[Congressional Record Volume 147, Number 24 (Tuesday, February 27, 2001)]
[Senate]
[Pages S1634-S1638]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. LEAHY (for himself and Mr. Hatch):
  S. 407. 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.
  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. I have 
introduced identical bills in the last two Congresses, but the Senate 
unfortunately did not consider those bills. Chairman Hatch has joined 
me in introducing this legislation, and I thank him for his leadership 
on this and other intellectual property matters of such critical 
importance to the economy and industry of our country.
  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.
  Over the past few years, Senator Hatch and I have worked together 
successfully on a number of initiatives to bolster trademark protection 
and keep our trademark laws up-to-date. For example, in the 104th 
Congress, we supported the Federal Trademark Dilution Act of 1995, 
enacted 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. In the 105th 
Congress, we introduced legislation, S. 2193, 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.
  Also, in the 105th Congress, I introduced S. 1727 to authorize 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

[[Page S1635]]

the Next Generation Internet Research Act, S. 1609, which was signed 
into law on October 28, 1998.
  In the 106th Congress, Senator Hatch and I worked together for 
enactment of the Anticybersquatting Consumer Protection Act, which 
protects against the registration, in bad faith with intent to profit, 
as a domain name of another person's trademark or the name of a living 
person. This bill was passed as part of the FY 2000 Omnibus 
Appropriations bill on November 29, 1999.
  Also in the 106th Congress, we worked to pass the Trademark 
Amendments Act, which enhanced protection for trademark owners and 
consumers by making it possible to prevent trademark dilution before it 
occurs, by clarifying the remedies available under the Federal 
trademark dilution statute, by providing recourse against the Federal 
Government for its infringement of others' trademarks, and by creating 
greater certainty and uniformity in the area of trade dress protection. 
The bill passed the Senate on July 1, 1999, and was enacted on August 
5, 1999.
  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 with Senator Hatch would ease the 
trademark registration burden on small and medium-sized businesses by 
enabling them 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 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.
  I first introduced the Madrid Protocol Implementation Act in the 
105th Congress as S. 2191, then again in the 106th Congress as S. 671. 
The Judiciary Committee reported S. 671 favorably and unanimously, on 
February 10, 2000. In the House of Representatives, Congressmen Coble 
and Berman sponsored and passed an identical bill, H.R. 769, on April 
13, 1999.
  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.
  Another stumbling block to the United States joining the Protocol was 
resolved last year. Specifically, the European Community, EC, had taken 
the position that under the Protocol, the EC, as an intergovernmental 
member of the Protocol, received a separate vote in the Assembly 
established by the agreement in addition to the votes of its member 
states. The State Department opposed this position as a contravention 
of the democratic concept of one-vote-per-country.
  On February 2, 2000, the Assembly of the Madrid Protocol expressed 
its intent ``to use their voting rights in such a way as to ensure that 
the number of votes cast by the European Community and its member 
States does not exceed the number of the European Community's Member 
States.'' In short, this letter appeared to resolve differences between 
the Administration and the European Community, EC, regarding the voting 
rights of intergovernmental members of the Protocol in the Assembly 
established by the agreement.
  Shortly after this letter was forwarded by the Assembly, I wrote to 
then Secretary of State Madeleine Albright requesting information on 
the Administration's position in light of the resolution of the voting 
dispute. At a hearing of the Foreign Operations Subcommittee on April 
14, 2000, I further inquired of Secretary Albright about the progress 
the Administration was making on this matter, particularly in light of 
the fact that differences over the voting rights of the European Union 
and participation of intergovernmental organizations in this 
intellectual property treaty were resolved in accordance with the U.S. 
position.
  Subsequently, President Clinton transmitted Treaty Document 106-41, 
the Protocol Relating to the Madrid Agreement to the Senate for 
ratification on September 5, 2000. Shortly after transmittal, on 
September 13, 2000, the Foreign Relations Committee held a hearing to 
consider Protocol. Unfortunately, no further action was taken on the 
Protocol or the implementing legislation before the Congress adjourned.
  United States membership in the Protocol would greatly enhance the 
ability of any U.S. business, whether large or small, to protect its 
trademarks in other countries more quickly, cheaply and easily. That, 
in turn, will make it easier for American businesses to enter foreign 
markets and to protect their trademarks in those markets. The Protocol 
would not require substantive changes to American trademark law, but 
merely to certain procedures for registering trademarks. Passage of 
this implementing legislation will help to ensure timely accession to 
and implementation of the Madrid Protocol, and it will send a clear 
signal to the international community, U.S. businesses, and trademark 
owners that Congress is serious about our Nation becoming part of a 
low-cost, efficient system to promote the international registration of 
marks. I look forward to working with Senator Hatch and my other 
colleagues for ratification of the Protocol and passage of the 
implementing legislation.
  I ask unanimous consent that a copy of the bill and the sectional 
analysis be placed in the RECORD after my statement, as well as any 
additional statements regarding this bill.
  There being no objection, the material was ordered to be printed in 
the Record, as follows:

                                 S. 407

       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 trademarks 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 and following) (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 himself or 
     herself, or the firm, corporation, or association in whose 
     behalf he or she makes the declaration, to be entitled to use 
     the mark in commerce; and

[[Page S1636]]

       ``(C) no other person, firm, corporation, or association, 
     to the best of his or her 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 
     Director.

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

       ``Upon the filing of an application for international 
     registration and payment of the prescribed fees, the Director 
     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 Director 
     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 Director 
     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 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 Director.

     ``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 pursuant to 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 Director 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 Director 
     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 Director 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.

[[Page S1637]]

       ``(2) If the Director has sent a notification of the 
     possibility of opposition under paragraph (1)(C), the 
     Director 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 Director 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 Director 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 Director.

     ``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 Director 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 Director 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 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 pursuant to 
     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 Director--
       ``(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 Director, 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 Director; 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 Director, 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 Director; 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 Director.
       ``(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 
     Director 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 Director is charged with the duty of 
     transmitting the application to the WIPO International 
     Bureau.
       The Director 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 Director 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 Director notifies the 
     International Bureau of such action and sets forth the 
     reason(s) why. The Director must also apprise

[[Page S1638]]

     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 Director 
     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 Director 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.
  Mr. HATCH. Mr. President, today I am pleased to introduce with my 
distinguished colleague, Senator Leahy, legislation that will, for the 
first time, enable American businesses to obtain international 
trademark protection with the filing of a single application and the 
payment of a single fee.
  For many businesses, a company's trademark is its most valuable 
asset. This is illustrated now as never before in the growth of the new 
Internet economy, where so-called ``branding'' is the name of the game 
and the cornerstone of any business plan. Whether a business is an e-
business or a more traditional Main Street storefront, United States 
trademark law has proven to be a powerful tool for these businesses in 
protecting their marks against domestic misappropriation. However, as 
global trading increases and multinational businesses grow, worldwide 
trademark protection is becoming extremely important and desirable. 
Unfortunately, achieving similar protection on an international scale 
has always been a much more difficult task. This difficulty stems in 
large part from the diversity among national trademark laws, as well as 
the sometimes prohibitive costs of filing individual registrations and 
seeking foreign representation in each and every country for which 
trademark protection is sought. As a result, American businesses, and 
small businesses in particular, are often forced to pick only a handful 
of countries in which to seek protection for their brand names and hope 
for the best in the rest of the world.
  In the past, Senator Leahy and I have sponsored a number of bills 
addressing the international protection of intellectual property. In 
the trademark arena, we strongly supported legislation implementing the 
Trademark Law Treaty. That treaty serves to streamline the trademark 
registration process in member countries around the world and to 
minimize the hurdles faced by American trademark owners in securing 
international protection of their marks. The legislation we introduce 
today will build upon those improvements by allowing trademark owners 
to seek international protection with a single application filed in the 
English language with the United States Patent and Trademark Office, 
USPTO, and with the payment of a single fee. Most important, it paves 
the way for the USPTO to act as a one-stop shop for international 
trademark protection without making substantive changes to United 
States trademark law. Foreign trademark owners must still meet all of 
the substantive requirements of United States trademark law in order to 
gain protection in the United States based on an international 
application filed under the Madrid Protocol. In short, it is a win-win 
situation for American trademark owners.
  As my colleagues here know, United States adherence to the Madrid 
Protocol was stalled for years over administrative provisions--
unrelated to the substance of the Protocol itself--relating to voting 
rights. Since 1994, the Administration voiced objections to these 
provisions, which would allow an intergovernmental organization, e.g., 
the European Union, a vote in certain treaty matters taken before the 
Assembly, separate and apart from the votes of its member states. 
Although matters before the Assembly would largely be limited to 
administrative matters, e.g., those involving formalities and fee 
changes, the concern expressed has been that these provisions, which 
appear to violate the democratic principle of one vote for each state, 
would create an undesirable precedent in future international 
agreements.
  While this stumbling block to United States accession to the Protocol 
has been the subject of much negotiation between the United States and 
the European Union, I am pleased that a successful resolution on this 
issue of voting rights has been reached, and I was pleased that the 
Senate finally received the Administration's request for its advice and 
consent last year. By passing The Madrid Protocol Implementation Act, 
we will take an important step in making sure that American trademark 
owners will be able to take full advantage of the benefits of the 
Protocol as soon as it comes into force with respect to the United 
States. This is a particularly important measure for American 
competitiveness, and for the individual businesses in each of our 
states. I want to thank Senator Leahy for his leadership with respect 
to this legislation, and I look forward to my colleagues' support for 
it.
                                 ______