[Congressional Record Volume 150, Number 108 (Monday, September 13, 2004)]
[Senate]
[Pages S9140-S9141]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. CRAIG (for himself and Mr. Durbin):
  S. 2796. A bill to clarify that service marks, collective marks, and 
certification marks are entitled to the same protections, rights, and 
privileges of trademarks; to the Committee on the Judiciary.
  Mr. CRAIG. Mr. President, today Senator Durbin and I are introducing 
legislation strengthening current law concerning certification marks, 
collective marks, and service marks.
  While some of our colleagues may not recognize these terms, I doubt 
there is any Senator who has not come into contact with one of these 
marks. For example, if you bought the best baking potatoes in the 
world, you are familiar with the ``Grown in Idaho '' or ``Idaho 
Potatoes '' certification mark. Perhaps you know the certification 
mark ``UL,'' which stands for Underwriters Laboratory and signifies 
that an electrical product meets certain safety standards. If you watch 
network television and have seen the CBS ``eye,'' you have seen a 
service mark. The union labels on many products are collective marks.
  To explain the differences among these marks: service marks are 
words, names, symbols, or characters that distinguish the mark holder's 
services, while trademarks distinguish the mark holder's goods. 
Collective marks are trademarks that are used by organization or 
association to identify goods or services produced by members of a 
group. The certification mark is a trade or service mark used to 
certify characteristics about a product or service; it may indicate 
that the product or service originates in a specific geographic region, 
or meets certain standards of quality or mode of manufacture, or the 
work that went into it was performed by members of an organization.
  While they are somewhat different, these marks all serve the same 
purpose--that is, they enable the public to distinguish among products 
and services and prevent consumers from being deceived by similar 
brands. Congress

[[Page S9141]]

determined that marks would serve the public interest by enhancing 
product quality and safety, and provided legal protection to these 
marks under the Lanham Act. The federal law protects all four kinds of 
marks equally; specifically, 15 U.S.C. Sec. 1503 and 15 U.S.C. 
Sec. 1504 provide that service marks, collective marks, and 
certification marks ``shall be entitled to the protection provided'' to 
trademarks, except where Congress provides otherwise by statute.
  The principle of equal treatment also applies to ``no challenge'' 
provisions in license agreements for the use of a trademark, service 
mark, collective mark, or certification mark. It is common for such 
agreements to include provisions under which licensees acknowledge the 
validity of and agree not to challenge the marks. By protecting the 
validity of the marks, these provisions reduce potential litigation 
costs for mark owners and protect the investment made by licensees. A 
long line of cases has upheld ``no challenge'' provisions in trademark 
licenses and dismissed validity challenges.
  Unfortunately, the clarity of the Lanham Act on these points has been 
confused by a recent decision of the Second Circuit Court of Appeals in 
the case of Idaho Potato Commission v. M&M Produce Farm and Sales. That 
decision interpreted the Lanham Act as requiring that certification 
marks should be treated differently from trademarks with respect to 
``no challenge'' provisions. The court mistakenly likened the public 
policy considerations surrounding certification marks to those 
surrounding patents.
  This decision has raised great consternation among the holders of 
certification marks and their licenses throughout the United States--
more than two dozen of whom joined in an amicus brief challenging the 
court's reasoning. Congress should be equally concerned, because this 
decision has the potential to undermine the Lanham Act and 
the certification mark system itself.

  The legislation we are introducing today would not change current 
law, but would only underscore the policy that Congress clearly 
intended in the first place. We propose to add the words ``rights an 
privileges'' to the two sections of the law that I quoted above, which 
would clarify that registered service marks, collective marks, and 
certification marks are ``entitled to the protections, rights, and 
privileges'' provided to trademarks. While I have learned never to call 
legislation ``simple,'' I would stress that at least our intention is 
simple: to reinstate the original intent of Congress and indicate our 
support of the view that these marks are to be given equal legal 
treatment.
  I invite all my colleagues to review this legislation and consider 
the important public policy interests it would protect. It is not only 
the mark holders and licensees in your State, but all consumers across 
the nation who have a stake in this bill, and I hope the Senate will 
act swiftly to approve it.
  I ask unanimous consent the text of the bill be printed in the 
Record.
  There being no objection, the bill was ordered to be printed in the 
Record, as follows:

                                S. 2796

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

     SECTION 1. PROTECTIONS, RIGHTS, AND PRIVILEGES OF SERVICE 
                   MARKS, COLLECTIVE MARKS, AND CERTIFICATION 
                   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 (commonly referred to 
     as the Trademark Act of 1946) is amended--
       (1) in section 3 (15 U.S.C. 1053) in the first sentence, by 
     striking ``protection'' and inserting ``protections, rights, 
     and privileges''; and
       (2) in section 4 (15 U.S.C. 1054) in the first sentence, by 
     striking ``protection'' and inserting ``protections, rights, 
     and privileges''.

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