Congressional Record, Volume 145 Issue 44 (Friday, March 19, 1999)

[Congressional Record Volume 145, Number 44 (Friday, March 19, 1999)]
[Senate]
[Pages S3003-S3006]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

By Mr. LEAHY:
S. 671. A bill to amend the Trademark Act of 1946 to provide for the
registration and protection of trademarks used in commerce, in order to
carry out provisions of certain international conventions, and for
other purposes; to the Committee on the Judiciary.

madrid protocol implementation act

Mr. LEAHY. Mr. President, I am pleased to introduce implementing
legislation for the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks (Protocol). Last
Congress, I introduced an identical bill, S. 2191 which unfortunately
the Senate did not consider.
This bill is part of my ongoing effort to update American
intellectual property law to ensure that it serves to advance and
protect American interests both here and abroad. The Protocol would
help American businesses, and especially small- and medium-sized
companies, protect their trademarks as they expand into international
markets. Specifically, this legislation will conform American trademark
application procedures to the terms of the Protocol in anticipation of
the U.S.'s eventual ratification of the treaty. Ratification by the
United States of this treaty would help create a ``one stop''
international trademark registration process, which would be an
enormous benefit for American businesses. This bill is one of many
measures I have introduced and supported over the past few years to
ensure that American trademark holders receive strong protection in
today's world of changing technology and complex international markets.
When I introduced this legislation last year, I also cosponsored S.
2193, legislation to implement the Trademark Law Treaty. S. 2193
simplified trademark registration requirements around the world by
establishing a list of maximum requirements which Treaty member
countries can impose on trademark applicants. The bill passed the
Senate on September 17, 1998, and was signed by the President on
October 30, 1998. I am proud of this legislation since all American
businesses, and particularly small American businesses, will benefit as
a result.
I have in the past supported legislation critical to keeping our
trademark laws up-to-date. For example, last year I introduced S. 1727,
which authorized a comprehensive study of the effects of adding new
generic Top Level Domains on trademark and other intellectual property
rights. This bill became law as part of the Next Generation Internet
Research Act, S. 1609, which was signed into law on October 28, 1998. I
also supported the Federal Trademark Dilution Act of 1995, enacted in
the 104th Congress to provide intellectual property rights holders with
the power to enjoin another person's commercial use of famous marks
that would cause dilution of the mark's distinctive quality.
Together, these measures represent significant steps in our efforts
to ensure that American trademark law adequately serves and promote
American interests.
The legislation I introduce today would ease the trademark
registration burden on small- and medium-sized businesses by enabling
businesses to obtain trademark protection in all signatory countries
with a single trademark application filed with the Patent and Trademark
Office. Currently, in order for American companies to protect their
trademarks abroad, they

[[Page S3004]]

must register their trademarks in each and every country in which
protection is sought. Registering in multiple countries is a time-
consuming, complicated and expensive process--a process which places a
disproportionate burden on smaller American companies seeking
international trademark protection.
Since 1891, the Madrid Agreement Concerning the International
Registration of Marks (Agreement) has provided an international
trademark registration system. However, prior to adoption of the
Protocol, the U.S. declined to join the Agreement because it contained
terms deemed inimical to American intellectual property interests. In
1989, the terms of the Agreement were modified by the Protocol, which
corrected the objectionable terms of the Agreement and made American
participation a possibility. For example, under the Protocol,
applications for international trademark extension can be completed in
English; formerly, applications were required to be completed in
French. It should be noted that the Protocol would not require
substantive changes to American trademark law, but merely to certain
procedures for registering trademarks. This implementing legislation is
identical to legislation that passed the House last year and has been
reintroduced this year as H.R. 769, by Representatives Howard Coble (R-
NC) and Howard Berman (D-CA). Indeed, H.R. 769 has already been
reported favorably by the House Judiciary Subcommittee on Courts and
Intellectual Property.
To date, the Administration has resisted accession to the treaty
because of voting rights disputes with the European Union. The EU has
sought to retain an additional vote for itself as an intergovernmental
entity, in addition to the votes of its member states. I support the
Administration's efforts to negotiate a treaty based upon the equitable
and democratic principle of one-state, one-vote. However, in
anticipation of the eventual resolution of this dispute, the Senate has
the opportunity to act now to make the technical changes to American
trademark law so that once this voting dispute is satisfactorily
resolved and the U.S. accedes to the Protocol, ``one-stop''
international trademark registration can become an immediate reality
for all American trademark applicants.
I ask unanimous consent that a copy of the bill and the sectional
analysis be placed in the Record.
There being no objection, the material was ordered to be printed in
the Record, as follows:

S. 671

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

SECTION 1. SHORT TITLE.

This Act may be cited as the ``Madrid Protocol
Implementation Act''.

SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS.

The Act entitled ``An Act to provide for the registration
and protection of trade-marks used in commerce, to carry out
the provisions of certain international conventions, and for
other purposes'', approved July 5, 1946, as amended (15
U.S.C. 1051 et seq.) (commonly referred to as the ``Trademark
Act of 1946'') is amended by adding after section 51 the
following new title:

``TITLE XII--THE MADRID PROTOCOL

``SEC. 60. DEFINITIONS.

``For purposes of this title:
``(1) Madrid protocol.--The term `Madrid Protocol' means
the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks, adopted at Madrid,
Spain, on June 27, 1989.
``(2) Basic application.--The term `basic application'
means the application for the registration of a mark that has
been filed with an Office of a Contracting Party and that
constitutes the basis for an application for the
international registration of that mark.
``(3) Basic registration.--The term `basic registration'
means the registration of a mark that has been granted by an
Office of a Contracting Party and that constitutes the basis
for an application for the international registration of that
mark.
``(4) Contracting party.--The term `Contracting Party'
means any country or inter-governmental organization that is
a party to the Madrid Protocol.
``(5) Date of recordal.--The term `date of recordal' means
the date on which a request for extension of protection that
is filed after an international registration is granted is
recorded on the International Register.
``(6) Declaration of bona fide intention to use the mark in
commerce.--The term `declaration of bona fide intention to
use the mark in commerce' means a declaration that is signed
by the applicant for, or holder of, an international
registration who is seeking extension of protection of a mark
to the United States and that contains a statement that--
``(A) the applicant or holder has a bona fide intention to
use the mark in commerce,
``(B) the person making the declaration believes that
person, or the firm, corporation, or association in whose
behalf that person makes the declaration, to be entitled to
use the mark in commerce, and
``(C) no other person, firm, corporation, or association,
to the best of such person's knowledge and belief, has the
right to use such mark in commerce either in the identical
form of the mark or in such near resemblance to the mark as
to be likely, when used on or in connection with the goods of
such other person, firm, corporation, or association, to
cause confusion, or to cause mistake, or to deceive.
``(7) Extension of protection.--The term `extension of
protection' means the protection resulting from an
international registration that extends to a Contracting
Party at the request of the holder of the international
registration, in accordance with the Madrid Protocol.
``(8) Holder of an international registration.--A `holder'
of an international registration is the natural or juristic
person in whose name the international registration is
recorded on the International Register.
``(9) International application.--The term `international
application' means an application for international
registration that is filed under the Madrid Protocol.
``(10) International bureau.--The term `International
Bureau' means the International Bureau of the World
Intellectual Property Organization.
``(11) International register.--The term `International
Register' means the official collection of such data
concerning international registrations maintained by the
International Bureau that the Madrid Protocol or its
implementing regulations require or permit to be recorded,
regardless of the medium which contains such data.
``(12) International registration.--The term `international
registration' means the registration of a mark granted under
the Madrid Protocol.
``(13) International registration date.--The term
`international registration date' means the date assigned to
the international registration by the International Bureau.
``(14) Notification of refusal.--The term `notification of
refusal' means the notice sent by an Office of a Contracting
Party to the International Bureau declaring that an extension
of protection cannot be granted.
``(15) Office of a contracting party.--The term `Office of
a Contracting Party' means--
``(A) the office, or governmental entity, of a Contracting
Party that is responsible for the registration of marks, or
``(B) the common office, or governmental entity, of more
than 1 Contracting Party that is responsible for the
registration of marks and is so recognized by the
International Bureau.
``(16) Office of origin.--The term `office of origin' means
the Office of a Contracting Party with which a basic
application was filed or by which a basic registration was
granted.
``(17) Opposition period.--The term `opposition period'
means the time allowed for filing an opposition in the Patent
and Trademark Office, including any extension of time granted
under section 13.

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

``The owner of a basic application pending before the
Patent and Trademark Office, or the owner of a basic
registration granted by the Patent and Trademark Office,
who--
``(1) is a national of the United States,
``(2) is domiciled in the United States, or
``(3) has a real and effective industrial or commercial
establishment in the United States,

may file an international application by submitting to the
Patent and Trademark Office a written application in such
form, together with such fees, as may be prescribed by the
Commissioner.

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

``Upon the filing of an application for international
registration and payment of the prescribed fees, the
Commissioner shall examine the international application for
the purpose of certifying that the information contained in
the international application corresponds to the information
contained in the basic application or basic registration at
the time of the certification. Upon examination and
certification of the international application, the
Commissioner shall transmit the international application to
the International Bureau.

``SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR
EXPIRATION OF A BASIC APPLICATION OR BASIC
REGISTRATION.

``With respect to an international application transmitted
to the International Bureau under section 62, the
Commissioner shall notify the International Bureau whenever
the basic application or basic registration which is the
basis for the international application has been restricted,
abandoned, or canceled, or has expired, with respect to some
or all of

[[Page S3005]]

the goods and services listed in the international
registration--
``(1) within 5 years after the international registration
date; or
``(2) more than 5 years after the international
registration date if the restriction, abandonment, or
cancellation of the basic application or basic registration
resulted from an action that began before the end of that 5-
year period.

``SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO
INTERNATIONAL REGISTRATION.

``The holder of an international registration that is based
upon a basic application filed with the Patent and Trademark
Office or a basic registration granted by the Patent and
Trademark Office may request an extension of protection of
its international registration by filing such a request--
``(1) directly with the International Bureau, or
``(2) with the Patent and Trademark Office for transmittal
to the International Bureau, if the request is in such form,
and contains such transmittal fee, as may be prescribed by
the Commissioner.

``SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL
REGISTRATION TO THE UNITED STATES UNDER THE
MADRID PROTOCOL.

``(a) In General.--Subject to the provisions of section 68,
the holder of an international registration shall be entitled
to the benefits of extension of protection of that
international registration to the United States to the extent
necessary to give effect to any provision of the Madrid
Protocol.
``(b) If United States is Office of Origin.--An extension
of protection resulting from an international registration of
a mark shall not apply to the United States if the Patent and
Trademark Office is the office of origin with respect to that
mark.

``SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF
PROTECTION OF AN INTERNATIONAL REGISTRATION TO
THE UNITED STATES.

``(a) Requirement for Request for Extension of
Protection.--A request for extension of protection of an
international registration to the United States that the
International Bureau transmits to the Patent and Trademark
Office shall be deemed to be properly filed in the United
States if such request, when received by the International
Bureau, has attached to it a declaration of bona fide
intention to use the mark in commerce that is verified by the
applicant for, or holder of, the international registration.
``(b) Effect of Proper Filing.--Unless extension of
protection is refused under section 68, the proper filing of
the request for extension of protection under subsection (a)
shall constitute constructive use of the mark, conferring the
same rights as those specified in section 7(c), as of the
earliest of the following:
``(1) The international registration date, if the request
for extension of protection was filed in the international
application.
``(2) The date of recordal of the request for extension of
protection, if the request for extension of protection was
made after the international registration date.
``(3) The date of priority claimed under section 67.

``SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF
PROTECTION TO THE UNITED STATES.

``The holder of an international registration with an
extension of protection to the United States shall be
entitled to claim a date of priority based on the right of
priority within the meaning of Article 4 of the Paris
Convention for the Protection of Industrial Property if--
``(1) the international registration contained a claim of
such priority; and
``(2)(A) the international application contained a request
for extension of protection to the United States, or
``(B) the date of recordal of the request for extension of
protection to the United States is not later than 6 months
after the date of the first regular national filing (within
the meaning of Article 4(A)(3) of the Paris Convention for
the Protection of Industrial Property) or a subsequent
application (within the meaning of Article 4(C)(4) of the
Paris Convention).

``SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR
EXTENSION OF PROTECTION; NOTIFICATION OF
REFUSAL.

``(a) Examination and Opposition.--(1) A request for
extension of protection described in section 66(a) shall be
examined as an application for registration on the Principal
Register under this Act, and if on such examination it
appears that the applicant is entitled to extension of
protection under this title, the Commissioner shall cause the
mark to be published in the Official Gazette of the Patent
and Trademark Office.
``(2) Subject to the provisions of subsection (c), a
request for extension of protection under this title shall be
subject to opposition under section 13. Unless successfully
opposed, the request for extension of protection shall not be
refused.
``(3) Extension of protection shall not be refused under
this section on the ground that the mark has not been used in
commerce.
``(4) Extension of protection shall be refused under this
section to any mark not registrable on the Principal
Register.
``(b) Notification of Refusal.--If, a request for extension
of protection is refused under subsection (a), the
Commissioner shall declare in a notification of refusal (as
provided in subsection (c)) that the extension of protection
cannot be granted, together with a statement of all grounds
on which the refusal was based.
``(c) Notice to International Bureau.--(1) Within 18 months
after the date on which the International Bureau transmits to
the Patent and Trademark Office a notification of a request
for extension of protection, the Commissioner shall transmit
to the International Bureau any of the following that applies
to such request:
``(A) A notification of refusal based on an examination of
the request for extension of protection.
``(B) A notification of refusal based on the filing of an
opposition to the request.
``(C) A notification of the possibility that an opposition
to the request may be filed after the end of that 18-month
period.
``(2) If the Commissioner has sent a notification of the
possibility of opposition under paragraph (1)(C), the
Commissioner shall, if applicable, transmit to the
International Bureau a notification of refusal on the basis
of the opposition, together with a statement of all the
grounds for the opposition, within 7 months after the
beginning of the opposition period or within 1 month after
the end of the opposition period, whichever is earlier.
``(3) If a notification of refusal of a request for
extension of protection is transmitted under paragraph (1) or
(2), no grounds for refusal of such request other than those
set forth in such notification may be transmitted to the
International Bureau by the Commissioner after the expiration
of the time periods set forth in paragraph (1) or (2), as the
case may be.
``(4) If a notification specified in paragraph (1) or (2)
is not sent to the International Bureau within the time
period set forth in such paragraph, with respect to a request
for extension of protection, the request for extension of
protection shall not be refused and the Commissioner shall
issue a certificate of extension of protection pursuant to
the request.
``(d) Designation of Agent for Service of Process.--In
responding to a notification of refusal with respect to a
mark, the holder of the international registration of the
mark shall designate, by a written document filed in the
Patent and Trademark Office, the name and address of a person
resident in the United States on whom may be served notices
or process in proceedings affecting the mark. Such notices or
process may be served upon the person so designated by
leaving with that person, or mailing to that person, a copy
thereof at the address specified in the last designation so
filed. If the person so designated cannot be found at the
address given in the last designation, such notice or process
may be served upon the Commissioner.

``SEC. 69. EFFECT OF EXTENSION OF PROTECTION.

``(a) Issuance of Extension of Protection.--Unless a
request for extension of protection is refused under section
68, the Commissioner shall issue a certificate of extension
of protection pursuant to the request and shall cause notice
of such certificate of extension of protection to be
published in the Official Gazette of the Patent and Trademark
Office.
``(b) Effect of Extension of Protection.--From the date on
which a certificate of extension of protection is issued
under subsection (a)--
``(1) such extension of protection shall have the same
effect and validity as a registration on the Principal
Register, and
``(2) the holder of the international registration shall
have the same rights and remedies as the owner of a
registration on the Principal Register.

``SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE
UNITED STATES ON THE UNDERLYING INTERNATIONAL
REGISTRATION.

``(a) Effect of Cancellation of International
Registration.--If the International Bureau notifies the
Patent and Trademark Office of the cancellation of an
international registration with respect to some or all of the
goods and services listed in the international registration,
the Commissioner shall cancel any extension of protection to
the United States with respect to such goods and services as
of the date on which the international registration was
canceled.
``(b) Effect of Failure To Renew International
Registration.--If the International Bureau does not renew an
international registration, the corresponding extension of
protection to the United States shall cease to be valid as of
the date of the expiration of the international registration.
``(c) Transformation of an Extension of Protection Into a
United States Application.--The holder of an international
registration canceled in whole or in part by the
International Bureau at the request of the office of origin,
under Article 6(4) of the Madrid Protocol, may file an
application, under section 1 or 44 of this Act, for the
registration of the same mark for any of the goods and
services to which the cancellation applies that were covered
by an extension of protection to the United States based on
that international registration. Such an application shall be
treated as if it had been filed on the international
registration date or the date of recordal of the request for
extension of protection with the International Bureau,
whichever date applies, and, if the extension of protection
enjoyed priority under section 67 of this title, shall enjoy
the same priority. Such an application shall be entitled to
the benefits conferred by this subsection only if the
application is filed not later than 3 months after the date
on which

[[Page S3006]]

the international registration was canceled, in whole or in
part, and only if the application complies with all the
requirements of this Act which apply to any application filed
under section 1 or 44.

``SEC. 71. AFFIDAVITS AND FEES.

``(a) Required Affidavits and Fees.--An extension of
protection for which a certificate of extension of protection
has been issued under section 69 shall remain in force for
the term of the international registration upon which it is
based, except that the extension of protection of any mark
shall be canceled by the Commissioner--
``(1) at the end of the 6-year period beginning on the date
on which the certificate of extension of protection was
issued by the Commissioner, unless within the 1-year period
preceding the expiration of that 6-year period the holder of
the international registration files in the Patent and
Trademark Office an affidavit under subsection (b) together
with a fee prescribed by the Commissioner; and
``(2) at the end of the 10-year period beginning on the
date on which the certificate of extension of protection was
issued by the Commissioner, and at the end of each 10-year
period thereafter, unless--
``(A) within the 6-month period preceding the expiration of
such 10-year period the holder of the international
registration files in the Patent and Trademark Office an
affidavit under subsection (b) together with a fee prescribed
by the Commissioner; or
``(B) within 3 months after the expiration of such 10-year
period, the holder of the international registration files in
the Patent and Trademark Office an affidavit under subsection
(b) together with the fee described in subparagraph (A) and
an additional fee prescribed by the Commissioner.
``(b) Contents of Affidavit.--The affidavit referred to in
subsection (a) shall set forth those goods or services
recited in the extension of protection on or in connection
with which the mark is in use in commerce and the holder of
the international registration shall attach to the affidavit
a specimen or facsimile showing the current use of the mark
in commerce, or shall set forth that any nonuse is due to
special circumstances which excuse such nonuse and is not due
to any intention to abandon the mark. Special notice of the
requirement for such affidavit shall be attached to each
certificate of extension of protection.

``SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

``An extension of protection may be assigned, together with
the goodwill associated with the mark, only to a person who
is a national of, is domiciled in, or has a bona fide and
effective industrial or commercial establishment either in a
country that is a Contracting Party or in a country that is a
member of an intergovernmental organization that is a
Contracting Party.

``SEC. 73. INCONTESTABILITY.

``The period of continuous use prescribed under section 15
for a mark covered by an extension of protection issued under
this title may begin no earlier than the date on which the
Commissioner issues the certificate of the extension of
protection under section 69, except as provided in section
74.

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

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

SEC. 3. EFFECTIVE DATE.

This Act and the amendments made by this Act shall take
effect on the date on which the Madrid Protocol (as defined
in section 60(1) of the Trademark Act of 1946) enters into
force with respect to the United States.
____

Madrid Protocol Implementation Act--Section by Section Analysis

Section 1. Short Title
This section provides a short title: the ``Madrid Protocol
Implementation Act.''
Section 2. Amendments to the Trademark Act of 1946
This section amends the ``Trademark Act of 1946'' by adding
a new Title XII with the following provisions:
The owner of a registration granted by the Patent and
Trademark Office (PTO) or the owner of a pending application
before the PTO may file an international application for
trademark protection at the PTO.
After receipt of the appropriate fee and inspection of the
application, the PTO Commissioner is charged with the duty of
transmitting the application to the WIPO International
Bureau.
The Commissioner is also obliged to notify the
International Bureau whenever the international application
has been ``. . . restricted, abandoned, canceled, or has
expired . . .'' within a specified time period.
The holder of an international registration may request an
extension of its registration by filing with the PTO or the
International Bureau.
The holder of an international registration is entitled to
the benefits of extension in the United states to the extent
necessary to give effect to any provision of the Protocol;
however, an extension of an international registration shall
not apply to the United States if the PTO is the office of
origin with respect to that mark.
The holder of an international registration with an
extension of protection in the United States may claim a date
of priority based on certain conditions.
If the PTO Commissioner believes that an applicant is
entitled to an extension of protection, he or she publishes
the mark in the ``Official Gazette'' of the PTO. This serves
notice to third parties who oppose the extension. Unless an
official protest conducted pursuant to existing law is
successful, the request for extension may not be refused. If
the request for extension is denied, however, the
Commissioner notifies the International Bureau of such action
and sets forth the reason(s) why. The Commissioner must also
apprise the International Bureau of other relevant
information pertaining to requests for extension within the
designated time periods.
If an extension for protection is granted, the Commissioner
issues a certificate attesting to such action, and publishes
notice of the certificate in the ``Gazette.'' Holders of
extension certificates thereafter enjoy protection equal to
that of other owners of registration listed on the Principal
Register of the PTO.
If the International Bureau notifies the PTO of a
cancellation of some or all of the goods and services listed
in the international registration, the Commissioner must
cancel an extension of protection with respect to the same
goods and services as of the date on which the international
registration was canceled. Similarly, if the International
Bureau does not renew an international registration, the
corresponding extension of protection in the United States
shall cease to be valid. Finally, the holder of an
international registration canceled in whole or in part by
the International Bureau may file an application for the
registration of the same mark for any of the goods and
services to which the cancellation applies that were covered
by an extension of protection to the United States based on
that international registration.
The holder of an extension of protection must, within
designated time periods and under certain conditions, file an
affidavit setting forth the relevant goods or services
covered an any explanation as to why their nonuse in commerce
is related to ``special circumstances,'' along with a filing
fee.
The right to an extension of protection may be assigned to
a third party so long as the individual is a national of, or
is domiciled in, or has a ``bona fide'' business located in a
country that is a member of the Protocol; or has such a
business in a country that is a member of an
intergovernmental organization (like the E.U.) belonging to
the Protocol.
An extension of protection conveys the same rights as an
existing registration for the same mark if the extension and
existing registration are owned by the same person, and
extension of protection and the existing registration cover
the same goods or services, and the certificate of extension
is issued after the date of the existing registration.
Section 3. Effective Date
This section states that the effective date of the act
shall commence on the date on which the Madrid Protocol takes
effect in the United States.
______