shall be assignable 
     with the good will of the business in which the mark is used, 
     or with that part of the good will of the business connected 
     with the use of and symbolized by the mark. Notwithstanding 
     the preceding sentence, no application to register a mark 
     under section 1(b) shall be assignable prior to the filing of 
     an amendment under section 1(c) to bring the application into 
     conformity with section 1(a) or the filing of the verified 
     statement of use under section 1(d), except for an assignment 
     to a successor to the business of the applicant, or portion 
     thereof, to which the mark pertains, if that business is 
     ongoing and existing. In any assignment authorized by this 
     section, it shall not be necessary to include the good 
     will of the business connected with the use of and 
     symbolized by any other mark used in the business or by 
     the name or style under which the business is conducted. 
     Assignments shall be by instruments in writing duly 
     executed. Acknowledgment shall be prima facie evidence of 
     the execution of an assignment, and when the prescribed 
     information reporting the assignment is recorded in the 
     Patent and Trademark Office, the record shall be prima 
     facie evidence of execution. An assignment shall be void 
     against any subsequent purchaser for valuable 
     consideration without notice, unless the prescribed 
     information reporting the assignment is recorded in the 
     Patent and Trademark Office within 3 months after the date 
     of the subsequent purchase or prior to the subsequent 
     purchase. The Patent and Trademark Office shall maintain a 
     record of information on assignments, in such form as may 
     be prescribed by the Commissioner.
       ``(b) An assignee not domiciled in the United States shall 
     designate by a written document filed in the Patent and 
     Trademark Office the name and address of some 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 Commissioner.''.

     SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN 
                   REGISTRATION.

       Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is 
     amended--
       (1) in subsection (d)--
       (A) by striking ``23, or 44(e) of this Act'' and inserting 
     ``or 23 of this Act or under subsection (e) of this 
     section''; and
       (B) in paragraphs (3) and (4), by striking ``this 
     subsection (d)'' and inserting ``this subsection''; and
       (2) in subsection (e), by striking the second sentence and 
     inserting the following: ``Such applicant shall submit, 
     within such time period as may be prescribed by the 
     Commissioner, a certification or a certified copy of the 
     registration in the country of origin of the applicant.''.

     SEC. 9. MISCELLANEOUS AMENDMENTS.

       (a) Cancellation of Functional Marks.--Section 14(3) of the 
     Trademark Act of 1946 (15 U.S.C. 1064(3)) is amended by 
     inserting ``or is functional,'' before ``or has been 
     abandoned''.
       (b) Incontestability Defenses.--Section 33(b) of the 
     Trademark Act of 1946 (15 U.S.C. 1115(b)) is amended--
       (1) by redesignating paragraph (8) as paragraph (9); and
       (2) by inserting after paragraph (7) the following:
       ``(8) That the mark is functional; or''.
       (c) Remedies in Cases of Dilution of Famous Marks.--
       (1) Injunctions.--(A) Section 34(a) of the Trademark Act of 
     1946 (15 U.S.C. 1116(a)) is amended in the first sentence by 
     striking ``section 43(a)'' and inserting ``subsection (a) or 
     (c) of section 43''.
       (B) Section 43(c)(2) of the Trademark Act of 1946 (15 
     U.S.C. 1125(c)(2)) is amended in the first sentence by 
     inserting ``as set forth in section 34'' after ``relief''.

[[Page H5507]]

       (2) Damages.--Section 35(a) of the Trademark Act of 1946 
     (15 U.S.C. 1117(a)) is amended in the first sentence by 
     striking ``or a violation under section 43(a),'' and 
     inserting ``a violation under section 43(a), or a willful 
     violation under section 43(c),''.
       (3) Destruction of articles.--Section 36 of the Trademark 
     Act of 1946 (15 U.S.C. 1118) is amended in the first 
     sentence--
       (A) by striking ``or a violation under section 43(a),'' and 
     inserting ``a violation under section 43(a), or a willful 
     violation under section 43(c),''; and
       (B) by inserting after ``in the case of a violation of 
     section 43(a)'' the following: ``or a willful violation under 
     section 43(c)''.

     SEC. 10. EFFECTIVE DATE.

       This Act and the amendments made by this Act shall take 
     effect--
       (1) on the date that is 1 year after the date of the 
     enactment of this Act, or
       (2) upon the entry into force of the Trademark Law Treaty 
     with respect to the United States,

     whichever occurs first.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
North Carolina [Mr. Coble] and the gentleman from American Samoa [Mr. 
Faleomavaega] will each control 20 minutes.
  The Chair recognizes the gentleman from North Carolina [Mr. Coble].


                             General Leave

  Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may 
have 5 legislative days to revise and extend their remarks on the bill 
under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from North Carolina?
  There was no objection.
  Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
  I rise in support of H.R. 1661, the Trademark Law Treaty 
Implementation Act. The Trademark Law Treaty Implementation Act, 
popularly known as TLT, sets a ceiling on certain filing and renewal 
requirements which its member nations may not exceed. Here in the 
United States, it removes some of the procedural hurdles to processing 
trademark applications and renewals thereby streamlining the process 
for the users.
  Additionally, the bill we are considering today contains a minor 
housekeeping amendment which seeks to harmonize the remedy provisions 
passed last year as part of the trademark dilution statute, with the 
other remedy provisions of the Latham Act. There is no opposition to 
the bill as amended, and it is supported by the International Trademark 
Association and the American Intellectual Property Law Association.
  I urge my colleagues to vote in favor of this bipartisan bill.
  Mr. Speaker, I reserve the balance of my time.
  Mr. FALEOMAVAEGA. Mr. Speaker, I rise on behalf of the gentleman from 
New York [Mr. Nadler] and include his statement for the Record.
  Mr. NADLER. Mr. Speaker, I rise in strong support of H.R. 1661, the 
Trademark Law Treaty Implementation Act, a measure recently passed out 
of the House Judiciary Committee with unanimous support.
  This act, a long awaited implementation of a treaty entered into 
previously, is supported without objection. The import of this measure 
is that it would put the United States squarely behind the important 
goal of international uniformity of trademark registration 
requirements, a goal which, when achieved, will redound to the 
overwhelming benefit of Americans, who are by far lead producers of 
trademarks in the world.
  I and the other Democrats on the Judiciary Committee strongly support 
this measure. I commend Chairman Coble, ranking member Barney Frank, 
and the other members and staff of the Intellectual Property 
Subcommittee for moving this legislation forward, and I urge its 
adoption today under suspension of the rules.
  Mr. FALEOMAVAEGA. Mr. Speaker, I yield back the balance of my time.
  Mr. COBLE. Mr. Speaker, I thank my friend from American Samoa [Mr. 
Faleomavaega], and I yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from North Carolina [Mr. Coble] that the House suspend the 
rules and pass the bill, H.R. 1661, as amended.
  The question was taken.
  Mr. FALEOMAVAEGA. Mr. Speaker, I object to the vote on the ground 
that a quorum is not present and make the point of order that a quorum 
is not present.
  The SPEAKER pro tempore. Pursuant to clause 5, rule I, and the 
Chair's prior announcement, further proceedings on this motion will be 
postponed.
  The point of no quorum is considered withdrawn.

                          ____________________