[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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