[Congressional Record Volume 150, Number 115 (Wednesday, September 22, 2004)]
[Senate]
[Pages S9518-S9519]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                        LANHAM ACT CLARIFICATION

  Mr. CRAIG. Mr. President, I ask unanimous consent to have printed in 
the Record some additional information about the genesis and intent of 
a bill introduced last week, strengthening and clarifying a provision 
of the Lanham Act. Specifically, S. 2796 was introduced to clarify that 
service marks, collective marks, and certification marks are entitled 
to the same protections, rights, privileges of trademarks.
  It is my hope that the Congress will act on this measure in short 
order, and I offer this information to assist my colleagues in 
evaluating the bill.
  There being no objection, the material was ordered to be printed in 
the Record, as follows:

                        Amendments to Lanham Act

                        [Indicated by Brackets]

     Sec. 3 [15 U.S.C. 1053]. Service marks registrable
       Subject to the provisions relating to the registration of 
     trademarks, so far as they are

[[Page S9519]]

     applicable, service marks shall be registrable, in the same 
     manner and with the same effect as are trademarks, and when 
     registered they shall be entitled to the protection[s, rights 
     and privileges] provided in this chapter in the case of 
     trademarks. Applications and procedure under this section 
     shall conform as nearly as practicable to those prescribed 
     for the registration of trademarks.
     Sec. 4 [15 U.S.C. 1054]. Collective marks and certification 
         marks registrable
       Subject to the provisions relating to the registration of 
     trademarks, so far as they are applicable, collective and 
     certification marks, including indications of regional 
     origin, shall be registrable under this chapter, in the same 
     manner and with the same effect as are trademarks, by 
     persons, and nations. States, municipalities, and the like, 
     exercising legitimate control over the use of the marks 
     sought to be registered, even though not possessing an 
     industrial or commercial establishment, and when registered 
     they shall be entitled to the protection[s, rights and 
     privileges] provided in this chapter in the case of 
     trademarks, except in the case of certification marks when 
     used so as to represent falsely that the owner or a user 
     thereof makes or sells the goods or performs the services on 
     or in connection with which such mark is used. Applications 
     and procedure under this section shall conform as nearly as 
     practicable to those prescribed for the registration of 
     trademarks.


                      background and justification

       Section 4 of the Lanham Act, 15 U.S.C. Sec. 1054, states 
     that certification marks and collective marks ``shall be 
     entitled to the protection provided'' to trademarks. This 
     section expresses the congressional intention that all 
     certification marks and collective marks be treated with 
     equivalent rights and protections to trademarks, except where 
     Congress, by statute, has expressly provided otherwise.
       It is common in trademark, service mark, collective mark 
     and certification mark licenses to include provisions under 
     which licensees acknowledge the validity of an agree not to 
     challenge the marks. These ``no challenge'' provisions play 
     an important role in protecting the marks, reducing mark 
     owners' litigation costs, and providing assurances to 
     licensees that the marks they are investing in will have 
     continued validity. After applying principles of equity, many 
     courts have upheld such ``no challenge'' provisions in 
     trademark licenses and dismissed validity challenges.
       Recently, the Second Circuit Court of Appeals in the case 
     of Idaho Potato Commission v. M & M Produce Farm and Sales, 
     335 F.3d 130 (2d Cir. 2003), interpreted the Lanham Act as 
     requiring that certification marks be treated differently 
     from trademarks with respect to ``no challenge'' provisions. 
     The court reasoned that the public policy underlying 
     certification marks was more analogous to the public policy 
     underlying patents. As a result, the court ruled that 
     licensee certification mark no challenge provisions are 
     governed by the Supreme Court's decision in Lear, Inc v. 
     Adkins, 395 U.S. 653 (1969). The Second Circuit's decision 
     appears to have gone beyond congressional intent relating to 
     certification marks. Certification marks have none of the 
     preclusive effects of patents. Rather, the competitive 
     effects of certification marks are the same as trademarks. 
     Certification marks guard the public from deception and 
     protect mark owners' and their licensees' investments. Like 
     trademarks, certification marks provide information vital to 
     consumers' purchasing decisions. Certification marks help 
     consumers identify goods and services that have the quality 
     and safety features they want.
       It is important to remove any perceived distinction between 
     certification marks and collective marks as compared to 
     trademarks, except as expressly provided otherwise by 
     statute. Therefore, this bill clarifies Congress, original 
     intentions regarding the treatment of certification marks and 
     collective marks through this amendment to Section 4 of the 
     Act. Licenses governing certification marks, and the 
     provisions contained in such licenses, should be treated no 
     less favorably than licenses for trademarks and other marks. 
     ``No challenge'' provisions, and other non-quality related 
     provisions in certification mark licenses or agreements are 
     to be accorded the same respect and treatment, and are to be 
     the subject to the same principles of equity, as like 
     provisions in trademark licenses and agreements. While 
     nothing in this revision to the Lanham Act should be read as 
     impairing a court's ability to apply existing principles of 
     equity, where their application is appropriate, such 
     licensing provisions are essential to preserving the public 
     benefits of such marks without increasing the litigation and 
     other transactional costs for certification mark owners. 
     Similarly, certification and collective mark owners have the 
     same remedies for infringement of their marks that are 
     available to trademark owners.
       Section 3 of the Lanham Act, 15 U.S.C. Sec. 1053, is 
     amended in the same manner as Section 4 to maintain the 
     parallel language of the two sections and to evidence 
     congressional intent that all four marks protected by the 
     Lanham Act are to be accorded the same rights and protections 
     except as specifically provided by statute.

                          ____________________