Congressional Record, Volume 156 Issue 29 (Wednesday, March 3, 2010)

[Congressional Record Volume 156, Number 29 (Wednesday, March 3, 2010)]
[House]
[Pages H1079-H1081]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

TRADEMARK TECHNICAL AND CONFORMING AMENDMENT ACT OF 2010

Mr. JOHNSON of Georgia. Mr. Speaker, I move to suspend the rules and
pass the bill (S. 2968) to make certain technical and conforming
amendments to the Lanham Act.
The Clerk read the title of the bill.
The text of the bill is 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

[[Page H1080]]

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 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.

The SPEAKER pro tempore. Pursuant to the rule, the gentleman from
Georgia (Mr. Johnson) and the gentleman from North Carolina (Mr. Coble)
each will control 20 minutes.
The Chair recognizes the gentleman from Georgia.

General Leave

Mr. JOHNSON of Georgia. Mr. Speaker, I ask unanimous consent that all
Members have 5 legislative days to revise and extend their remarks and
include extraneous material on the bill under consideration.
The SPEAKER pro tempore. Is there objection to the request of the
gentleman from Georgia?
There was no objection.
Mr. JOHNSON of Georgia. Mr. Speaker, I yield myself such time as I
may consume.
Mr. Speaker, today we seek to correct a technical and unintentional
mistake in the trademark laws that could result in inadvertent
abandonment for trademark owners who registered under our international
agreement on trademarks, which is called the Madrid Protocol.
At the expiration of their trademark registration term, trademark
owners are required to submit affidavits to the United States Patent
and Trademark Office stating that they have continuously met the
statutory requirements of use in commerce or, alternatively, excusable
nonuse.

{time} 1815

Such affidavits are essential to maintain current trademark
registrations and to clear the register of inactive trademarks.
However, due to a technical mistake in the Lanham Act, our trademark
laws unintentionally prevent trademark owners who file these affidavits
for registering extensions under the Madrid Protocol from having the
same rights as other U.S. trademark owners. Compliance with regulations
should not reduce the rights of trademark owners. Today, we will
harmonize our laws with the Madrid Protocol so that this particular
injustice no longer occurs.
Additionally, this legislation gives the Director of the USPTO
discretion to allow applicants to correct good-faith and harmless
errors that otherwise would have severe and unreasonable intellectual
property ramifications. The Intellectual Property Organization and the
American Intellectual Property Law Association both support this
legislation. In their letter in support of this bill, the American
Intellectual Property Law Association stated that this bill is, ``a
highly desirable amendment to the Trademark Act,'' and refers to this
legislation as a

[[Page H1081]]

``cure'' for specific technical inconsistencies for trademark owners.
However, the bill is not perfect. It includes a study provision
regarding alleged trademark lawsuit abuse and small businesses. While
we don't want to delay the necessary relief to the trademark owner that
this bill will provide by immediate passage of S. 2968, the ranking
member and I are committed to working with Senator Leahy to refine the
text of this study provision at our soonest opportunity.
It is time to finally give our trademark owners who register under
the Madrid Protocol the rights they should have had originally. This
legislative update accomplishes just that, and bolsters the rights of
all U.S. trademark owners.
I reserve the balance of my time.
Mr. COBLE. Mr. Speaker, I rise in support of S. 2968, and recognize
myself for such time as I may consume.
This legislation, Mr. Speaker, makes technical but important
revisions to the Madrid Protocol Implementation Act, which Congress
passed in 2002. The Act is one of the most significant legislative
accomplishments in the trademark realm in the past 15 years.
By way of background, the United States is a signatory to the Madrid
Protocol, an international treaty that allows a trademark owner to seek
registration in any of the countries that joined the Protocol. This
means an American trademark owner pays the Patent and Trademark Office
in Alexandria, Virginia, a nominal fee to expedite the necessary
paperwork overseas. This process makes it easier and less expensive for
U.S. trademark owners to acquire protection for their intellectual
property in other countries.
The 2002 Act that implements the Protocol has functioned well through
the years, but must be updated. The main purpose of the bill is to
bring provisions for maintaining extensions of protection under Madrid
in conformity with provisions for maintaining registrations.
Maintenance filings with the PTO by the trademark owner are necessary
to perpetuate protection on the trademark. This bill also authorizes
the PTO Director to permit applicants to correct good-faith and
harmless errors.
Finally, Mr. Speaker, the legislation includes a study provision that
was inserted at the behest of the other body. It directs the
Intellectual Property Enforcement Coordinator and the Department of
Commerce to evaluate and report on treatment of smaller businesses
involved in trademark litigation. Along with Chairman Conyers and the
chairman of the subcommittee, the distinguished gentleman from Georgia,
I believe the study text could be clarified further. I'm happy to
report that Senator Leahy has agreed to work with us on making the
necessary minor revisions to improve the language. We intend to move
this language at a later date on a different vehicle. We just don't
want to delay further consideration of S. 2968 by requiring the other
body to pass the bill for a second time.
In closing, I urge the Members to support S. 2968.
I yield back the balance of my time.
Mr. JOHNSON of Georgia. Mr. Speaker, I yield back the balance of my
time.
The SPEAKER pro tempore. The question is on the motion offered by the
gentleman from Georgia (Mr. Johnson) that the House suspend the rules
and pass the bill, S. 2968.
The question was taken; and (two-thirds being in the affirmative) the
rules were suspended and the bill was passed.
A motion to reconsider was laid on the table.

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