[Congressional Record Volume 144, Number 80 (Thursday, June 18, 1998)]
[Senate]
[Pages S6573-S6580]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. HATCH (for himself and Mr. Leahy):
  S. 2193. A bill to implement the provisions of the Trademark Law 
Treaty; to the Committee on the Judiciary.


                Trademark Law Treaty Implementation Act

  Mr. HATCH. Mr. President, I rise to introduce the Trademark Law 
Treaty Implementation Act of 1998. This legislation makes necessary 
changes in our domestic trademark law and procedures to ensure that we 
are in compliance when we ratify the treaty, which appears more likely 
this year than previously. The Trademark Law Treaty was done and signed 
at Geneva in October of 1994, and entered into force in 1996.
  The obligations under the Trademark Law Treaty legislation will 
require some relatively minor changes to U.S. trademark practice, but 
will bring significant improvements in the trademark practices of a 
number of important countries around the world in which U.S. trademark 
owners seek protection. The required changes will eliminate 
complexities and simplify the process of obtaining, renewing, and 
managing trademark assets for American firms marketing their products 
and services around the world.
  Countries around the world have a number of varying requirements for 
filing trademark applications, effecting changes of ownership of 
trademark registrations, and other procedures associated with managing 
trademark assets. These differences cause considerable

[[Page S6574]]

aggravation and expense to trademark owners seeking to protect their 
marks around the world. Many of these procedures and requirements 
imposed by foreign countries are non-substantive and highly technical. 
In addition, many of these requirements in the various procedures of 
foreign trademark offices impose very significant cost burdens, both in 
official fees to be paid to local trademark offices, as well as agent's 
fees for fulfilling the various requirements. For example, many 
countries require that signatures on applications for powers of 
attorney be notarized, authenticated, and legalized. This very 
expensive and time consuming procedure is prohibited under the Treaty 
in all cases except where the registrant is surrendering a 
registration.
  The Treaty eliminates these conflicting and expensive practices by 
setting forth a list of maximum requirements which a member State can 
impose for various actions. Specifically, the Treaty sets forth maximum 
requirements for: the contents of a trademark application; the content 
of a power of attorney; the elements necessary for an application to 
receive a filing date; a request to record a change in the name or 
address of a trademark owner; and, a request to renew a trademark 
registration. These requirements are implemented through the adoption 
of model forms for trademark applicants and owners to use which must be 
accepted by every member State. While a member need not impose all of 
the requirements or elements listed, it cannot demand the inclusion of 
any additional requirements or elements in respect of a particular 
action.
  There are several other guarantees mandated by the Treaty that will 
benefit trademark applicants and owners. Under the Treaty, countries 
will have to register and protect service marks, as well as goods 
marks, an important consideration to the U.S. service economy, which 
has many valuable service marks, such as Marriott and American 
Airlines. Applicants will be able to file for protection under multiple 
classifications for goods and services, which will mature into multiple 
class registrations. No longer will trademark owners be forced to make 
a separate filing for each power of attorney; one general power will 
suffice. Member countries are precluded from considering goods or 
services as being similar to each other simply on the ground that they 
appear in the same class of the NICE classification. Moreover, a 
request to change the name or address of a trademark owner or a request 
to correct a mistake in a trademark registration may not be refused 
without giving the trademark owner an opportunity to comment.
  As I indicated, the Trademark Law Treaty Implementation Act of 1998 
makes only minor changes in our domestic trademark law. These changes 
include: the elimination of the requirement for a statement of the 
manner in which a mark is used or intended to be used in connection 
with the goods or services identified in the application; the 
elimination of the requirement that the applicant verify an 
application; the adoption of a grace period of at least six months for 
the filing of a renewal application; the elimination of a declaration 
or evidence concerning the use of a mark in connection with the filing 
of a renewal application; and, the elimination of a requirement to file 
a copy of the actual assignment document as a condition for recording 
the assignment of a trademark registration.
  This bill will also harmonize and simplify the procedural 
requirements under the Trademark Act of 1946. Sections 8 and 9 will be 
amended to establish a similar period of one year prior to the end of 
the applicable time period, along with a grace period of six months 
after that period, for filing both affidavits of use and renewal 
applications. While it separates the ten-year affidavit of use from the 
renewal application, as required by the Treaty, the bill permits them 
both to be filed during the same time period which will benefit 
trademark applicants.
  The Trademark Law Treaty Implementation Act of 1998 will help 
American companies protect their trademark assets in markets around the 
world thereby facilitating their ability to compete. At the same time, 
the changes it makes in U.S. trademark law are made in a manner that 
will assist American trademark owners protect their marks in this 
country.
  Mr. President, I hope my colleagues will support this legislation 
which is so important to American trademark owners.
  I ask unanimous consent that the text of the bill and an explanatory 
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. 2193

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


[[Page S6575]]


     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)(1) The owner of the registration may make the 
     submissions required under this section within a grace period 
     of 6 months after the end of the applicable time period set 
     forth in subsection (a). Such submission is required to be 
     accompanied by a surcharge prescribed by the Commissioner.
       ``(2) If any submission filed under this section is 
     deficient, the deficiency may be corrected after the 
     statutory time period and within the time prescribed after 
     notification of the deficiency. Such submission is required 
     to be accompanied by a surcharge prescribed by the 
     Commissioner.
       ``(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 under this section 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. TRANSITION PROVISIONS.

       (a) Registrations in 20-Year Term.--The provisions of 
     section 8 of the Trademark Act of 1946, as amended by section 
     5 of this Act, shall apply to a registration for trademark 
     issued or renewed for a 20-year term, if the expiration date 
     of the registration is on or after the effective date of this 
     Act.
       (b) Applications for Registration.--This Act and the 
     amendments made by this Act shall apply to any application 
     for registration of a trademark pending on, or filed on or 
     after, the effective date of this Act.
       (c) Affidavits.--The provisions of section 8 of the 
     Trademark Act of 1946, as amended by section 5 of this Act, 
     shall apply to the filing of an affidavit if the sixth or 
     tenth anniversary of the registration, or the sixth 
     anniversary of publication of the registration under section 
     12(c) of the Trademark Act of 1946, for which the affidavit 
     is filed is on or after the effective date of this Act.
       (d) Renewal Applications.--The amendment made by section 6 
     shall apply to the filing of an application for renewal of a 
     registration if the expiration date of the registration for 
     which the renewal application is filed is on or after the 
     effective date of this Act.

[[Page S6576]]

     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.
                                  ____


                      Section-by-Section Analysis


                         Section 1. SHORT TITLE

       This section provides a short title: ``Trademark Law Treaty 
     Implementation Act.''


           Section 2. REFERENCE TO THE TRADEMARK ACT OF 1946

       This section provides that the Act entitle ``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''.


         Section 3. APPLICATION FOR REGISTRATION; VERIFICATION

     Summary of Section 3
       This section amends subsections 1(a) (Application for Use) 
     and 1(b) (Application for Intent to Use) of the Trademark Act 
     of 1946 (15 U.S.C. 1051(a) and 1051(b)) to create a clear 
     distinction between the written application, the form of 
     which may be prescribed by the Commissioner, and the 
     declaration pertaining to applicant's use or intention to use 
     the mark, the substance of which is detailed in the 
     respective subsections; to require that the declaration 
     pertaining to use or intention to use be verified by the 
     applicant; to authorize the Commissioner to promulgate rules 
     prescribing both the elements of the application, in addition 
     to those specified in the proposed provision, and those 
     elements necessary for a filing date; to omit the requirement 
     in the written application for a statement of the ``mode or 
     manner'' in which the mark is used or intended to be used in 
     connection with the specified goods or services; and to 
     clarify and modernize the language of the subsections, as 
     appropriate. In addition, an amendment is made to subsection 
     1(d) (15 U.S.C. 1051(d)) to clarify that an application may 
     be revived after a notice of allowance is issued.
     Applications under the Trademark Law Treaty and Existing U.S. 
         Law
       With the goal of simplifying and harmonizing the 
     registration process worldwide, Article 3(1) of the Trademark 
     Law Treaty (``Treaty'' or ``TLT'') establishes a 
     comprehensive list of indications or elements that may be 
     required in an application to register a trademark or service 
     mark (``mark''). This list permits a Contracting Party to the 
     Treaty (``Party'') to require, inter alia, a signature and 
     declarations of use and intention to use a mark. The list 
     does not permit a Party to require, inter alia, a statement 
     of the mode or manner in which the mark is used, or intended 
     to be used, in connection with the goods or services 
     specified in the application. Article 3(4) of the Treaty 
     obligates a Party that requires a signature to permit either 
     the applicant or his representative to sign the application, 
     except that a Party may require declarations of use and 
     intention to use a mark to be signed by the applicant.
       The existing subsections 1(a) and 1(b) of the Trademark Act 
     of 1946 (15 U.S.C. 1051(a)) and 1051(b)) require, 
     respectively, declarations pertaining to use and intention to 
     use a mark and require verification by the applicant of the 
     written application, which includes the aforementioned 
     declarations. Under the terms of the Treaty, the United 
     States may continue to require the aforementioned 
     declarations and may require verification by the applicant of 
     such declarations, but may not require verification by the 
     applicant of the written application. Thus, it becomes 
     necessary to distinguish the declarations of use and 
     intention to use from the other elements of the application.
       Additionally, the existing subsections 1(a) and 1(b) of the 
     Trademark Act of 1946 (15 U.S.C. 1051(a)) and 1051(b)) 
     require, respectively, a statement of the mode or manner in 
     which the mark is used or intended to be used, in connection 
     with the goods specified in the application. Thus, it becomes 
     necessary to delete the requirement for this statement from 
     the list of required elements in the written application.
     Distinction Between Written Application and Verified 
         Declarations
       Consistent with the Treaty obligations, the proposed 
     revision will distinguish between the written application and 
     the declarations of use and intention to use for purposes of 
     the signature requirement. The proposed revision will 
     continue to require a written application, in such form as 
     may be prescribed by the Commissioner, and a declaration 
     verified by the applicant, as set forth in the two 
     subsections.
       By separating the written application from the verified 
     declarations, there will no longer be a requirement in the 
     law for verification by the applicant of the written 
     application. In the proposed revision, as in the existing 
     subsections, the Commissioner will retain authority to 
     prescribe the form of the application. Thus, the Commissioner 
     will have discretion to permit the written application to be 
     filed with no signature or with the signature of applicant's 
     representative. Also, the Commissioner may permit the filing 
     of a single document, which combines the elements of the 
     written application and the declaration, and which is signed 
     by the applicant, as under the existing subsections.
     Elements of the Written Application
       The proposed revision specifies a non-exclusive list of 
     elements and grants authority to the Commissioner to 
     prescribe, by regulation and consistent with law and 
     international obligations, additional elements which the 
     Commissioner considers to be necessary for an application and 
     those elements necessary for receipt of a filing date. This 
     proposal improves the ability of the law pertaining to 
     application requirements to accommodate advancing technology 
     and further international procedural harmonization. The 
     proposed revision specifically requires the application to 
     include applicant's domicile and citizenship, the dates of 
     applicant's first use of the mark and first use of the mark 
     in commerce in an application under subsection 1(a), the 
     goods in connection with which the mark is used or intended 
     to be used, and a drawing of the mark. Consistent with the 
     Treaty, the proposed revision omits a requirement for 
     specification of the mode or manner in which the mark is 
     used, or intended to be used, in connection with the goods 
     specified in the application.
       Additionally, the proposed revision reorganizes subsections 
     1(a) and (b) 1946 (15 U.S.C. 1051(a)) and 1051(b)) to clarify 
     the provisions and to modernize the language. To parallel the 
     language of the Treaty, the phrase ``may apply to 
     register'' is replaced by ``may request registration''. 
     Reference to ``firm, corporation or association'' is 
     replaced by a reference to ``juristic person'' or 
     ``person.'' Section 45 defines ``person'' as including 
     ``juristic persons.'' These terms are considered 
     preferable in view of the numerous types of juristic 
     persons in existence today.
     The Verified Statement
       Rather than requiring in the verified statement a 
     repetition of statements in the written application 
     identifying goods and, in a section 1(a) application, dates 
     of use, the proposed revision requires a statement that, to 
     the best of the applicant's knowledge and belief, the facts 
     recited in the application are accurate. In addition, the 
     proposed revision specifies the averments that the applicant 
     must make in the verified statement concerning applicant's 
     use, or bona fide intention to use, the mark in commerce, 
     ownership of the mark and lack of knowledge of conflicting 
     third party rights. These averments do not differ from those 
     in the existing provisions.
       The proposed revision requires verification of the 
     statement by the applicant and omits the specification of the 
     appropriate person to verify the declaration for a juristic 
     applicant, i.e., the proposed revision omits the phrase 
     requiring verification by ``a member of the firm or an 
     officer of the corporation or association applying.'' While 
     this revision is not required by the Treaty, it will greatly 
     simplify the filing of an application without compromising 
     the integrity of the information contained therein. This 
     proposed revision will give the Patent and Trademark Office 
     (``PTO'') the discretion to determine the appropriate person 
     with authority to sign the declaration for a juristic 
     applicant.
       Under the existing provision, the PTO has been limited to 
     accepting, for example, only the signature of an officer of a 
     corporation on an application when another corporate 
     manager's signature would be appropriate because the 
     corporate manager has authority to bind the corporation 
     legally or because the corporate manager has specific 
     knowledge of the facts asserted in the application. The 
     unnecessary rigidity of the existing provision has worked a 
     hardship on applicants who have been denied filing dates 
     because the person verifying their application has not met 
     the strict requirement of being an officer of the corporate 
     applicant. Additionally, the Patent and Trademark Office has 
     had difficulty applying the officer requirement to foreign 
     juristic entities whose managers are not clearly officers 
     under the United States' corporate standards.
     Revival of Applications After the Notice of Allowance Has 
         Issued
       Existing subsection 1(d) (15 U.S.C. 1051(d)) is amended to 
     clarify that applications which are awaiting the filing of a 
     statement of use or a request for extension of time to file a 
     statement of use may be revived if it can be shown to the 
     satisfaction of the Commissioner that the failure to file was 
     unintentional. Although this change is not necessary for the 
     implementation of the TLT, the change clarifies that the 
     Commissioner has the authority to revive such an application 
     so long as reviving the application does not extend the 
     statutory period for filing the statement of use. The 
     standard for revival is that the applicant's failure to file 
     was unintentional. This is the same standard that is being 
     proposed in subsection 12(b) of the Trademark Act of 1946 (15 
     U.S.C. 1062(b)) for reviving applications during the 
     examination process.


             SECTION 4. REVIVAL OF AN ABANDONED APPLICATION

     Summary of Section 4
       This section amends subsection 12(b) of the Trademark Act 
     of 1946 (15 U.S.C. 1062(b)) by changing the present standard 
     for reviving an abandoned application upon a showing of 
     ``unavoidable'' delay to the standard of ``unintentional'' 
     delay.

[[Page S6577]]

     Revival of Applications Under the Historical ``Unavoidable 
         Delay'' Standard
       Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 
     1062(b)) provides that an application is abandoned if the 
     applicant does not timely respond to an Office Action, 
     ``unless it can be shown to the satisfaction of the 
     Commissioner that the delay in responding was unavoidable, 
     whereupon such time may be extended.''
       Prior to the implementation of the Trademark Act of 1946, 
     there was no statutory provision for abandonment and revival 
     of abandoned trademark applications. There was a regulatory 
     provision that an abandoned application could be revived if 
     it were ``shown to the satisfaction of the Commissioner that 
     the delay in the prosecution of the same was unavoidable,'' 
     However, the legislative history of the Lanham Act is silent 
     as to the meaning or intention behind the ``unavoidable 
     delay'' standard for revival of abandoned applications.
       The language of section 12(b) of the Trademark Act of 1946 
     is virtually identical to the analogous provision of the 
     patent law, 35 U.S.C. 133, which provides for abandonment of 
     patent applications and revival upon a showing of unavoidable 
     delay. The requirements for reviving an ``unavoidably'' 
     abandoned patent applications, set forth in 37 C.F.R. 
     Sec. 1.137(a), are identical to the requirements for reviving 
     an abandoned trademark application under 37 C.F.R. Sec. 2.66.
       Courts have held that the Commissioner has broad discretion 
     in determining whether a delay is unavoidable. Under current 
     law, the Commissioner's decision is subject to judicial 
     review, but will be reversed only if it is arbitrary, 
     capricious, or an abuse of discretion. Morganroth v. Quigg, 
     885 F.2d 843, 21 USPQ2d 1125 (Fed. Cir. 1989); Smith v. 
     Mossinghoff, 671 F.2d 533, 213 USPQ 977 (D.C. Cir. 1982); 
     Douglas v. Manbeck, 21 USPQ2d 1697 (E.D. Pa. 1991).
     Revival of Applications Under the New ``Unintentional Delay'' 
         Standard
       Prior to 1982, patent applications, like trademark 
     applications, could be revived only upon a showing of 
     unavoidable delay. Under Public Law 97-247, Sec. 3, 96 Stat. 
     317 (1982) codified at 35 U.S.C. 41(a)(7), it became possible 
     to revive an unintentionally abandoned patent application. 
     Section 41(a)(7) establishes two different fees for filing 
     petitions with two different standards to revive abandoned 
     applications. There is one for a petition to revive an 
     unavoidably abandoned application and another fee for a 
     petition to revive an unintentionally abandoned application. 
     The procedure for petitioning to revive an unintentionally 
     abandoned application is set forth in 37 C.F.R. 
     Sec. 1.137(b), effective October 1, 1982. 58 Fed. Reg. 44277 
     (Aug. 20, 1993); 48 Fed. Reg. 2696 (Jan. 20, 1983). The 
     rule requires, among other things, that the applicant 
     submit a verified statement that the delay was 
     unintentional, and provides that the ``Commissioner may 
     require additional information where there is a question 
     that the delay was unintentional.''
       The legislative history of Public Law 97-247 states: 
     Section 41(a)7 establishes two different fees for filing 
     petitions with different standards to revive abandoned 
     applications. . . Since the section provides for two 
     alternative fees with different standards, the section would 
     permit the applicant seeking revival . . . to choose one or 
     the other of the fees and standards under such regulations as 
     the Commissioner may establish. . . This section would permit 
     the Commissioner to have more discretion than present law to 
     revive abandoned applications . . . in appropriate 
     circumstances (emphasis added). H.R. Rep. No. 542, 97th Cong. 
     2d Sess. 6-7 (1982), quoted in In re Rutan, 231 USPQ 864, 865 
     (Comm'r Pats. 1986).
       The legislative history of Public Law 97-247 pertains 
     primarily to fees. However, the intent of Congress appears to 
     be to give the Commissioner the power to revive abandoned 
     applications using a much less strict standard than had been 
     previously applied. In re Rutan, supra. Neither the 
     legislative history of the Lanham Act nor the relevant case 
     law limit the Commissioner's authority to establish 
     procedures for revival of unintentionally abandoned trademark 
     applications.
       With the goal of the Trademark Law Treaty to simplify the 
     registration process worldwide, this proposed amendment 
     parallels the unintentional standard for revival available to 
     patent applicants and relaxes the standard for reviving 
     trademark applications. This will enable the majority of 
     applicants, who file a timely petition to revive an 
     application that was abandoned due to an unintentional delay, 
     to proceed to registration from the point that the 
     application became abandoned, rather than requiring these 
     applicants to refile their applications.


    section 5. duration of registration; cancellation; affidavit of 
             continued use; notice of commissioner's action

     Note on Sections 5 and 6: Registration Maintenance under the 
         Trademark Law Treaty and Existing U.S. Law
       Sections 5 and 6 of this legislation amend existing 
     sections 8 and 9 of the Trademark Act of 1946, which are the 
     two provisions of the Act containing requirements for 
     registration maintenance. These two sections are analogous in 
     their requirements for the filing of a verified document 
     attesting to the use of the mark in commerce and specimens or 
     facsimiles, or a showing of excusable non-use. Section 8 of 
     the Trademark Act of 1946 requires the aforementioned filing 
     during the year preceding the sixth year following 
     registration to avoid cancellation of the registration. 
     Section 9 of the Trademark Act of 1946 requires the 
     aforementioned filing as part of the registration renewal 
     application.
       With the goal of simplifying and harmonizing the process 
     for renewal of a trademark or service mark registration 
     worldwide, Article 13(1) of the Treaty establishes a 
     comprehensive list of indications that may be required in a 
     request to renewal a trademark or service mark registration. 
     This list does not include a declaration and/or evidence 
     concerning use of the mark. Article 13(4)(iii) expressly 
     prohibits a requirement for the furnishing of a 
     declaration and/or evidence concerning use of the mark as 
     part of a request for renewal. However, the Treaty 
     contains no prohibition against a requirement for the 
     periodic filing of a declaration and/or evidence of use in 
     connection with a registration, as long as such 
     requirement is not part of the requirements for renewal. 
     In fact, Article 13(1)(b) of the Treaty, concerning 
     renewal fees, recognizes that fees may be required in 
     connection with the filing of a declaration and/or 
     evidence of use of a registered mark.
       Under the terms of the Treaty, the United States may 
     continue to require the periodic filing of a verified 
     document attesting to the use of the mark in commerce and 
     specimens or facsimiles, or a showing of excusable non-use. 
     However, the United States may not make such a requirement in 
     connection with registration renewal.
     Harmonization of Trademark Act Sections 8 and 9 Requirements
       The proposed revision harmonizes certain procedural 
     requirements for the affidavits required under this section 
     with the requirements for a registration renewal application 
     contained in section 9 of the Trademark Act of 1946. While 
     both sections contain requirements for registration 
     maintenance, the specific requirements pertaining to the 
     filing required by each existing section differ 
     unnecessarily. These differing requirements have caused 
     confusion to some registrants, particularly those proceeding 
     pro se, resulting in the cancellation of registrations of 
     marks still in use in commerce due to non-compliance with the 
     technical requirements of one or the other of these 
     maintenance sections. Furthermore, since the proposed 
     revision to section 8 adds an affidavit requirement at ten-
     year internals, harmonizing the filing procedures with those 
     for renewal enables the registrant to make both filings at 
     the same time, thus, simplifying registration maintenance.
     Summary of Section 5
       This section amends section 8 of the Trademark Act of 1946 
     (15 U.S.C. 1058). The main purpose of the revision of this 
     section is to set out, in one section, all of the 
     requirements for filing any of the affidavits of use needed 
     to maintain a registration and to ensure that the 
     requirements of each use affidavit are identical. This 
     section includes the affidavit of use filed between the fifth 
     and the sixth year after registration, between the fifth and 
     the sixth year after publication under subsection 12(c), and 
     in the year preceding every ten year anniversary of the 
     registration.
       This purpose is accomplished by adding an obligation to 
     file an affidavit of use or non-use, consistent with the 
     requirements set forth in the subsections, in the year 
     preceding every tenth anniversary of the registration, to 
     provide for correction of deficiencies in submissions under 
     these subsections; to provide for a grace period for making 
     submissions required by these subsections; to modernize the 
     language and to simplify and clarify the existing procedural 
     requirements for filing affidavits under these subsections; 
     and to harmonize certain procedural requirements for such 
     affidavits with the requirements for a registration renewal 
     application contained in section 9 of the Trademark Act of 
     1946.
       Subsection 8(a) states the duration of each registration 
     and provides that the registration shall be canceled by the 
     Commissioner if timely affidavits of use are not 
     filed. Paragraph (1) of subsection 8(a) states that an 
     affidavit of use must be filed by the end of six years 
     following registration. Paragraph (2) of subsection 8(a) 
     states that an affidavit of use must be filed by the end 
     of six years following the date of publication under 
     subsection 12(c) of the Trademark Act of 1946 (15 U.S.C. 
     1062(c)). Paragraph (3) of subsection 8(a) states that an 
     affidavit of use must be filed by the end of each 
     successive ten-year period following the date of 
     registration.
       Subsection 8(b) sets out the length of the time period 
     during which the statutory filing can be made and the 
     contents needed in each filing. In every case, there is a one 
     year statutory period for filing the affidavit.
       Subsection 8(c) permits the filing of the use affidavit, 
     after the statutory period for filing has ended upon payment 
     of an additional ``grace period'' surcharge. The section also 
     provides that a correction of a deficiency, after the 
     statutory period, may be made upon payment of an additional 
     ``deficiency'' surcharge.
       Subsection 8(c)(1) sets out the time period for filing the 
     use affidavit where the statutory period has expired, the so-
     called ``grace'' period, and gives the Commissioner authority 
     to prescribe a surcharge for affidavits filed during the 
     grace period.
       Subsection 8(c)(2) allows for correction of deficiencies in 
     the filings submitted under this section upon payment of the 
     deficiency surcharge.

[[Page S6578]]

       Subsection 8(d) sets out the requirement that the 
     Commissioner attach to each certificate of registration, and 
     notice of publication under section 12(c), a special notice 
     of the requirement for the affidavits required by this 
     section. This section preserves an obligation of the 
     Commissioner that is set out in the last sentence of existing 
     section 8(a) and in section 12(c).
       Subsection 8(e) preserves the obligation of the 
     Commissioner, in existing subsection 8(c), to notify any 
     owner who files an affidavit under section 8 of his 
     acceptance or refusal of the affidavit. The subsection has 
     been revised to reflect the revisions in subsections 8 (a) 
     and (b) by stating that it applies to any of the above 
     prescribed affidavits.
       Subsection 8(f) has been added to require the appointment 
     by owners, not domiciled in the United States, of a domestic 
     representative for service of notices or process in 
     proceedings affecting the mark.
     Periodic Filing of the Affidavit
       The PTO continues to believe in the value of requiring a 
     periodic filing verifying the continued use of the mark as a 
     way to maintain the integrity of the trademark register by 
     periodically removing from the register marks no longer in 
     use in commerce. Therefore, consistent with the Treaty 
     obligations, the proposed revision adds to section 8 of the 
     Trademark Act of 1946 an obligation to file an affidavit of 
     use or excusable non-use, consistent with the requirements 
     set forth in the subsection, in the year preceding the tenth 
     anniversary of the registration and every ten years 
     thereafter. This revision is proposed in view of the proposed 
     deletion of the requirement in connection with registration 
     renewal, in section 9 of the Trademark Act of 1946, for a 
     verified statement attesting to the use of the mark in 
     commerce, accompanied by specimens or facsimiles, or a 
     showing of excusable non-use.
     Grace Period and Correction of Deficiencies
       Rules 8 of the Regulations under the Trademark Law Treaty 
     provides that renewal request must be accepted for at least a 
     six-month period, upon payment of a surcharge, after the date 
     the renewal is due. The existing provisions of section 9 of 
     the Trademark Act of 1946 permit the renewal application to 
     be filed within a three-month period, upon payment of a 
     surcharge, after the date the renewal is due. The existing 
     provisions of section 8 of the Trademark Act of 1946 contain 
     no grace period for the filing of the required affidavit 
     after its due date. As described below, the proposed revision 
     incorporates the six-month grace period required by the 
     treaty for filing renewal requests and harmonizes the 
     requirements for filings under sections 8 and 9 of the 
     Trademark Act of 1946. Harmonization of the filing 
     requirements of sections 8 and 9 will require the amendment 
     of both sections to provide this six-month grace period for 
     making the required filing. This amendment is a 
     liberalization of sections 8 and 9 of the Trademark Act of 
     1946, which is desirable to avoid, to the extent possible, 
     the removal from the register for mere technical reasons of 
     marks that are still in use in commerce.
       The proposed revision to section 8 of the Trademark Act of 
     1946 will amend the existing law by providing a six-month 
     grace period for filing the required affidavit, conditioned 
     upon payment of a ``grace period'' surcharge. Additionally, 
     the proposed revision permits the correction of a deficiency 
     after the sixth anniversary of registration. Such correction 
     must be accompanied by a ``deficiency surcharge'' and be 
     filed no later than the end of a prescribed period after 
     notification of the deficiency. This proposed revision is 
     consistent with the practice proposed in the revision to 
     section 9(a) of the Trademark Act of 1946, concerning 
     renewal.
       Only an owner who did not make any filing prior to the end 
     of the statutory period may make the required filing under 
     the grace period provisions. The owner filing an affidavit 
     prior to the end of the statutory period, but correcting a 
     deficiency either during or after the grace period, will be 
     subject to the ``deficiency surcharge'' only. On the other 
     hand, the owner filing an affidavit during the six-month 
     grace period, will be subject to the ``grace period 
     surcharge'' (for the ability to file the affidavit during the 
     grace period) and, if notified of deficiencies, the 
     ``deficiency surcharge'' (for the ability to correct a 
     deficiency after the end of the statutory period.) The 
     proposed revision does not define deficiency or place any 
     limits on the type of deficiency or omission that can be 
     cured after expiration of the statutory filing period. The 
     Commissioner has broad discretion to provide procedures and 
     fees for curing deficiencies or omissions.
     Simplification and Clarification of Section 8 of the 
         Trademark Act
       The proposed revision conforms the requirements of 
     subsections 8(a) and (b) of the Trademark Act of 1946 to 
     current practice. First, the language in the existing 
     subsections ``attaching to the affidavit a specimen or 
     facsimile showing current use of the mark'' is revised to 
     clarify that the specimens or fascimiles are to be filed 
     along with the affidavit but are not considered part of the 
     affidavit for purposes of complying with the requirement to 
     set forth in the affidavit the goods or services on or in 
     connection with which the mark is in use in commerce. The 
     sentence comprising subsection 8(a) of the Trademark Act of 
     1946 has been revised to clarify and distinguish the 
     requirements for the fee, the affidavit, the specimens and  a 
     showing of non-use. The proposed revision further permits 
     the Commissioner to specify the number of specimens or 
     facsimiles required so that he may require a specimen or 
     facsimile for each class of goods or services identified 
     in the registration. The language ``setting forth those 
     goods or services recited in the registration on or in 
     connection with which the mark is not in use in commerce'' 
     is proposed to be added to parallel the affidavit 
     requirements pertaining to use of the mark and to clarify 
     that the owner must specify the goods or services to which 
     a showing of non-use pertains.
     Existing Subsection 8(b)
       The requirements set out in former subsection 8(b) of the 
     Trademark Act of 1946, pertaining to marks published pursuant 
     to section 12(c) of the Trademark Act of 1946, have been set 
     out in subsections 8(a)(2), 8(b) and (8)(c) and conform to 
     the proposed revisions as to the time of filing the 
     affidavit, the grace period and the correction of 
     deficiencies.
     Existing Subsection 8(c)
       Subsection 8(c) of the Trademark Act of 1946 is now set out 
     in subsection 8(e) and has been amended to reflect the 
     revisions in subsections 8 (a) and (b) to add requirements 
     for the periodic filing of additional affidavits by changing 
     reference from ``. . . any owner who files either of the 
     above-prescribed affidavits . . .'' to ``. . . any owner who 
     files one of the above-prescribed affidavits . . .''.
     Subsection 8(f)--Appointment of Domestic Representative
       Section 5 of this Act proposes to add a section 8(f) to the 
     Trademark Act of 1946 to provide for the appointment of a 
     domestic representative for service of notices or process in 
     proceedings affecting the mark by owners not domiciled in the 
     United States. This new subsection is consistent with similar 
     requirements imposed on applicants by subsection 1(e) of the 
     Trademark Act of 1946. This is necessary because the 
     appointment required in subsection 1(e) of the Trademark Act 
     of 1946 pertains only during the pendency of the application.
     Registrant or Owner: Who must file?
       Throughout the revised section 8, the term ``registrant'' 
     has been replaced by the term ``owner.'' The practice at the 
     Patent and Trademark Office has been to require that the 
     current owner of the registration file all the post-
     registration affidavits needed to maintain a registration. 
     The current owner of the registration must aver to actual 
     knowledge of the use of the mark in the subject registration. 
     However, the definition of ``registrant'' in section 45 of 
     the Act states that the ``terms `applicant' and `registrant' 
     embrace the legal representatives, predecessors, successors 
     and assigns of each applicant and registrant.'' Therefore, 
     use of the term ``registrant'' in section 8 of the Act would 
     imply that any legal representative, predecessor, successor 
     or assign of the registrant could successfully file the 
     affidavits required by sections 8 and 9. To correct this 
     situation, and to keep with the general principle, as set out 
     in section 1, that the owner is the proper person to 
     prosecute an application, section 8 has been amended to state 
     that the owner must file the affidavits required by the 
     section.


                   section 6. renewal of registration

     Summary of Section 6
       This section amends subsection 9(a) of the Trademark Act of 
     1946 to cross-reference the obligatory registration 
     maintenance requirements of section 8 of the Trademark Act of 
     1946; to delete the obligation to submit as part of a renewal 
     application verified statements regarding the use of the mark 
     in commerce and attaching to the application a specimen or 
     facsimile showing current use of the mark; to extend the time 
     for filing a renewal application to up to one year before the 
     expiration of the period for which the registration was 
     issued or renewed and, for an additional fee, up to six 
     months after the end of the expiring period of the 
     registration; to grant authority to the Commissioner to 
     prescribe the form of the written application for renewal of 
     the registration; and, to permit the correction of 
     deficiencies after the statutory filing period.
       This section amends subsection 9(c) to specify the 
     requirements for the appointment by registrants not domiciled 
     in the United States of a domestic representative for service 
     of notices or process in proceedings affecting the mark.
     Use Requirement for Registration Renewal
       Separate from the obligation to renew a trademark 
     registration at ten-year intervals, the U.S. Patent and 
     Trademark Office continues to believe in the value of 
     requiring a periodic filing verifying the continued use of 
     the mark as a way to maintain the integrity of the trademark 
     register by periodically removing from the register marks no 
     longer in use in commerce. Therefore, consistent with the 
     Treaty obligations, the proposed revision deletes from 
     subsection 9(a) of the Trademark Act of 1946 the requirement 
     that the renewal application include a verified statement 
     attesting to the use of the mark in commerce, accompanied by 
     a specimen or facsimile evidencing current use of the mark, 
     or a showing of excusable non-use. These requirements are 
     proposed to be added to subsection 8(a) of the Trademark Act 
     of 1946 in the form of an obligation to file an affidavit of 
     use or excusable non-use, consistent with the requirements 
     set forth in the subsection, on the tenth anniversary of the 
     registration and every ten years thereafter.

[[Page S6579]]

       Also, consistent with the treaty obligations, the 
     requirement that the renewal application be verified is 
     proposed to be deleted and the Commissioner is granted 
     authority to prescribe the form of the written renewal 
     application, consistent with law and international treaties 
     or agreements to which the United States is a party.
     Grace Period and Harmonization
       Rule 8 of the Regulations under the Trademark Law Treaty 
     provides that a renewal request must be accepted for at least 
     a six-month period, upon payment of a surcharge, after the 
     date the renewal is due. The existing provisions of section 9 
     of the Trademark Act of 1946 permit the renewal application 
     to be filed within a three-month period, upon payment of a 
     surcharge, after the date the renewal is due. The revision 
     proposes to change the three-month grace period for 
     requesting registration renewal to the six-month grace period 
     required by the treaty and harmonizes the requirements for 
     filings under sections 8 and 9 of the Trademark Act of 1946. 
     Harmonization of the filing requirements of sections 8 and 9 
     will require the amendment of both sections to provide this 
     six-month grace period for making the required filing. 
     This amendment is a liberalization of sections 8 and 9 of 
     the Trademark Act of 1946, which is desirable to avoid, to 
     the extent possible, the removal from the register for 
     mere technical reasons of marks that are still in use in 
     commerce. In particular, consistent with the filing 
     requirements in section 8 of the Trademark Act of 1946, 
     the period for filing a renewal request is expressly 
     defined as the period one year prior to expiration of the 
     period for which the registration was issued or renewed, 
     or within a grace period of six months after the end of 
     the expiring period.
     Subsection 9(c)--Appointment of Domestic Representatives
       Subsection 6(b) of this Act amends subsection 9(c) to the 
     Trademark Act of 1946 to provide for the appointment of a 
     domestic representative for service of notices or process in 
     proceedings affecting the mark by owners not domiciled in the 
     United States, rather than referencing the requirements in 
     subsection 1(e) of the Trademark Act of 1946. This is 
     preferable because the appointment required in subsection 
     1(e) of the Trademark Act of 1946 pertains only during the 
     pendency of the application.


                section 7. recording assignment of mark

       This section amends section 10 of the Trademark Act of 1946 
     (15 U.S.C. 1060) to clarify that the PTO will record a change 
     in ownership without requiring a copy of the underlying 
     document; and to remove the proscription against the 
     assignment of a mark in an application filed under section 
     1(b) of the Trademark Act of 1946 (15 U.S.C. 1051(b)) 
     (intent-to-use) upon the filing of an amendment to allege use 
     pursuant to section 1(c) of the Trademark Act of 1946 (15 
     U.S.C. 1051(c)).
       The PTO has interpreted the present reference to a ``record 
     of assignments'' in section 10 to require the PTO to record a 
     copy of the actual assignment document. Article 11(4) of 
     Trademark Law Treaty prohibits the requirement of a statement 
     or proof of such transfer in order to record an assignment of 
     a trademark registration. The proposed amendment clarifies 
     that, rather than maintaining a ``record of assignments,'' 
     the PTO ``shall maintain a record of the prescribed 
     information on assignments, in such form as may be prescribed 
     by the Commissioner.'' The proposed amendment authorizes the 
     PTO to determine what information regarding assignments it 
     will record and maintain. The proposed amendment will ensure 
     that a transfer of goodwill remains a necessary element of a 
     valid assignment of a trademark; however, the PTO will not 
     require a statement or proof of the transfer of goodwill in 
     order to record an assignment of a trademark registration.
       Additionally, pertaining to the proscription against the 
     assignment of a mark in an application filed under section 
     1(b) of the Trademark Act of 1946 (intent-to-use), the 
     proposed amendment adds reference to section 1(c) of the 
     Trademark Act of 1946 so that the filing of an amendment to 
     allege use pursuant to section 1(c) removes the restriction 
     against assigning the mark except to the successor to the 
     business of the applicant, or portion thereof, to which the 
     mark pertains, if that business is ongoing and existing. 
     Presently, prior to registration of an application filed 
     pursuant to section 1(b) of the Trademark Act of 1946 
     (15 U.S.C. 1051(b)) based upon a bona fide intention to 
     use a mark in commerce on the identified goods or 
     services, an applicant must file either a verified 
     statement of use under section 1(d) of the Trademark Act 
     of 1946 (15 U.S.C. 1051(d)) or an amendment to allege use 
     under section 1(c) of the Trademark Act of 1946 (15 U.S.C. 
     1051(c)). The substance of the two filings is essentially 
     the same. The difference between the two filings is the 
     point at which the filing is made. Presently, section 10 
     of the Trademark Act of 1946 (15 U.S.C. 1060) limits the 
     assignability of an application to register a mark under 
     section 1(b) of the Trademark Act of 1946 (15 U.S.C. 
     1051(b)) until such time as applicant files a verified 
     statement of use under section 1(d) of the Trademark Act 
     of 1946 (15 U.S.C. 1051(d)). Since the effect of the 
     filing of an amendment to allege use under section 1(c) of 
     the Trademark Act of 1946 (15 U.S.C. 1051(c)) is 
     analogous, there is no reason in law or policy for 
     omitting to include reference to section 1(c) in section 
     10.


   section 8. international conventions; copy of foreign registration

       This section amends section 44(e) of the Trademark Act of 
     1946 (15 U.S.C. 1126(e)) to change the requirement that an 
     application ``be accompanied by a certificate or certified 
     copy'' of the foreign registration, which has been 
     interpreted to be a filing date requirement, so that such 
     copy may be submitted to the PTO prior to registration, 
     within such time limits as may be prescribed by the 
     Commissioner. Such a requirement as a prerequisite to 
     receiving a filing date is prohibited pursuant to Article 5 
     of the Trademark Law Treaty.


                    section 9. transition provisions

       This section clarifies when and how the new provisions set 
     out for the maintenance of registrations will apply to 
     existing and future applications and registrations.
       Section 9(a) provides that registrations issued or renewed 
     with a 20 year term, i.e. those registrations issued or 
     renewed prior to the effective date of the Trademark Law 
     Revision Act of 1988, will be subject to the post-
     registration provisions of this Act on or after a date that 
     is 1 year before the date on which the twenty year term 
     expires. This provision will allow those registrations to 
     have the benefit of the one year statutory filing period and 
     the six-month grace period provided by the Act.
       Section 9(b) provides that the Act shall apply to any 
     application for the registration of a trademark pending on, 
     or filed after, the effective date of the Act.
       Section 9(c) provides that the filing of an affidavit under 
     Section 5 of the Act, which amends Section 8(b) of the 
     Trademark Act of 1946, shall be required for any registration 
     if the sixth or tenth anniversary of the registration, or the 
     sixth anniversary of publication under section 12(c) of the 
     Trademark Act of 1946, occurs on or after the effective date 
     of this Act.
       Section 9(d) provides that the amendment made by section 6 
     of this Act shall apply to the filing of an application for 
     the renewal of a registration if the expiration date of the 
     registration for which the renewal application is filed is on 
     or after the effective date of this Act.


                       section 10. effective date

       This section provides that this Act shall take effect one 
     year after enactment of the Act or upon entry into force of 
     the Treaty in respect to the United States, whichever occurs 
     first. Since the provisions of the Act will modernize and 
     simplify procedures pertaining to trademark application 
     filing and registration maintenance, this section provides 
     that, if the U.S. has not acceded to the treaty and become 
     subject to the obligations thereunder within a year after 
     enactment, the Act will become effective so that its benefits 
     can be realized by trademark owners.
       Since the United States is not one of the first five States 
     to deposit its instrument of ratification or accession, 
     Article 20 of the Treaty provides that the Treaty shall enter 
     into force three months after the date on which the 
     instrument of ratification or accession is deposited.

  Mr. LEAHY. Mr. President, I am pleased today to introduce the 
Trademark Law Treaty Implementation and Registration Simplification Act 
(TLT Act). The TLT Act, which will implement the Trademark Law Treaty 
of 1994, is an important step in our continuing endeavor to harmonize 
trademark law around the world so that American businesses--
particularly small American businesses--seeking to expand 
internationally will face simplified and straightforward trademark 
registration procedures in foreign countries.
  This bill is one of a series I have supported which protect American 
trademark holders in a world of rapidly changing technology and 
international competition. Earlier this year I introduced S. 1727, 
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 owners. Moreover, I supported the Federal 
Trademark Dilution Act of 1995, which was enacted into law last 
Congress. This legislation provides 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 efforts to refine American 
trademark law to ensure that it promotes American interests.
  Today more than ever before, trademarks are among the most valuable 
assets of business. One of the major obstacles in securing 
international trademark protection is the difficulty and cost involved 
in obtaining and maintaining a registration in each and every country. 
Countries around the world have a number of varying requirements for 
filing trademark applications, many of which are non-substantive and 
very confusing. Because of these difficulties, many U.S. businesses, 
especially smaller businesses,

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are forced to concentrate their efforts on registering their trademarks 
only in certain major countries while pirates freely register their 
marks in other countries.
  The Trademark Law Treaty will eliminate many of the arduous 
registration requirements of foreign countries by enacting a list of 
maximum requirements for trademark procedures. Eliminating needless 
formalities will be an enormous step in the direction of a rational 
trademark system which will benefit American business, especially 
smaller businesses, to expand into the international market more 
freely. Fortunately, the Trademark Law Treaty has already been signed 
by thirty-five countries, has already been ratified by ten countries 
including Japan and the United Kingdom, and has already been reported 
favorably to the full Senate by the Senate Foreign Affairs Committee.
  As the United States is already in accordance with most of the 
Trademark Law Treaty requirements, the TLT Act would impose only minor 
changes to U.S. trademark law. The Patent and Trademark Office, the 
International Trademark Association and the American Intellectual 
Property Law Association have indicated their support for the TLT Act.
  I hope the Senate will consider and pass this bill expeditiously.

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