[Congressional Record Volume 144, Number 80 (Thursday, June 18, 1998)]
[Senate]
[Pages S6570-S6572]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. LEAHY:
  S. 2191. 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; to the Committee on the Judiciary.


                   madrid protocol implementation act

  Mr. LEAHY. Mr. President, I am pleased to introduce legislation that 
will implement the Protocol Relating to the Madrid Agreement Concerning 
the International Registration of Marks (Protocol). This bill is part 
of my ongoing effort to refine American intellectual property law to 
ensure that it serves to advance and protect American interests and 
does not serve to encumber small companies seeking to expand into 
international markets. Specifically, this legislation will conform 
American trademark application procedures to the terms of the Protocol 
in anticipation of the U.S.'s eventual ratification of the treaty, 
thereby helping American businesses to create a ``one stop'' 
international trademark registration process. This bill is one of many 
measures I have introduced and supported over the past few years to 
ensure that American trademark holders receive strong protection in 
today's world of changing technology and complex international markets.

  In addition to this legislation, I have introduced the Trademark Law 
Treaty Implementing and Registration Simplification Act, which will 
bring U.S. trademark law into conformance with the Trademark Law 
Treaty. The Trademark Law Treaty will simplify trademark registration 
requirements around the world by establishing a list of maximum 
requirements which Treaty member countries can impose on trademark 
applicants. All American businesses, and particularly small American 
businesses, will benefit as a result.
  Earlier this year, I introduced legislation authorizing the National 
Research Council of the National Academy of Sciences to conduct a 
comprehensive study of the effects of adding new generic Top Level 
Domains on trademark and other intellectual property rights.
  Moreover, I supported the Federal Trademark Dilution Act of 1995, 
which was passed last Congress, to provide intellectual property rights 
holders with the power to enjoin another person's commercial use of 
famous marks that would cause dilution of the mark's distinctive 
quality.
  Together, these measures represent major steps in our efforts to 
refine American trademark law to ensure that it serves to promote 
American interests.
  Currently, in order for American companies to protect their 
trademarks abroad, they must register their trademarks in each and 
every country in which protection is sought. Registering in multiple 
countries is a time-consuming, complicated and expensive process--a 
process which places a disproportionate burden on smaller American 
companies seeking international trademark protection. This legislation 
will ease the registration burden by enabling American businesses to 
obtain trademark protection in all signatory countries with a single 
trademark application filed with the Patent and Trademark Office.
  Since 1891, the Madrid Agreement Concerning the International 
Registration of Marks (Agreement) has provided an international 
trademark registration system. However, prior to adoption of the 
Protocol, the U.S. declined to join the Agreement because it contained 
terms deemed inimical to American intellectual property interests. In 
1989, the terms of the Agreement were modified by the Protocol, which 
corrected the objectionable terms of the Agreement and made American 
participation a possibility. For example, under the Protocol, 
applications for international trademark extension can be completed in 
English; formerly, applications were required to be completed in 
French. It should be noted that the Protocol will not require 
substantive changes to American trademark law, hence the implementing 
legislation I introduce today is identical to the legislation that 
passed the House on May 5, 1998 and only would make those technical 
changes to American law necessary to bring the U.S. into conformity 
with the Protocol.
  To date, the Administration has resisted accession to the treaty 
because of voting rights disputes with the European Union, which has 
sought to retain an additional vote for itself as an intergovernmental 
entity, in addition to the votes of its member states. I support the 
Administration's efforts to negotiate a treaty based upon the equitable 
and democratic principle of one-state, one-vote. However, in 
anticipation of the eventual resolution of this dispute, the Senate has 
the opportunity to act now to make the technical changes to American 
trademark law so that once this voting dispute is satisfactorily 
resolved and the U.S. accedes to the Protocol, ``one-stop'' 
international trademark registration can become an immediate reality 
for all American trademark applicants.
  Mr. President, I ask unanimous consent that the text of the bill be 
printed in the Record.
  There being no objection, the bill was ordered to be printed in the 
Record, as follows:

                                S. 2191

       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 ``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 trade-marks 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:

                    ``TITLE XII--THE MADRID PROTOCOL

     ``SEC. 60. DEFINITIONS.

       ``For purposes of this title:
       ``(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.
       ``(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.
       ``(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.
       ``(4) Contracting party.--The term `Contracting Party' 
     means any country or inter-governmental organization that is 
     a party to the Madrid Protocol.
       ``(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.
       ``(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--
       ``(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, or to cause mistake, or to deceive.
       ``(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.
       ``(8) Holder of an international registration.--A `holder' 
     of an international registration is the natural or juristic 
     person

[[Page S6571]]

     in whose name the international registration is recorded on 
     the International Register.
       ``(9) International application.--The term `international 
     application' means an application for international 
     registration that is filed under the Madrid Protocol.
       ``(10) International bureau.--The term `International 
     Bureau' means the International Bureau of the World 
     Intellectual Property Organization.
       ``(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.
       ``(12) International registration.--The term `international 
     registration' means the registration of a mark granted under 
     the Madrid Protocol.
       ``(13) International registration date.--The term 
     `international registration date' means the date assigned to 
     the international registration by the International Bureau.
       ``(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.
       ``(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 Patent 
     and Trademark Office, including any extension of time granted 
     under section 13.

     ``SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES 
                   APPLICATIONS OR REGISTRATIONS.

       ``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--
       ``(1) is a national of the United States,
       ``(2) is domiciled in the United States, or
       ``(3) has a real and effective industrial or commercial 
     establishment in the United States,

     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 
     Commissioner.

     ``SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.

       ``Upon the filing of an application for international 
     registration and payment of the prescribed fees, the 
     Commissioner 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 
     Commissioner 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 
     Commissioner 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 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 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 Commissioner.

     ``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 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.

     ``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 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 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--
       ``(1) the international registration contained a claim of 
     such priority; and
       ``(2)(A) the international application contained a request 
     for extension of protection to the United States, or
       ``(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).

     ``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 Commissioner shall cause the 
     mark to be published in the Official Gazette of the 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. Unless successfully 
     opposed, the request for extension of protection shall not be 
     refused.
       ``(3) Extension of protection shall not be refused under 
     this section on the ground that the mark has not been used in 
     commerce.
       ``(4) Extension of protection shall be refused under this 
     section 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 
     Commissioner 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 Commissioner 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 Commissioner has sent a notification of the 
     possibility of opposition under paragraph (1)(C), the 
     Commissioner 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

[[Page S6572]]

     forth in such notification may be transmitted to the 
     International Bureau by the Commissioner after the expiration 
     of the time periods set forth in paragraph (1) or (2), as the 
     case may be.
       ``(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 Commissioner shall 
     issue a certificate of extension of protection pursuant to 
     the request.
       ``(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 Commissioner.

     ``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 Commissioner 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.
       ``(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 
     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 Commissioner 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 Commissioner--
       ``(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 Commissioner, 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 Commissioner; 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 Commissioner, 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 Patent and Trademark Office an 
     affidavit under subsection (b) together with a fee prescribed 
     by the Commissioner; 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 
     an additional fee prescribed by the Commissioner.
       ``(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.

     ``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 
     Commissioner issues the certificate of the extension of 
     protection under section 69, except as provided in section 
     74.

     ``SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

       ``An extension of protection shall convey the same rights 
     as an existing registration for the same mark, if--
       ``(1) the extension of protection and the existing 
     registration are owned by the same person;
       ``(2) the goods and services listed in the existing 
     registration are also listed in the extension of protection; 
     and
       ``(3) the certificate of extension of protection is issued 
     after the date of the existing registration.''.

     SEC. 3. EFFECTIVE DATE.

       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.
                                 ______