[Congressional Record Volume 144, Number 80 (Thursday, June 18, 1998)]
[Senate]
[Pages S6572-S6573]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. HATCH:
  S. 2192. A bill to make certain technical corrections to the 
Trademark Act of 1946; to the Committee on the Judiciary.


           Technical corrections to the trademark act of 1946

  Mr. HATCH. Mr. President, I rise today to introduce some housekeeping 
amendments to the Trademark Act. This bill makes a number of technical 
corrections to the Trademark Act which will clean up the code and make 
explicit some of the current practices of the Patent and Trademark 
Office with respect to the trademark protection of matter that is 
wholly functional.
  I take it as my duty as Chairman of the Committee on the Judiciary to 
try to ensure that the U.S. Code is clear, useful, and up-to-date. 
These housekeeping amendments will help clarify the law in useful ways, 
and I hope my colleagues will support this bill.
  For the reference of my colleagues, I ask unanimous consent that a 
copy of the bill and a section-by-section analysis be printed in the 
Record.
  There being no objection, the items were ordered to be printed in the 
Record, as follows:

                                S. 2192

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

     SECTION 1. TECHNICAL CORRECTIONS TO TRADEMARK ACT OF 1946.

       (a) In General.--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.) (commonly referred to 
     as the Trademark Act of 1946), is amended as follows:
       (1) Section 1 (15 U.S.C. 1051) is amended--
       (A) in subsection (a)(1)(A), by striking ``goods in 
     connection'' each place it appears and inserting ``goods on 
     or in connection''; and
       (B) in subsection (d)(1)--
       (i) by inserting ``and,'' after ``specifying the date of 
     the applicant's first use of the mark in commerce''; and
       (ii) by striking ``and, the mode or manner in which the 
     mark is used on or in connection with such goods or 
     services''.
       (2) Section 2 (15 U.S.C. 1052) is amended--
       (A) in subsection (e)--
       (i) in paragraph (3) by striking ``or'' after ``them,''; 
     and

[[Page S6573]]

       (ii) by inserting before the period at the end the 
     following: ``, or (5) comprises any matter that, as a whole, 
     is functional''; and
       (B) in subsection (f), by striking ``paragraphs (a), (b), 
     (c), (d), and (e)(3)'' and inserting ``subsections (a), (b), 
     (c), (d), (e)(3), and (e)(5)''.
       (3) Section 7(a) (15 U.S.C. 1057(a)) is amended in the 
     first sentence by striking the second period at the end.
       (4) Section 10 (15 U.S.C. 1060) is amended--
       (A) at the end of the first sentence, by striking the comma 
     before the period; and
       (B) in the third sentence, by striking the second period at 
     the end.
       (5) Section 14(3) (15 U.S.C. 1064(3)) is amended by 
     inserting ``or is functional,'' before ``or has been 
     abandoned''.
       (6) Section 23(c) (15 U.S.C. 1091(c)) is amended by 
     striking ``or device'' and inserting ``, device, any matter 
     that as a whole is not functional,''.
       (7) Section 26 (15 U.S.C. 1094) is amended by striking 
     ``7(c),,'' and inserting ``, 7(c),''.
       (8) Section 31 (15 U.S.C. 1113) is amended--
       (A) by striking--

     ``Sec. 31. Fees'';

     and
       (B) by striking ``(a)'' and inserting ``Sec. 31. (a)''.
       (9) Section 32(1) (15 U.S.C. 1114(1)) is amended by 
     striking ``As used in this subsection'' and inserting ``As 
     used in this paragraph''.
       (10) Section 33(b) (15 U.S.C. 1115(b)) is amended--
       (A) by redesignating paragraph (8) as paragraph (9); and
       (B) by inserting after paragraph (7) the following:
       ``(8) That the mark is functional; or''.
       (11) Section 39(a) (15 U.S.C. 1121(a)) is amended by 
     striking ``circuit courts'' and inserting ``courts''.
       (12) Section 42 (15 U.S.C. 1124) is amended by striking 
     ``the any domestic'' and inserting ``any domestic''.
       (13) The Act is amended by striking ``trade-mark'' each 
     place it appears in the text and the title and inserting 
     ``trademark''.
       (b) Effective Date.--The amendments made by this section 
     shall take effect on the date of enactment of this Act, and 
     shall apply only to any civil action filed or proceeding 
     before the United States Patent and Trademark Office 
     commenced on or after such date relating to the registration 
     of a mark.
                                  ____


                      Section-by-Section Analysis


     section 1. technical corrections to the trademark act of 1946

       Section 1(a) provides that the Act entitled ``An Act to 
     provide for the registration and protection of trademarks 
     used in commerce, to carry out the provision of certain 
     international conventions, and for other purposes'', approved 
     July 5, 1946, as amended (15 U.S.C. 1051 et seq.) shall be 
     referred to as the ``Trademark Act of 1946'' and will be 
     amended by the following provisions.
       Subparagraph 1(a)(1)(A) amends subparagraph 1(a)(1)(A) of 
     the Trademark Act to change the phrase ``goods in 
     connection'' to ``goods on or in connection''. This amendment 
     simply adds language to clarify that a trademark or service 
     mark may be used on or in connection with goods or services 
     rather than just directly on the goods. This language is 
     fully consistent with case law and Patent and Trademark 
     Office (``Office'') practice and is not a substantive change.
       Subparagraph 1(a)(1)(B)(i) amends subsection 1(d)(1) of the 
     Trademark Act by inserting ``and'' after the words 
     ``specifying the date of the applicant's first use of the 
     mark in commerce,''.
       Subparagraph 1(a)(1)(B)(ii) amends subsection 1(d)(1) of 
     the Trademark Act by deleting ``and the mode or manner in 
     which the mark is used on or in connection with such goods or 
     services''. Section 1(d)(1) sets out the requirements for a 
     complete ``statement of use'', the document that must be 
     filed to complete any published trademark application that 
     was originally filed based on intent-to-use the mark. The 
     statement of use is meant to bring the intent-to-use based 
     application into conformity with the requirements for a 
     trademark application based on use in commerce. The deletion 
     of this language makes this section parallel to section 
     1(a)(1)(A), as amended by the Trademark Law Treaty 
     Implementation Act. Section 1(a)(1)(A), as amended, sets out 
     the requirements for filing a complete trademark application 
     based on use in commerce. Thus the amendment conforms the 
     requirements of these two sections, requirements that should 
     logically be identical. In addition, the experience of the 
     Office has been that requiring the applicant to state the 
     mode or manner of using the mark adds no additional useful 
     information to the application inasmuch as an applicant is 
     already required to submit specimens, e.g., tags, labels, 
     advertising etc., to demonstrate how it is using the mark. 
     Therefore, an additional statement concerning the mode or 
     manner of use of the mark is unnecessary.
       Subparagraph 1(a)(2)(A) amends paragraph 2(e) of the 
     Trademark Act by adding a new subparagraph 5, ``any matter 
     that, as a whole, is functional'', to the list of statutory 
     refusals set out in that paragraph. The language clarifies 
     that matter which is wholly functional must be refused 
     registration, a position that is completely consistent with 
     the intent of the Trademark Act. This change codifies both 
     the case law in this matter and the long-standing practice of 
     the Office to refuse registration to matter that is wholly 
     functional based on a combined reading of sections 1, 2 and 
     45 of the Trademark Act. This new section will provide 
     examining attorneys with a simple reference for the 
     functionality refusal.
       Subparagraph 1(a)(2)(B) amends paragraph 2(f) of the 
     Trademark Act to add a reference to the new statutory refusal 
     set out in subparagraph 2(e)(5). This amendment to paragraph 
     2(f) of the Trademark Act provides that matter which is 
     wholly functional may not be registered upon a showing that 
     the matter has become distinctive. This change codifies 
     existing case law and the current practice of the Office and 
     is not a change in the substantive law.
       Paragraph 1(a)(3) amends section 7(a) of the Trademark Act 
     by deleting an extraneous period.
       Paragraph 1(a)(4) amends section 10 of the Trademark Act by 
     deleting extraneous punctuation.
       Paragraph 1(a)(5) amends paragraph 14(3) of the Trademark 
     Act by inserting the phrase ``or is functional,'' before ``or 
     has been abandoned''. This amendment adds an additional 
     ground for canceling a registration more than five years 
     after the date of registration. This amendment changes 
     existing case law in this matter but is fully consistent with 
     the purpose of the Trademark Act. To exempt the registration 
     of a wholly functional design from being subject to 
     cancellation five years after the registration has issued 
     permits the trademark owner with such a registration to 
     obtain patent-like protection for its wholly functional 
     design without the limited term that the patent law imposes. 
     This change is therefore wholly consistent with both the 
     purpose of the Trademark Act and the codifications of current 
     practice regarding functionality made in this Act.
       Paragraph 1(a)(6) amends section 23(c) of the Trademark Act 
     by adding ``any matter that as a whole is not functional'' to 
     the listing of the types of marks which can be registered on 
     the Supplemental register. This change codifies existing case 
     law and the current practice of the Office.
       Paragraph 1(a)(7) amends section 26 of the Trademark Act by 
     deleting an extraneous comma.
       Paragraph 1(a)(8) amends section 31 of the Trademark Act by 
     deleting ``Sec. 31 Fees'' from the title of the section and 
     inserting ``Sec. 31. (a)''.
       Paragraph 1(a)(9) amends section 32(1) of the Trademark Act 
     to clarify that the definition of ``any person'' as set out 
     in paragraph 1 of section 32 is limited to the matter within 
     the paragraph.
       Paragraph 1(a)(10) amends section 33(b) of the Trademark 
     Act by inserting as a new paragraph 8, ``That the mark is 
     functional; or''. This language adds a new defense against a 
     claim of infringement made by the owner of a mark which has 
     become ``incontestable'' under the provisions of section 32 
     of the Trademark Act. This language is fully consistent with 
     the amendment made to paragraph 14(3) of the Trademark Act by 
     paragraph 1(a)(5) of this Act.
       Paragraph 1(a)(11) amends section 39(a) of the Trademark 
     Act to strike a reference, that is no longer relevant, to 
     ``circuit courts'' and insert the word ``courts''.
       Paragraph 1(a)(12) amends Section 42 of the Trademark Act 
     by sdeleting an extraneous ``the''.
       Paragraph 1(a)(13) amends the Act to strike ``trade-mark'' 
     in each place it occurs and replace it with ``trademark''. 
     This is the more modern spelling.
       Section 1(b) establishes an effective date that is 
     prospective with respect to both civil actions and 
     proceedings at the U.S. Patent and Trademark Office.
                                 ______