[Congressional Record Volume 144, Number 124 (Thursday, September 17, 1998)]
[Senate]
[Pages S10535-S10536]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK LAW TREATY IMPLEMENTATION ACT

  Mr. SANTORUM. Mr. President, I ask unanimous consent that the Senate 
proceed to the consideration of Calendar No. 474, S. 2193.
  The PRESIDING OFFICER. The clerk will report.
  The bill clerk read as follows:

       A bill (S. 2193) to implement the provisions of the 
     Trademark Law Treaty.

  The PRESIDING OFFICER. Is there objection to the immediate 
consideration of the bill?
  There being no objection, the Senate proceeded to consider the bill.


                           Amendment No. 3601

(Purpose: To make certain technical corrections to the Trademark Act of 
                     1946, and for other purposes)

  Mr. SANTORUM. Mr. President, Senator Hatch has a substitute amendment 
at the desk, and I ask for its consideration.
  The PRESIDING OFFICER. The clerk will report.
  The bill clerk read as follows:

       The Senator from Pennsylvania [Mr. Santorum], for Mr. 
     Hatch, proposes an amendment numbered 3601.

  The amendment is as follows:
  [The bill was not available for printing. It will appear in a future 
edition of the Record.]
  Mr. LEAHY. Mr. President, I am pleased that the Senate is considering 
S. 2193, the Trademark Law Treaty Implementation Act (TLT Act), along 
with some important technical amendments. I wish that Congress was 
doing more work on intellectual property issues to maintain America's 
preeminence in the realm of technology. Specifically I wish we were at 
conference on the Digital Millennium Copyright Act, which would 
implement the World Intellectual Property Organization treaties. We 
should also be passing the Patent Bill, which would help America's 
inventors of today and tomorrow. I am glad however, at the very least, 
that we are at last considering the TLT Act.


              the trademark law treaty implementation act

  The TLT Act, which Senator Hatch and I introduced to 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 like so many of the 
businesses in Vermont--seeking to expand internationally will face 
simplified and straightforward trademark registration procedures in 
foreign countries.
  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 nonsubstantive and 
very confusing. Because of these difficulties, many U.S. businesses, 
especially smaller businesses, 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 and was ratified by the Senate on June 26, 
1998.
  The U.S. Patent and Trademark Office, the International Trademark 
Association, and the American Intellectual Property Law Association all 
support the Trademark Law Treaty and the TLT Act. In a letter to me 
dated July 1, 1998, the International Trademark Association stated that 
the Trademark law Treaty is ``critical to the success of U.S. companies 
as they operate in the rapidly expanding and ever increasingly 
competitive global marketplace.'' The American Intellectual Property 
Law Association, in a letter to me dated July 13, 1998, explained: 
``The Trademark Law Treaty harmonizes a number of the requirements and 
procedures associated with the filing, registration and renewal of 
trademarks. It has the potential to bring significant improvements in 
the trademark practices of a number of important countries around the 
world in which U.S. trademark owners seek protection. By conforming its 
trademark law with the obligations of the TLT and ratifying the treaty, 
the United States can exercise leadership to encourage additional 
nations, particularly those with burdensome procedural requirements, to 
also adhere.''


                     the technical corrections bill

  I also support the amendment to this legislation of S. 2192, the 
trademark technical corrections bill. This measure contains several 
mostly technical amendments to the Lanham Act. The most important of 
these amendments addresses the status of ``functional'' shapes as 
trademarks. Functional shapes are those whose features are dictated by 
utilitarian considerations. Under current law, the registration as a 
trademark of a functional shape becomes ``incontestable'' after 5 years

[[Page S10536]]

even though it should never have been registered in the first place. S. 
2192 would correct this anomaly by adding functionality as a ground of 
cancellation of a mark at any time. The U.S. Patent and Trademark 
Office, the International Trademark Association, and the American 
Intellectual Property Law Association all support the trademark 
technical corrections bill. To date, I have not heard any opposition to 
this amendment.
  I hope that after passage of the TLT Act, Congress can get back to 
work on our other pressing intellectual property issues, namely the 
Digital Millennium Copyright Act and the Patent Bill, to fortify 
American intellectual property rights around the world and to help 
unleash the full potential of America's most creative industries.
  Mr. SANTORUM. Mr. President, I ask unanimous consent that the 
amendment be agreed to.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The amendment (No. 3601) was agreed to.
  Mr. SANTORUM. Mr. President, I ask unanimous consent that the bill be 
considered read a third time and passed, as amended; that the motion to 
reconsider be laid upon the table; and that any statements relating to 
the bill appear at the appropriate place in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The bill (S. 2193), as amended, was considered read the third time 
and passed.

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