[Congressional Record Volume 144, Number 125 (Friday, September 18, 1998)]
[Senate]
[Pages S10603-S10605]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                TRADEMARK LAW TREATY IMPLEMENTATION ACT

                                 ______
                                 

                        HATCH AMENDMENT NO. 3601

  Mr. SANTORUM (for Mr. Hatch) proposed an amendment to the bill (S. 
2193) to implement the provisions of the Trademark Law Treaty; as 
follows:

       Strike all after the enacting clause and insert the 
     following:

              TITLE I--TRADEMARK LAW TREATY IMPLEMENTATION

     SEC. 101. SHORT TITLE.

       This title may be cited as the ``Trademark Law Treaty 
     Implementation Act''.

     SEC. 102. REFERENCE TO THE TRADEMARK ACT OF 1946.

       For purposes of this title, 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. 103. 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;

[[Page S10604]]

       ``(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.

     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. 104. 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. 105. 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. 106. 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. 107. 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. 108. 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. 109. TRANSITION PROVISIONS.

       (a) Registrations in 20-Year Term.--The provisions of 
     section 8 of the Trademark Act of 1946, as amended by section 
     105 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 title and the 
     amendments made by this title 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 105 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

[[Page S10605]]

     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 
     106 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.

     SEC. 110. EFFECTIVE DATE.

       This title and the amendments made by this title 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.

                    TITLE II--TECHNICAL CORRECTIONS

     SEC. 201. 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(d)(1) (15 U.S.C. 1051(d)(1)) is amended--
       (A) by inserting ``and,'' after ``specifying the date of 
     the applicant's first use of the mark in commerce''; and
       (B) 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
       (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 14(3) (15 U.S.C. 1064(3)) is amended by 
     inserting ``or is functional,'' before ``or has been 
     abandoned''.
       (5) 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,''.
       (6) Section 26 (15 U.S.C. 1094) is amended by striking 
     ``7(c),,'' and inserting ``, 7(c),''.
       (7) 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)''.
       (8) 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''.
       (9) 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''.
       (10) Section 39(a) (15 U.S.C. 1121(a)) is amended by 
     striking ``circuit courts'' and inserting ``courts''.
       (11) Section 42 (15 U.S.C. 1124) is amended by striking 
     ``the any domestic'' and inserting ``any domestic''.
       (12) 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.

                  TITLE III--MISCELLANEOUS PROVISIONS

     SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTISING OR 
                   PROMOTIONAL PURPOSES.

       Section 14 of 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. 1064) (commonly referred to as the Trademark Act 
     of 1946) is amended by adding at the end the following: 
     ``Nothing in paragraph (5) shall be deemed to prohibit the 
     registrant from using its certification mark in advertising 
     or promoting recognition of the certification program or of 
     the goods or services meeting the certification standards of 
     the registrant. Such uses of the certification mark shall not 
     be grounds for cancellation under paragraph (5), so long as 
     the registrant does not itself produce, manufacture, or sell 
     any of the certified goods or services to which its identical 
     certification mark is applied.''.

     SEC. 302. OFFICIAL INSIGNIA OF NATIVE INDIAN TRIBES.

       (a) In General.--The Commissioner of Patents and Trademarks 
     shall study the issues surrounding the protection of the 
     official insignia of federally and State recognized Native 
     American tribes. The study shall address at least the 
     following issues:
       (1) The impact on Native American tribes, trademark owners, 
     the Patent and Trademark Office, any other interested party, 
     or the international legal obligations of the United States, 
     of any change in law or policy with respect to--
       (A) the prohibition of the Federal registration of 
     trademarks identical to the official insignia of Native 
     American tribes;
       (B) the prohibition of any new use of the official insignia 
     of Native American tribes; and
       (C) appropriate defenses, including fair use, to any claims 
     of infringement.
       (2) The means for establishing and maintaining a listing of 
     the official insignia of federally or State recognized Native 
     American tribes.
       (3) An acceptable definition of the term ``official 
     insignia'' with respect to a federally or State recognized 
     Native American tribe.
       (4) The administrative feasibility, including the cost, of 
     changing the current law or policy to--
       (A) prohibit the registration, or prohibit any new uses of 
     the official insignia of State or federally recognized Native 
     American tribes; or
       (B) otherwise give additional protection to the official 
     insignia of federally and State recognized Native American 
     tribes.
       (5) A determination of whether such protection should be 
     offered prospectively or retrospectively and the impact of 
     such protection.
       (6) Any statutory changes that would be necessary in order 
     to provide such protection.
       (7) Any other factors which may be relevant.
       (b) Comment and Report.--
       (1) Comment.--Not later than 60 days after the date of 
     enactment of this Act, the Commissioner shall initiate a 
     request for public comment on the issues identified and 
     studied by the Commissioner under subsection (a) and invite 
     comment on any additional issues that are not included in 
     such request. During the course of the public comment period, 
     the Commissioner shall use any appropriate additional 
     measures, including field hearings, to obtain as wide a range 
     of views as possible from Native American tribes, trademark 
     owners, and other interested parties.
       (2) Report.--Not later than September 30, 1999, the 
     Commissioner of Patents and Trademarks shall complete the 
     study under this section and submit a report including the 
     findings and conclusions of the study to the chairman of the 
     Committee on the Judiciary of the Senate and the chairman of 
     the Committee on the Judiciary of the House of 
     Representatives.

                          ____________________