[Congressional Record Volume 156, Number 12 (Thursday, January 28, 2010)]
[Senate]
[Pages S349-S351]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




        TRADEMARK TECHNICAL AND CONFORMING AMENDMENT ACT OF 2010

  Mr. REID. I ask unanimous consent that the Senate now proceed to the 
consideration of S. 2968.
  The PRESIDING OFFICER. The clerk will report the bill by title.
  The legislative clerk read as follows:

       A bill (S. 2968) to make certain technical and conforming 
     amendments to the Lanham Act.

  There being no objection, the Senate proceeded to consider the bill.
  Mr. LEAHY. Mr. President, legislation will facilitate trademark 
owners' maintenance of protection for their brands. I appreciate the 
Senate acting swiftly to pass this bill. Trademark protection is 
critical both for businesses that have invested in creating a reliable 
product, and for consumers who trust a ``brand name'' product to be 
safe and of high quality.
  Last Congress, I authored legislation to provide our law enforcement 
community with the tools, resources, and intragovernmental coordination 
necessary to combat intellectual property theft. Theft of intellectual 
property harms our businesses, weakens our economy, and costs jobs. I 
am proud that the legislation, the Prioritizing Resources and 
Organization of Intellectual Property, or PRO-IP, Act, was cosponsored 
by a bipartisan group of 21 Senators, and was signed into law.
  The Senate Judiciary Committee has held numerous hearings in recent 
years on the importance of intellectual property protection. In 2004, 
Burton Snowboards, a successful Vermont business, testified before the 
Judiciary Committee about how small businesses were being harmed by the 
rise in intellectual property theft. I am pleased that this 
administration is taking intellectual property protection seriously, 
and that it recognizes that effective enforcement of our intellectual 
property laws is an important component of our economic recovery.
  The legislation we are introducing today is focused on the process 
for maintaining trademark protection. It is a targeted bill that will 
improve the efficiency of the trademark maintenance system. 
Inefficiencies cost businesses money, which can lead to higher prices 
for consumers and can cost workers their jobs. When Congress has an 
opportunity to take waste out of a government process, it should do so 
on a bipartisan basis. That is what we are doing today. This bill will 
harmonize the system for submitting maintenance filings to the United 
States Patent and Trademark Office, USPTO. Maintenance filings are 
required for continuing the protection of a trademark. Our legislation 
will also permit the Director of the USPTO to permit applicants to 
correct good faith and harmless errors and will make several technical 
amendments within our trademark laws.
  This legislation also requires a study of how the current system can 
better protect small businesses from abuses of the trademark system by 
larger corporations. Congress provides strong enforcement tools to 
intellectual property owners, as we should, to deter infringing 
activity and to remove counterfeit products from the market. I have 
become concerned, however, that large corporations are at times abusing 
the substantial rights Congress has granted them in their intellectual 
property to the detriment of small businesses. In fact, we saw a high-
profile case like this in Vermont last year involving a spurious claim 
against Rock Art Brewery in Morrisville. When a corporation exaggerates 
the scope of its rights far beyond a reasonable interpretation in an 
attempt to bully a small business out of the market, that is wrong. 
This legislation therefore directs the Secretary of Commerce, in 
coordination with the Intellectual Property Enforcement Coordinator, to 
consider options for protecting small businesses from such harassing 
litigation, while ensuring that legitimate trademark infringement 
actions are handled efficiently and expeditiously by the courts.
  This is commonsense legislation, and I thank all Senators for 
supporting it.
  Mr. REID. I ask unanimous consent the bill be read three times and 
passed,

[[Page S350]]

the motion to reconsider be laid on the table with no intervening 
action or debate, and any statements relating to this matter be printed 
in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The bill (S. 2968) was ordered to be engrossed for a third reading, 
was read the third time, and passed, as follows:

                                S. 2968

       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 ``Trademark Technical and 
     Conforming Amendment Act of 2010.''.

     SEC. 2. DEFINITION.

       For purposes of this Act, the term ``Trademark Act of 
     1946'' means 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 
     (commonly referred to as the ``Lanham Act''; 15 U.S.C. 1051 
     et. seq).

     SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS.

       (a) Certificates of Registration.--Section 7 of the 
     Trademark Act of 1946 (15 U.S.C. 1057) is amended--
       (1) by inserting ``United States'' before ``Patent and 
     Trademark Office'' each place that term appears;
       (2) in subsection (b), by striking ``registrant's'' each 
     place that appears and inserting ``owner's'';
       (3) in subsection (e)--
       (A) by striking ``registrant'' each place that term appears 
     and inserting ``owner''; and
       (B) in the third sentence, by striking ``or, if said 
     certificate is lost or destroyed, upon a certified copy 
     thereof''; and
       (4) by amending subsection (g) to read as follows:
       ``(g) Correction of Patent and Trademark Office Mistake.--
     Whenever a material mistake in a registration, incurred 
     through the fault of the United States Patent and Trademark 
     Office, is clearly disclosed by the records of the Office a 
     certificate stating the fact and nature of such mistake shall 
     be issued without charge and recorded and a printed copy 
     thereof shall be attached to each printed copy of the 
     registration and such corrected registration shall thereafter 
     have the same effect as if the same had been originally 
     issued in such corrected form, or in the discretion of the 
     Director a new certificate of registration may be issued 
     without charge. All certificates of correction heretofore 
     issued in accordance with the rules of the United States 
     Patent and Trademark Office and the registrations to which 
     they are attached shall have the same force and effect as if 
     such certificates and their issue had been specifically 
     authorized by statute.''.
       (b) Incontestability of Right to Use Mark Under Certain 
     Conditions.--Section 15 of the Trademark Act of 1946 (15 
     U.S.C. 1065) is amended--
       (1) by striking ``right of the registrant'' and inserting 
     ``right of the owner'';
       (2) by amending paragraph (1) to read as follows:
       ``(1) there has been no final decision adverse to the 
     owner's claim of ownership of such mark for such goods or 
     services, or to the owner's right to register the same or to 
     keep the same on the register; and''; and
       (3) in paragraph (2), by inserting ``United States'' before 
     ``Patent and Trademark Office''.
       (c) Appeal to Courts.--Section 21 of the Trademark Act of 
     1946 (15 U.S.C. 1071) is amended--
       (1) by inserting ``United States'' before ``Patent and 
     Trademark Office'' each place that term appears;
       (2) in subsection (a)(1), by inserting ``or section 71'' 
     after ``section 8''; and
       (3) in subsection (b)(4), by striking ``If there be'' and 
     inserting ``If there are''.
       (d) Conforming Requirements for Affidavits.--
       (1) Duration, affidavits and fees.--Section 8 of the 
     Trademark Act of 1946 (15 U.S.C. 1058) is amended to read as 
     follows:

     ``SEC. 8. DURATION, AFFIDAVITS AND FEES.

       ``(a) Time Periods for Required Affidavits.--Each 
     registration shall remain in force for 10 years, except that 
     the registration of any mark shall be canceled by the 
     Director unless the owner of the registration files in the 
     United States Patent and Trademark Office affidavits that 
     meet the requirements of subsection (b), within the following 
     time periods:
       ``(1) Within the 1-year period immediately preceding the 
     expiration of 6 years following the date of registration 
     under this Act or the date of the publication under section 
     12(c).
       ``(2) Within the 1-year period immediately preceding the 
     expiration of 10 years following the date of registration, 
     and each successive 10-year period following the date of 
     registration.
       ``(3) The owner may file the affidavit required under this 
     section within the 6-month grace period immediately following 
     the expiration of the periods established in paragraphs (1) 
     and (2), together with the fee described in subsection (b) 
     and the additional grace period surcharge prescribed by the 
     Director.
       ``(b) Requirements for Affidavit.--The affidavit referred 
     to in subsection (a) shall--
       ``(1)(A) state that the mark is in use in commerce;
       ``(B) set forth the goods and services recited in the 
     registration on or in connection with which the mark is in 
     use in commerce;
       ``(C) be accompanied by such number of specimens or 
     facsimiles showing current use of the mark in commerce as may 
     be required by the Director; and
       ``(D) be accompanied by the fee prescribed by the Director; 
     or
       ``(2)(A) set forth the goods and services recited in the 
     registration on or in connection with which the mark is not 
     in use in commerce;
       ``(B) include a showing that any nonuse is due to special 
     circumstances which excuse such nonuse and is not due to any 
     intention to abandon the mark; and
       ``(C) be accompanied by the fee prescribed by the Director.
       ``(c) Deficient Affidavit.--If any submission filed within 
     the period set forth in subsection (a) is deficient, 
     including that the affidavit was not filed in the name of the 
     owner of the registration, the deficiency may be corrected 
     after the statutory time period, within the time prescribed 
     after notification of the deficiency. Such submission shall 
     be accompanied by the additional deficiency surcharge 
     prescribed by the Director.
       ``(d) Notice of Requirement.--Special notice of the 
     requirement for such affidavit shall be attached to each 
     certificate of registration and notice of publication under 
     section 12(c).
       ``(e) Notification of Acceptance or Refusal.--The Director 
     shall notify any owner who files any affidavit required by 
     this section of the Director's acceptance or refusal thereof 
     and, in the case of a refusal, the reasons therefor.
       ``(f) Designation of Resident for Service of Process and 
     Notices.--If the owner is not domiciled in the United States, 
     the owner may designate, by a document filed in the United 
     States 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 last designated address, or if the owner does 
     not designate by a document filed in the United States 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 on the Director.''.
       (2) Affidavits and fees.--Section 71 of the Trademark Act 
     of 1946 (15 U.S.C. 1141k) is amended to read as follows:

     ``SEC. 71. DURATION, AFFIDAVITS AND FEES.

       ``(a) Time Periods for Required Affidavits.--Each extension 
     of protection for which a certificate 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 unless the holder of the 
     international registration files in the United States Patent 
     and Trademark Office affidavits that meet the requirements of 
     subsection (b), within the following time periods:
       ``(1) Within the 1-year period immediately preceding the 
     expiration of 6 years following the date of issuance of the 
     certificate of extension of protection.
       ``(2) Within the 1-year period immediately preceding the 
     expiration of 10 years following the date of issuance of the 
     certificate of extension of protection, and each successive 
     10-year period following the date of issuance of the 
     certificate of extension of protection.
       ``(3) The holder may file the affidavit required under this 
     section within a grace period of 6 months after the end of 
     the applicable time period established in paragraph (1) or 
     (2), together with the fee described in subsection (b) and 
     the additional grace period surcharge prescribed by the 
     Director.
       ``(b) Requirements for Affidavit.--The affidavit referred 
     to in subsection (a) shall--
       ``(1)(A) state that the mark is in use in commerce;
       ``(B) set forth the goods and services recited in the 
     extension of protection on or in connection with which the 
     mark is in use in commerce;
       ``(C) be accompanied by such number of specimens or 
     facsimiles showing current use of the mark in commerce as may 
     be required by the Director; and
       ``(D) be accompanied by the fee prescribed by the Director; 
     or
       ``(2)(A) set forth the goods and services recited in the 
     extension of protection on or in connection with which the 
     mark is not in use in commerce;
       ``(B) include a showing that any nonuse is due to special 
     circumstances which excuse such nonuse and is not due to any 
     intention to abandon the mark; and
       ``(C) be accompanied by the fee prescribed by the Director.
       ``(c) Deficient Affidavit.--If any submission filed within 
     the period set forth in subsection (a) is deficient, 
     including that the affidavit was not filed in the name of the 
     holder of the international registration, the deficiency may 
     be corrected after the statutory time period, within the time 
     prescribed after notification of the deficiency. Such 
     submission shall be accompanied by the additional

[[Page S351]]

     deficiency surcharge prescribed by the Director.
       ``(d) Notice of Requirement.--Special notice of the 
     requirement for such affidavit shall be attached to each 
     certificate of extension of protection.
       ``(e) Notification of Acceptance or Refusal.--The Director 
     shall notify the holder of the international registration who 
     files any affidavit required by this section of the 
     Director's acceptance or refusal thereof and, in the case of 
     a refusal, the reasons therefor.
       ``(f) Designation of Resident for Service of Process and 
     Notices.--If the holder of the international registration of 
     the mark is not domiciled in the United States, the holder 
     may designate, by a document filed in the United States 
     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 
     last designated address, or if the holder does not designate 
     by a document filed in the United States 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 on the Director.''.

     SEC. 4. STUDY AND REPORT.

       (a) In General.--Not later than 1 year after the date of 
     enactment of this Act, the Secretary of Commerce, in 
     consultation with the Intellectual Property Enforcement 
     Coordinator, shall study and report to the Committee on the 
     Judiciary of the Senate and the Committee on the Judiciary of 
     the House of Representatives on--
       (1) the extent to which small businesses may be harmed by 
     litigation tactics by corporations attempting to enforce 
     trademark rights beyond a reasonable interpretation of the 
     scope of the rights granted to the trademark owner; and
       (2) the best use of Federal Government services to protect 
     trademarks and prevent counterfeiting.
       (b) Recommendations.--The study and report required under 
     paragraph (1) shall also include any policy recommendations 
     the Secretary of Commerce and the Intellectual Property 
     Enforcement Coordinator deem appropriate.

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