[House Report 105-194]
[From the U.S. Government Publishing Office]



105th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES

 1st Session                                                    105-194
_______________________________________________________________________


 
                TRADEMARK LAW TREATY IMPLEMENTATION ACT

_______________________________________________________________________


 July 21, 1997.--Committed to the Committee of the Whole House on the 
              State of the Union and ordered to be printed

                                _______
                                

Mr. Coble, from the Committee on the Judiciary, submitted the following

                              R E P O R T

                        [To accompany H.R. 1661]

      [Including cost estimate of the Congressional Budget Office]

    The Committee on the Judiciary, to whom was referred the 
bill (H.R. 1661) to implement the provisions of the Trademark 
Law Treaty, having considered the same, reports favorably 
thereon with an amendment and recommends that the bill as 
amended do pass.

                           TABLE OF CONTENTS

                                                                  

                                                                 Page
Purpose and Summary........................................           5
Background and Need for the Legislation....................           6
Hearings...................................................           7
Committee Consideration....................................           7
Vote of the Committee......................................           7
Committee Oversight Findings...............................           7
Committee on Government Reform and Oversight Findings......           7
New Budget Authority and Tax Expenditures..................           7
Congressional Budget Office Cost Estimate..................           8
Constitutional Authority Statement.........................           9
Section-by-Section Analysis and Discussion.................           9
Changes in Existing Law Made by the Bill, as Reported......          23

    The amendment is as follows:
    Strike out all after the enacting clause and insert in lieu 
thereof the following:

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Trademark Law Treaty Implementation 
Act''.

SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

    For purposes of this Act, 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 (15 U.S.C. 1051 et seq.), shall 
be referred to as the ``Trademark Act of 1946''.

SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.

    (a) Application for Use of Trademark.--Section 1(a) of the 
Trademark Act of 1946 (15 U.S.C. 1051(a)) is amended to read as 
follows:
    ``Section 1. (a)(1) The owner of a trademark used in commerce may 
request registration of its trademark on the principal register hereby 
established by paying the prescribed fee and filing in the Patent and 
Trademark Office an application and a verified statement, in such form 
as may be prescribed by the Commissioner, and such number of specimens 
or facsimiles of the mark as used as may be required by the 
Commissioner.
    ``(2) The application shall include specification of the 
applicant's domicile and citizenship, the date of the applicant's first 
use of the mark, the date of the applicant's first use of the mark in 
commerce, the goods in connection with which the mark is used, and a 
drawing of the mark.
    ``(3) The statement shall be verified by the applicant and specify 
that--
            ``(A) the person making the verification believes that he 
        or she, or the juristic person in whose behalf he or she makes 
        the verification, to be the owner of the mark sought to be 
        registered;
            ``(B) to the best of the verifier's knowledge and belief, 
        the facts recited in the application are accurate;
            ``(C) the mark is in use in commerce; and
            ``(D) to the best of the verifier's knowledge and belief, 
        no other person has the right to use such mark in commerce 
        either in the identical form thereof or in such near 
        resemblance thereto as to be likely, when used on or in 
        connection with the goods of such other person, to cause 
        confusion, or to cause mistake, or to deceive, except that, in 
        the case of every application claiming concurrent use, the 
        applicant shall--
                    ``(i) state exceptions to the claim of exclusive 
                use; and
                    ``(ii) shall specify, to the extent of the 
                verifier's knowledge--
                            ``(I) any concurrent use by others;
                            ``(II) the goods on or in connection with 
                        which and the areas in which each concurrent 
                        use exists;
                            ``(III) the periods of each use; and
                            ``(IV) the goods and area for which the 
                        applicant desires registration.
    ``(4) The applicant shall comply with such rules or regulations as 
may be prescribed by the Commissioner. The Commissioner shall 
promulgate rules prescribing the requirements for the application and 
for obtaining a filing date herein.''.
    (b) Application for Bona Fide Intention To Use Trademark.--
Subsection (b) of section 1 of the Trademark Act of 1946 (15 U.S.C. 
1051(b)) is amended to read as follows:
    ``(b)(1) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a trademark 
in commerce may request registration of its trademark on the principal 
register hereby established by paying the prescribed fee and filing in 
the Patent and Trademark Office an application and a verified 
statement, in such form as may be prescribed by the Commissioner.
    ``(2) The application shall include specification of the 
applicant's domicile and citizenship, the goods in connection with 
which the applicant has a bona fide intention to use the mark, and a 
drawing of the mark.
    ``(3) The statement shall be verified by the applicant and 
specify--
            ``(A) that the person making the verification believes that 
        he or she, or the juristic person in whose behalf he or she 
        makes the verification, to be entitled to use the mark in 
        commerce;
            ``(B) the applicant's bona fide intention to use the mark 
        in commerce;
            ``(C) that, to the best of the verifier's knowledge and 
        belief, the facts recited in the application are accurate; and
            ``(D) that, to the best of the verifier's knowledge and 
        belief, no other person has the right to use such mark in 
        commerce either in the identical form thereof or in such near 
        resemblance thereto as to be likely, when used on or in 
        connection with the goods of such other person, to cause 
        confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 44, no mark shall be 
registered until the applicant has met the requirements of subsections 
(c) and (d) of this section.
    ``(4) The applicant shall comply with such rules or regulations as 
may be prescribed by the Commissioner. The Commissioner shall 
promulgate rules prescribing the requirements for the application and 
for obtaining a filing date herein.''.
    (c) Consequence of Delays.--Paragraph (4) of section 1(d) of the 
Trademark Act of 1946 (15 U.S.C. 1051(d)(4)) is amended to read as 
follows:
    ``(4) The failure to timely file a verified statement of use under 
paragraph (1) or an extension request under paragraph (2) shall result 
in abandonment of the application, unless it can be shown to the 
satisfaction of the Commissioner that the delay in responding was 
unintentional, in which case the time for filing may be extended, but 
for a period not to exceed the period specified in paragraphs (1) and 
(2) for filing a statement of use.''.

SEC. 4. REVIVAL OF ABANDONED APPLICATION.

    Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 1062(b)) is 
amended in the last sentence by striking ``unavoidable'' and by 
inserting ``unintentional''.

SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT OF CONTINUED 
                    USE; NOTICE OF COMMISSIONER'S ACTION.

    Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is amended 
to read as follows:
                               ``duration
    ``Sec. 8. (a) Each registration shall remain in force for 10 years, 
except that the registration of any mark shall be canceled by the 
Commissioner for failure to comply with the provisions of subsection 
(b) of this section, upon the expiration of the following time periods, 
as applicable:
            ``(1) For registrations issued pursuant to the provisions 
        of this Act, at the end of 6 years following the date of 
        registration.
            ``(2) For registrations published under the provisions of 
        section 12(c), at the end of 6 years following the date of 
        publication under such section.
            ``(3) For all registrations, at the end of each successive 
        10-year period following the date of registration.
    ``(b) During the 1-year period immediately preceding the end of the 
applicable time period set forth in subsection (a), the owner of the 
registration shall pay the prescribed fee and file in the Patent and 
Trademark Office--
            ``(1) an affidavit setting forth those goods or services 
        recited in the registration on or in connection with which the 
        mark is in use in commerce and such number of specimens or 
        facsimiles showing current use of the mark as may be required 
        by the Commissioner; or
            ``(2) an affidavit setting forth those goods or services 
        recited in the registration on or in connection with which the 
        mark is not in use in commerce and showing that any such nonuse 
        is due to special circumstances which excuse such nonuse and is 
        not due to any intention to abandon the mark.
    ``(c) The owner of the registration may make the submissions 
required by this section, or correct any deficiency in a timely filed 
submission, within a grace period of 6 months after the end of the 
applicable time period set forth in subsection (a). Such submission 
must be accompanied by a surcharge prescribed therefor. If any 
submission required by this section filed during the grace period is 
deficient, the deficiency may be corrected within the time prescribed 
after notification of the deficiency. Such submission must be 
accompanied by a surcharge prescribed therefor.
    ``(d) Special notice of the requirement for affidavits under this 
section shall be attached to each certificate of registration and 
notice of publication under section 12(c).
    ``(e) The Commissioner shall notify any owner who files 1 of the 
affidavits required by this section of the Commissioner's acceptance or 
refusal thereof and, in the case of a refusal, the reasons therefor.
    ``(f) If the registrant is not domiciled in the United States, the 
registrant shall designate by a written document filed in the Patent 
and Trademark Office the name and address of some 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 address given in the last designation, such notice or process may 
be served upon the Commissioner.''.

SEC. 6. RENEWAL OF REGISTRATION.

    Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended 
to read as follows:
                       ``renewal of registration
    ``Sec. 9. (a) Subject to the provisions of section 8, each 
registration may be renewed for periods of 10 years at the end of each 
successive 10-year period following the date of registration upon 
payment of the prescribed fee and the filing of a written application, 
in such form as may be prescribed by the Commissioner. Such application 
may be made at any time within 1 year before the end of each successive 
10-year period for which the registration was issued or renewed, or it 
may be made within a grace period of 6 months after the end of each 
successive 10-year period, upon payment of a fee and surcharge 
prescribed therefor. If any application filed during the grace period 
is deficient, the deficiency may be corrected within the time 
prescribed after notification of the deficiency, upon payment of a 
surcharge prescribed therefor.
    ``(b) If the Commissioner refuses to renew the registration, the 
Commissioner shall notify the registrant of the Commissioner's refusal 
and the reasons therefor.
    ``(c) If the registrant is not domiciled in the United States, the 
registrant shall designate by a written document filed in the Patent 
and Trademark Office the name and address of some 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 address given in the last designation, such notice or process may 
be served upon the Commissioner.''.

SEC. 7. RECORDING ASSIGNMENT OF MARK.

    Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is amended 
to read as follows:
                              ``assignment
    ``Sec. 10. (a) A registered mark or a mark for which an application 
to register has been filed shall be assignable with the good will of 
the business in which the mark is used, or with that part of the good 
will of the business connected with the use of and symbolized by the 
mark. Notwithstanding the preceding sentence, no application to 
register a mark under section 1(b) shall be assignable prior to the 
filing of an amendment under section 1(c) to bring the application into 
conformity with section 1(a) or the filing of the verified statement of 
use under section 1(d), except for an assignment to a successor to the 
business of the applicant, or portion thereof, to which the mark 
pertains, if that business is ongoing and existing. In any assignment 
authorized by this section, it shall not be necessary to include the 
good will of the business connected with the use of and symbolized by 
any other mark used in the business or by the name or style under which 
the business is conducted. Assignments shall be by instruments in 
writing duly executed. Acknowledgment shall be prima facie evidence of 
the execution of an assignment, and when the prescribed information 
reporting the assignment is recorded in the Patent and Trademark 
Office, the record shall be prima facie evidence of execution. An 
assignment shall be void against any subsequent purchaser for valuable 
consideration without notice, unless the prescribed information 
reporting the assignment is recorded in the Patent and Trademark Office 
within 3 months after the date of the subsequent purchase or prior to 
the subsequent purchase. The Patent and Trademark Office shall maintain 
a record of information on assignments, in such form as may be 
prescribed by the Commissioner.
    ``(b) An assignee not domiciled in the United States shall 
designate by a written document filed in the Patent and Trademark 
Office the name and address of some 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 address 
given in the last designation, such notice or process may be served 
upon the Commissioner.''.

SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REGISTRATION.

    Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is 
amended--
            (1) in subsection (d)--
                    (A) by striking ``23, or 44(e) of this Act'' and 
                inserting ``or 23 of this Act or under subsection (e) 
                of this section''; and
                    (B) in paragraphs (3) and (4), by striking ``this 
                subsection (d)'' and inserting ``this subsection''; and
            (2) in subsection (e), by striking the second sentence and 
        inserting the following: ``Such applicant shall submit, within 
        such time period as may be prescribed by the Commissioner, a 
        certification or a certified copy of the registration in the 
        country of origin of the applicant.''.

SEC. 9. MISCELLANEOUS AMENDMENTS.

    (a) Cancellation of Functional Marks.--Section 14(3) of the 
Trademark Act of 1946 (15 U.S.C. 1064(3)) is amended by inserting ``or 
is functional,'' before ``or has been abandoned''.
    (b) Incontestability Defenses.--Section 33(b) of the Trademark Act 
of 1946 (15 U.S.C. 1115(b)) is amended--
            (1) by redesignating paragraph (8) as paragraph (9); and
            (2) by inserting after paragraph (7) the following:
    ``(8) That the mark is functional; or''.

SEC. 10. TRANSITION PROVISIONS.

    (a) Registrations in 20-Year Term.--The provisions of section 8(a) 
of the Trademark Act of 1946, as amended by section 5 of this Act, 
shall apply to a registration for trademark issued or renewed for a 20-
year term, and existing on the effective date of this Act, on and after 
the date that is 1 year before the date on which the 20-year term 
expires.
    (b) Applications for Registration.--This Act and the amendments 
made by this Act shall apply to any application for registration of a 
trademark pending on, or filed on or after, the effective date of this 
Act.
    (c) Affidavits.--The provisions of section 8(b) of the Trademark 
Act of 1946, as amended by section 5 of this Act, shall apply to the 
filing of an affidavit if the sixth anniversary of the registration, or 
publication under section 12(c) of the Trademark Act of 1946, for which 
the affidavit is filed is on or after the effective date of this Act.
    (d) Renewal Applications.--The amendment made by section 6 shall 
apply to the filing of an application for renewal of a registration if 
the expiration date of the registration for which the renewal 
application is filed is on or after the effective date of this Act.

SEC. 11. EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect--
            (1) on the date that is 1 year after the date of the 
        enactment of this Act, or
            (2) upon the entry into force of the Trademark Law Treaty 
        with respect to the United States,
whichever occurs first.

                          Purpose and Summary

    The Trademark Law Treaty (``TLT'') harmonizes procedures of 
national trademark offices by establishing maximum requirements 
a ``contracting party'' (member state or intergovernmental 
organization) can impose for trademark applications or for 
granting filing dates. The treaty also eliminates many formal 
requirements governing renewals, recordation of assignments, 
changes of names or addresses, powers of attorney, drawings, 
signatures, and the like. A key feature of the TLT is the 
elimination of the legalization of signatures on documents, 
except in the case of a surrender of registration. Other 
important TLT provisions improve the treatment of multi-class 
and divisional applications.
    For the most part, H.R. 1661 does not change U.S. domestic 
substantive law. Rather, under the treaty, and like the United 
States, other countries must provide for 10-year periods of 
protection and renewal (no more, and no less) in international 
applications. This reform is consistent with a trend in the 
international trademark community. In addition, countries must 
provide for service mark registration. Again, this obligation 
dovetails with an ongoing trend, and is otherwise imposed on 
all members of the World Trade Organization (WTO).
    Amendments are made to sections 1, 8, 9, 10, 12 and 44 of 
Title 15 of the U.S. Code, which update the ``Lanham Act.''
    Section 1, which concerns the requirements for a complete 
trademark application, is amended as follows:
    The application and verification will be separate. The 
application may be signed by the applicant or its attorney. The 
verification must be signed by the applicant. The application 
must be accompanied by the verification.
    The Commissioner is given the authority, to set by 
regulation, the requirements for receiving a filing date.
    An intent-to-use application which is abandoned after the 
Notice of Allowance issues, may be revived on a claim of 
``unintentional'' abandonment. The Commissioner may set the 
rules, e.g., time limits, for the filing of such a claim.
    Section 10, which concerns the recording of assignments, is 
amended to allow the assignment of an intent-to-use application 
after an amendment to allege use has been filed. This is to 
correct an oversight in earlier legislation.
    The Commissioner may set by regulation what ``prescribed 
information'' must be filed in order to record an assignment. 
Current policy states that an assignment is recorded only when 
a complete copy of the assignment document is recorded.
    Section 12(b) is amended to change the standard for revival 
of an application abandoned for failure to timely file a 
response. The old standard was ``unavoidable delay.'' The new 
standard is ``unintentional.''
    Section 8 is amended so that the requirements for all of 
the affidavits of use required to maintain a registration would 
appear in this section. Affidavits would be due between the 5th 
and 6th year, the 19th and 20th year etc. There would be a one 
year filing period for each affidavit and a six-month grace 
period. The actual substance of the filing mirrors the 
requirements which are already in the Lanham Act.
    Section 9 is amended to state that only a request for 
renewal and a fee would be needed to renew the application. The 
time periods for filing the section 9 request for renewal would 
be between the 9th and the 10th year, the 19th and the 20th 
year etc. with a six-month grace period.
    Section 44 is amended to state that no certified copy of 
the foreign registration need accompany the application based 
on foreign registration. The Commissioner has the authority to 
require submission of the certified copy during the application 
process.
    The State Department is expected to send the TLT 
ratification package to the Senate. The changes contained in 
the TLT implementing legislation are necessary to bring U.S. 
law in compliance with the treaty so ratification can occur.

                Background and Need for the Legislation

    The ``Trademark Law Treaty,'' or ``TLT,'' will harmonize 
the procedures of national trademark offices worldwide by 
establishing maximum requirements which member states or 
intergovernmental organizations may impose on users of their 
respective national systems. The treaty will also benefit 
trademark owners by eliminating several formal requirements 
otherwise needed for registration.
    Both this bill and H.R. 567, the ``Madrid Protocol 
Implementation Act,'' are intended to facilitate international 
trade for American individuals and entities wishing to do 
business overseas and are of particular importance to 
individual and small businesses looking for markets outside 
this country.

                                Hearings

    The Committee's Subcommittee on Courts and Intellectual 
Property conducted hearings on H.R. 1661 on May 22, 1997. At 
this hearing, the Subcommittee heard testimony from Bruce 
Lehman, Commissioner of the United States Patent and Trademark 
Office and Assistant Secretary of the Department of Commerce; 
Shaun Donnelly, Deputy Assistant Secretary of the Department of 
State; Michael K. Kirk, Executive Director of the American 
Intellectual Property Law Association; and David C. Stimson, 
President of the International Trademark Association.

                        Committee Consideration

    On June 10, 1997, the Subcommittee on Courts and 
Intellectual Property met in open session and reported 
favorably H.R. 1661 to the full Committee by voice vote, a 
quorum being present. The Subcommittee adopted an amendment by 
voice vote without objection which would add functionality as a 
defense and cancellation as a remedy to in contestable 
trademarks. On June 18, 1997, the Committee on the Judiciary 
met in open session and reported favorably H.R. 1661 to the 
House by voice vote, a quorum being present.

                         Vote of the Committee

    There were no recorded votes during consideration of H.R. 
1661.

                      Committee Oversight Findings

    In compliance with clause 2(l)(3)(A) of rule XI of the 
Rules of the House of Representatives, the Committee reports 
that the findings and recommendations of the Committee, based 
on oversight activities under clause 2(b)(1) of rule X of the 
Rules of the House of Representatives, are incorporated in the 
descriptive portions of this report.

         Committee on Government Reform and Oversight Findings

    No findings or recommendations of the Committee on 
Government Reform and Oversight were received as referred to in 
clause 2(l)(3)(D) of rule XI of the Rules of the House of 
Representatives.

               New Budget Authority and Tax Expenditures

    Clause 2(l)(3)(B) of House Rule XI is inapplicable because 
this legislation does not provide new budgetary authority or 
increased tax expenditures.

               Congressional Budget Office Cost Estimate

    In compliance with clause 2(l)(C)(3) of rule XI of the 
Rules of the House of Representatives, the Committee sets 
forth, with respect to the bill, H.R. 1661, the following 
estimate and comparison prepared by the Director of the 
Congressional Budget Office under section 403 of the 
Congressional Budget Act of 1974:

                                     U.S. Congress,
                               Congressional Budget Office,
                                     Washington, DC, July 16, 1997.
Hon. Henry J. Hyde,
Chairman, Committee on the Judiciary,
House of Representatives, Washington, DC.
    Dear Mr. Chairman: The Congressional Office has prepared 
the enclosed cost estimate for H.R. 1611, the Trademark Law 
Treaty Implementation Act.
    If you wish further details on this estimate, we will be 
pleased to provide them. The CBO staff contacts are Rachel 
Forward (for federal costs), who can be reached at 226-2860, 
and Matt Eyles (for the private-sector impact), who can be 
reached at 226-2649.
            Sincerely,

                                           June E. O'Neill, Director.  
    Enclosure.

H.R. 1661--Trademark Law Treaty Implementation Act
    Summary: CBO estimates that enacting this bill would have 
no significant effect on the federal budget. Because the bill 
would not affect direct spending or receipts, pay-as-you-go 
procedures would not apply. H.R. 1661 contains a private-sector 
mandate but the cost of the mandate would not exceed the $100 
million threshold specified in the Unfunded Mandates Reform Act 
of l995 (UMRA). The bill contains no intragovernmental mandates 
as defined in UMRA and would impose no costs on state, local, 
or tribal governments.
    H.R. 1661 would revise trademark registration procedures to 
require applicants to file with the United States Patent and 
Trademark Office (PTO) both a registration form and a form 
verifying that the trademark is used, or will be used, in 
commerce. The bill would require PTO to promulgate a rule to 
prescribe the contents of the trademark application and would 
authorize PTO to impose a surcharge on certain trademark 
renewal forms submitted after the applicable filing date. H.R. 
1661 would take effect the earlier of one year after the date 
of enactment or upon ratification by the Senate of the 
Trademark Law Treaty.

               Estimated Costs to the Federal Government

    Based on information from PTO, CBO estimates that the PTO 
would incur costs of less than $500,000 in fiscal year 1999, 
subject to the availability of appropriated funds, to conduct 
the rulemaking required by the bill. Based on information from 
PTO, CBO expects that the agency would impose the surcharge for 
the late submission of certain documents as authorized by the 
bill, but that the amounts collected would not be significant. 
CBO does not expect that enacting H.R. 1661 would affect the 
number of trademark applications received by PTO, and thus 
would not affect the amount of user fees collected by the 
agency to cover the cost of processing those applications. Such 
fees are collected and spent under authority provided in annual 
appropriations acts.

                   Pay-As-You-Go Considerations: None

        Estimated Impact on State, Local, and Tribal Governments

    H.R. 1661 contains no intergovernmental mandates as defined 
in UMRA and would impose no costs on state, local, or tribal 
governments.

                 Estimated Impact on the Private Sector

    H.R. 1661 would impose a new private-sector mandate by 
authorizing PTO to impose a surcharge on individuals who file 
late or incomplete trademark applications. Trademark law and 
trademark fees are the exclusive domain of the federal 
government. Therefore, an increase in existing trademark fees 
or the imposition of new fees constitutes a new enforceable 
duty and thus is a private-sector mandate under UMRA.
    Based on information from PTO, CBO estimates that the 
direct costs of the new private-sector mandate in the bill 
would be negligible and fall well below the $100 million 
statutory threshold in UMRA.
    Although Section 4(5) of UMRA excludes from consideration 
legislation that is necessary to implement international treaty 
obligations, that exclusion does not apply to H.R. 1661. This 
bill would implement provisions of the Trademark Law Treaty, 
which the United States has not yet ratified. Section 11 
contains a provision that makes H.R. 1661 effective one year 
after its date of enactment regardless of whether the Trademark 
Law Treaty is ratified. Thus, CBO has provided the above 
mandate statement.
    Estimate prepared by: Federal Costs: Rachel Forward (226-
2860). Impact on the Private Sector: Matthew Eyles (226-2649).
    Estimate approved by: Robert A. Sunshine, Deputy Assistant 
Director for Budget Analysis.

                        Constitutional Authority

    Pursuant to Rule XI, clause 2(1)(4) of the Rules of the 
House of Representatives, the Committee finds the authority for 
this legislation in Article I, clause 8, section 8 of the 
Constitution.

                      Section-by-Section Analysis

Section 1.--Short title
    This section provides a short title: Trademark Law Treaty 
Implementation Act.
Section 2.--Reference to the Trademark Act of 1946
    This section provides that the Act entitled ``An Act to 
provide for the registration and protection of trademarks used 
in commerce, to carry out the provision of certain 
international conventions, and for other purposes,'' approved 
July 5, 1946, as amended (15 U.S.C. 1051 et. seq.) Shall be 
referred to as the ``Trademark Act of 1946''.
Section 3.--Application for Registration; Verification
            Summary
    This section amends subsection 1(a) and 1(b) of the 
Trademark Act of 1946 (15 U.S.C. 1051(a) and 105(b)) to create 
a clear distinction between the written application, the form 
of which may be prescribed by the Commissioner, and the 
declaration pertaining to applicant's use or intention to use 
the mark, the substance of which is detailed in the respective 
subsections; to require that the declaration pertaining to use 
or intention to use be verified by the applicant; to authorize 
the Commissioner to promulgate rules prescribing both the 
elements of the application, in addition to those specified in 
the proposed provision, and those elements necessary for a 
filing date; to omit the requirement in the written application 
for a statement of the mode or manner in which the mark is used 
or intended to be used in connection with the specified goods 
or services; and to clarify and modernize the language of the 
subsections, as appropriate. In addition, an amendment is made 
to subsection 1(d) (15 U.S.C. 1051(d)) to clarify that an 
application may be revived after a notice of allowance is 
issued.
            Trademark Law Treaty and Existing U.S. Law
    With the goal of simplifying and harmonizing the 
registration process worldwide, Article 3(1) of the Trademark 
Law Treaty (Treaty) establishes a comprehensive list of 
indications or elements that may be required in an application 
to register a trademark or service mark (mark).
    This list permits a Contracting Party to the Treaty (Party) 
to require, inter alia, a signature and declarations of use and 
intention to use a mark. The list does not permit a Party to 
require, inter alia, a statement of the mode or manner in which 
the mark is used, or intended to be used, in connection with 
the goods or services specified in the application. Article 
3(4) of the Treaty obligates a Party that requires a signature 
to permit either the applicant or his representative to sign 
the application, except that Party may require declarations of 
use and intention to use a mark to be signed by the applicant.
    The existing subsections 1(a) and 1(b) of the Trademark Act 
of 1946 (15 U.S.C. 1051(a)) and 1051(b)) require, respectively, 
declarations pertaining to use and intention to use a mark and 
require verification by the applicant of the written 
application, which includes the aforementioned declarations. 
Under the terms of the Treaty, the United States may continue 
to require the aforementioned declarations and may require 
verification by the applicant of such declarations, but may not 
require verification by the applicant of the written 
application. Thus, it becomes necessary to distinguish the 
declarations of use and intention to use from the other 
elements of the application.
    Additionally, the existing subsections 1(a) and 1(b) of the 
Trademark Act of 1946 (15 U.S.C. 1051(a)) and 1051(b)) require, 
respectively, a statement of the mode or manner in which the 
mark is used, or intended to be used, in connection with the 
goods specified in the application. Thus, it becomes necessary 
to delete the requirement for this statement from the list of 
required elements in the written application.
            Distinction Between Written Application and Verified 
                    Declarations
    Consistent with the Treaty obligations, the revision will 
distinguish between the written application and the 
declarations of use and intention to use for purposes of the 
signature requirement. The revision will continue to require a 
written application, in such form as may be prescribed by the 
Commissioner, and a declaration verified by the applicant, as 
set forth in the two subsections.
    By separating the written application from the verified 
declarations, there will no longer be a requirement in the law 
for verification by the applicant of the written application. 
In the revision, as in the existing subsections, the 
Commissioner will have discretion to permit the written 
application to be filed with no signature or with the signature 
of applicant's representative. Also, the Commissioner may 
permit the filing of a single document, which combines the 
elements of the written application and the declaration, and 
which is signed by the applicant, as under the existing 
subsections.
            Elements of the Written Application
    The revision specifies a nonexclusive list of elements and 
grants authority to the Commissioner to prescribe, by 
regulation and consistent with law and international 
obligations, additional elements which the Commissioner 
considers to be necessary for an application and those elements 
necessary for receipt of a filing date. This improves the 
ability of the law pertaining to application requirements to 
accommodate advancing technology and further international 
procedural harmonization. The revision specifically requires 
the application to include applicant's domicile and 
citizenship, the dates of applicant's first use of the mark and 
first use of the mark in commerce in an application under 
subsection 1(a), the goods in connection with which the mark is 
used or intended to be used, and a reproduction of the mark. 
Consistent with the Treaty, the revision omits a requirement 
for specification of the mode or manner in which the mark is 
used, or intended to be used, in connection with the goods 
specified in the application.
    Additionally, the revision reorganizes subsections 1(a) and 
(b) 1946 (15 U.S.C. 1051(a)) and 1051(b)) to clarify the 
provisions and to modernize the language. To parallel the 
language of the Treaty, the phrase may apply to register is 
replaced by may request registration and the term drawing of 
the mark is replaced by reproduction of the mark. Reference to 
firm, corporation or association is replaced by a reference to 
``juristic person'' or ``person.'' Section 45 defines 
``person'' as including ``juristic persons.'' These terms are 
considered preferable in view of the numerous types of juristic 
persons in existence today.
            The Verified Statement
    Rather than requiring in the verified statement a 
repetition of statements in the written application identifying 
goods and, in a section 1(a) application, dates of use, the 
revision requires a statement that, to the best of the 
applicant's knowledge and belief, the facts recited in the 
application are accurate. In addition, the revision specifies 
the averments that the applicant must make in the verified 
statement concerning applicant's use, or bona fide intention to 
use, the mark in commerce, ownership of the mark and lack of 
knowledge of conflicting third party rights. These averments do 
not differ from those in the existing provisions.
    The revision requires verification of the statement by the 
applicant and omits the specification of the appropriate person 
to verify the declaration for a juristic applicant, i.e., the 
proposed revision omits the phrase requiring verification by 
``a member of the firm or an officer of the corporation or 
association applying.'' While this revision is not required by 
the Treaty, it will greatly simplify the filing of an 
application without compromising the integrity of the 
information contained therein. This revision will give the 
Patent and Trademark Office the discretion to determine the 
appropriate person with authority to sign the declaration for a 
juristic applicant.
    Under the existing provision, the Patent and Trademark 
Office has been limited to accepting, for example, only the 
signature of an officer of a corporation on an application when 
another corporate manager's signature would be appropriate 
because the corporate manager has specific knowledge of the 
facts asserted in the application. The unnecessary rigidity of 
the existing provision has worked a hardship on applicants who 
have been denied filing dates because the person verifying 
their application has not met the strict requirement of being 
an officer of the corporate applicant. Additionally, the Patent 
and Trademark Office has had difficulty applying the officer 
requirement to foreign juristic entities whose managers are not 
clearly officers under the United States corporate standards.
            Revival of Applicants After the Notice of Allowance Has 
                    Issued
    Existing subsection 1(d) (15 U.S.C. 1051(d)) is amended to 
clarify that applications which are awaiting the filing of a 
statement of use or a request for extension of time to file a 
statement of use, may be revived if it can be shown to the 
satisfaction of the Commissioner that the failure to file was 
unintentional. Although the change is not necessary for the 
implementation of the TLT, the change clarifies that the 
Commissioner has the authority to revive such an application so 
long as reviving the application does not extent the statutory 
period for filing the statement of use. The standard for 
revival is that the applicant's failure to file was 
unintentional. This is the same standard that is being proposed 
in subsection 12(b) of the Trademark Act of 1946 (15 U.S.C. 
1062(b)) for reviving applications during the examination 
process.

Section 4.--Revival of an Abandoned Application
            Summary
    This section amends subsection 12(b) of the Trademark Act 
of 1946 (15 U.S.C. 1062(b)) by amending the present standard 
for reviving an abandoned application upon a showing of 
unavoidable delay to the standard of ``unintentional'' delay.
            Revival of Abandoned Applications Upon a Showing of 
                    Unavoidable Delay
    Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 
1062(b)) provides that an application is abandoned if the 
applicant does not timely respond to an Office Action, ``unless 
it can be shown to the satisfaction of the commissioner that 
the delay in responding was unavoidable, whereupon such time 
may be extended.''
    Prior to the implementation of the Trademark Act of 1946, 
there was no statutory provision for abandonment and revival of 
abandoned trademark applications. There was a regulatory 
provision that an abandoned application could be revived if it 
were ``shown to the satisfaction of the Commissioner that the 
delay in the prosecution of the same was unavoidable.'' 
However, the legislative history of the Lanham Act is silent as 
to the meaning or intention behind the unavoidable delay 
standard for revival of abandoned applications.
    The language of section 12(b) of the Trademark Act of 1946 
is virtually identical to the analogous provision of the patent 
law, 35 U.S.C. 133, which provides for abandonment of patent 
applications and revival upon a showing of unavoidable delay. 
The requirements for reviving an unavoidably abandoned patent 
applications, set forth in 37 C.F.R. Sec. 1.137(a), are 
identical to the requirements for reviving an abandoned 
trademark application under 37 C.F.R. Sec. 2.66.
    Courts have held that the Commissioner has broad discretion 
in determining whether a delay is unavoidable. Under current 
law, the Commissioner's decision is subject to judicial review, 
but will be reversed only if it is arbitrary, capricious, or an 
abuse of discretion. Morganroth v. Quigg, 885 F.2d 843, 21 
USPQ2d 1125 (Fed. Cir. 1989); Smith v. Mossinghoff, 671 F.2d 
522, 213 USPQ 977 (D.C. Cir. 1982); Douglas v. Manbeck, 21 
USPQ2d (E.D. Pa. 1991).
            Revival of Unintentional Abandoned Applications
    Prior to 1982, patent applications, like trademark 
applications, could be revived only upon a showing of 
unavoidable delay. Under Public Law 97-247, Sec. 3, 96 Stat. 
317 (1982) codified at 35 U.S.C. 41(a)(7), it became possible 
to revive an unintentionally abandoned patent application. 
Section 41(a)7 establishes two different fees for filing 
petitions with two different standards to revive abandoned 
applications. There is one for a petition to revive an 
unavoidably abandoned application and another fee for a 
petition to revive an unintentionally abandoned application. 
The procedure for petitioning to revive an unintentionally 
abandoned application is set forth in 37 C.F.R. Sec. 1.137(b), 
effective October 1, 1982. 58 Fed. Reg. 44277 (Aug. 20, 1993); 
48 Fed. Reg. 2696 (Jan. 20, 1983). The rule requires, among 
other things, that the applicant submit a verified statement 
that the delay was unintentional, and provides that the 
``Commissioner may require additional information where there 
is a question that the delay was unintentional.''
    The legislative history of Public Law 97-247 states:

          Section 41(a)7 establishes two different fees for 
        filing petitions with different standards to revive 
        abandoned applications.  .  .  . Since the section 
        provides for two alternatives fees with different 
        standards, the section would permit the applicant 
        seeking revival .  .  . to choose one or the other of 
        the fees and standards under such regulations as the 
        Commissioner may establish.  .  .  . This section would 
        permit the Commissioner to have more discretion than 
        present law to revive abandoned applications .  .  . in 
        appropriate circumstances (emphasis added). H.R. Rep. 
        No. 542, 97th Cong. 2d Sess. 6-7 (1982), quoted in In 
        re Rutan, 231 USPQ 864, 865 (Comm'r Pats. 1986).

    The legislative history of Public Law 97-247 pertains 
primarily to fees. However, the intent of Congress appears to 
be to give the Commissioner the power to revive abandoned 
applications using a much less strict standard than had been 
previously applied. In re Rutan, supra. Neither the legislative 
history of the Lanham Act nor the relevant case law limit the 
Commissioner's authority to establish procedures for revival of 
unintentionally abandoned trademark applications.
    With the goal of the Trademark Law Treaty to simplify the 
registration process worldwide, this change parallels the 
unintentional standard for revival available to patent 
applicants and relaxes the standard for reviving trademark 
applications. This will enable the majority of applicants, who 
file a timely petition to revive an application that was 
abandoned due to an unintentional delay, to proceed to 
registration from the point that the application became 
abandoned, rather than requiring these applicants to refile 
their applications.
Section 5.--Duration of Registration; Cancellation; Affidavit of 
        Continued Use; Notice of Commissioner's Action
            Summary
    This section amends section 8 of the Trademark Act of 1946 
(15 U.S.C. 1058). The main purpose of the revision of this 
section is to set out, in one section, all of the requirements 
for filing any of the affidavits of use needed to maintain a 
registration and to ensure that the requirements of each use 
affidavit are identical. This section includes the affidavit of 
use filed between the fifth and the sixth year after 
registration, between the fifth and the sixth year after 
publication under subsection 12(c), and in the year preceding 
every ten year anniversary of the registration.
    This purpose is accomplished by adding an obligation to 
file an affidavit of use or non-use, consistent with the 
requirements set forth in the subsections, in the year 
preceding every tenth anniversary of the registration, to 
provide for correction of deficiencies in submissions under 
these subsections; to provide for a grace period for making 
submissions required by these subsections; to modernize the 
language and to simplify and clarify the existing procedural 
requirements for filing affidavits under these subsections; and 
to harmonize certain procedural requirements for such 
affidavits with the requirements for a registration renewal 
application contained in section 9 of the Trademark Act of 
1946.
    Subsection 8(a) sets out the end of the statutory time 
period for filing each affidavit of use. Paragraph (1) of 
subsection 8(a) states that an affidavit of use must be filed 
by the end of six years following registration. Paragraph (2) 
of subsection 8(a) states that an affidavit of use must be 
filed by the end of six years following the date of publication 
under subsection 12(c) of the Trademark Act of 1946 (15 U.S.C. 
1062(c)). Paragraph (3) of subsection 8(a) states that an 
affidavit of use must be filed by the end of each successive 
ten-year period following the date of registration.
    Subsection 8(b) sets out the length of the time period 
during which the statutory filing can be made and the contents 
needed in each filing. In every case, there is a one year 
statutory period for filing the affidavit.
    Subsection 8(c) sets out the time period for filing the use 
affidavit where the statutory period has expired, the so-called 
grace period, and allows for correction of deficiencies in the 
filings submitted under this section. This subsection permits 
the filing of the use affidavit, or the correction of a timely 
filed affidavit, after the statutory period for filing has 
ended upon payment of an additional ``grace period'' surcharge. 
The section also provides that a correction to the ``grace'' 
period affidavit may be made upon payment of an additional 
deficiency surcharge.
    Subsection 8(d) sets out the requirement that the 
Commissioner attach to each certificate of registration, and 
notice of publication under section 12(c), a special notice of 
the requirement for the affidavits required by this section. 
This section preserves an obligation of the Commissioner that 
is set out in the last sentence of existing section 8(a) and in 
section 12(c).
    Subsection 8(e) preserves the obligation of the 
Commissioner, in existing subsection 8(c), to notify any who 
files an affidavit under section 8 of his acceptance or refusal 
of the affidavit. The subsection has been revised to reflect 
the revisions in subsections 8(a) and (b) by stating that it 
applies to any of the above prescribed affidavits.
    Subsection 8(f) has been added to require the appointment 
by owners, not domiciled in the United States, of a domestic 
representative for service of notices or process in proceedings 
affecting the mark.
            Trademark Law Treaty and Existing U.S. Law
    With the goal of simplifying and harmonizing the process 
for renewal of a trademark or service mark registration 
worldwide, Article 13(1) of the Treaty establishes a 
comprehensive list of indications that may be required in a 
request to renew a trademark or service mark registration. This 
list does not include a declaration and/or evidence concerning 
use of the mark. Article 13(4)(iii) expressly prohibits a 
requirement for the furnishing of a declaration and/or evidence 
concerning use of the mark as part of a request for renewal. 
However, the Treaty contains no prohibition against a 
requirement for the periodic filing of a declaration and/or 
evidence of use in connection with a registration, as long as 
such requirement is not part of the requirements for renewal. 
In fact, Article 13(1)(b) of the Treaty, concerning renewal 
fees, recognizes that fees may be required in connection with 
the filing of a declaration and/or evidence of use of a 
registered mark.
    Existing sections 8 and 9 of the Trademark Act of 1946 are 
the two provisions of the Act containing requirements for 
registration maintenance. These two sections are analogous in 
their requirements for the filing of a verified document 
attesting to the use of the mark in commerce and specimens or 
facsimiles, or a showing of excusable non-use. Section 8 of the 
Trademark Act of 1946 requires the aforementioned filing during 
the year preceding the sixth year following registration to 
avoid cancellation of the registration. Section 9 of the 
Trademark Act of 1946 requires the aforementioned filing as 
part of the registration renewal application. Under the terms 
of the Treaty, the United States may continue to require the 
periodic filing of a verified document attesting to the use of 
the mark in commerce and specimens or facsimiles, or a showing 
of excusable non-use. However, the United States may not make 
such a requirement in connection with registration renewal.
            Periodic Filing of the Affidavit
    The U.S. Patent and Trademark Office continues to believe 
in the value of requiring a periodic filing verifying the 
continued use of the mark as a way to maintain the integrity of 
the trademark register by periodically removing from the 
register marks no longer in use in commerce. Therefore, 
consistent with the Treaty obligations, the proposed revision 
adds to section 8 of the Trademark Act of 1946 an obligation to 
file an affidavit of use or excusable non-use, consistent with 
the requirements set forth in the subsection, in the year 
preceding the tenth anniversary of the registration and every 
ten years thereafter. This revision is proposed in view of the 
proposed deletion of the requirement in connection with 
registration renewal, in section 9 of the Trademark Act of 
1946, for a verified statement attesting to the use of the mark 
in commerce, accompanied by specimens or facsimiles, or a 
showing of excusable non-use.
            Harmonization of Sections 8 and 9 Requirements
    The revision harmonizes certain procedural requirements for 
the affidavits required under this section with the 
requirements for a registration renewal application contained 
in section 9 of the Trademark Act of 1946. While both sections 
contain requirements for registration maintenance, the specific 
requirements pertaining to the filing required by each existing 
section differ unnecessarily. These differing requirements have 
caused confusion to some registrants, particularly those 
proceeding pro se, resulting in the cancellation of 
registrations of marks still in use in commerce due to 
noncompliance with the technical requirements of one or the 
other of these maintenance sections. Furthermore, since the 
revision to section 8 adds an affidavit requirement at ten-year 
internals, harmonizing the filing procedures with those for 
renewal enables the registrant to make both filings at the same 
time, thus, simplifying registration maintenance.
            Grace Period and Correction of Deficiencies
    Rule 8 of the Regulations under the Trademark Law Treaty 
provides that a renewal request must be accepted for at least a 
six-month period, upon payment of a surcharge, after the date 
the renewal is due. The existing provisions of section 9 of the 
Trademark Act of 1946 permit the renewal application to be 
filed within a three-month period, upon payment of a surcharge, 
after the date the renewal is due. The existing provisions of 
section 8 of the Trademark Act of 1946 contain no grace period 
for the filing of the required affidavit after its due date. As 
described below, the revision incorporates the six-month grace 
period required by the treaty for filing renewal requests and 
harmonizes the requirements for filings under sections 8 and 9 
of the Trademark Act of 1946. Harmonization of the filing 
requirements of sections 8 and 9 will require the amendment of 
both sections to provide this six-month grace period for making 
the required filing. This amendment is a liberalization of 
sections 8 and 9 of the Trademark Act of 1946, which is 
desirable to avoid, to the extent possible, the removal from 
the register for mere technical reasons of marks that are still 
in use in commerce.
    The revision to section 8 of the Trademark Act of 1946 will 
amend the existing law by providing a six-month grace period 
for filing the required affidavit, conditioned upon payment of 
a ``grace period surcharge'' Additionally, the revision permits 
the correction of a deficiency after the sixth anniversary of 
registration. Such correction must be accompanied by a 
``deficiency surcharge'' and be filed no later than the end of 
a prescribed period after notification of the deficiency. This 
change is consistent with the practice proposed in the revision 
to section 9(a) of the Trademark Act of 1946, concerning 
renewal.
    Only an owner who did not make any filing prior to the end 
of the sixth year after registration may make the required 
filing under the grace period provisions. The owner filing an 
affidavit prior to the end of the sixth year, but correcting a 
deficiency either during or after the grace period, will be 
subject to the ``deficiency surcharge'' only. On the other 
hand, the owner filing an affidavit during the six-month grace 
period, will be subject to the ``grace period surcharge'' (for 
the ability to file the affidavit during the grace period) and, 
if notified of deficiencies, the `` deficiency surcharge'' (for 
the ability to correct a deficiency after the end of the sixth 
year after registration).
            Simplification and Clarification of Section
    The revision conforms the requirements of subsections 8(a) 
and (b) of the Trademark Act of 1946 to current practice. 
First, the language in the existing subsections ``attaching to 
the affidavit is a specimen or facsimile showing current use of 
the mark'' is revised to clarify that the specimens or 
facsimiles are to be filed along with the affidavit but are not 
considered part of the affidavit for purposes of complying with 
the requirement to set forth in the affidavit the goods or 
services on or in connection with which the mark is in use in 
commerce. The sentence comprising subsection 8(a) of the 
Trademark Act of 1946 has been revised to clarify and 
distinguish the requirements for the fee, the affidavit, the 
specimens and a showing of non-use. The revision further 
permits the Commissioner to specify the number of specimens or 
facsimiles required so that he may require a specimen or 
facsimile for each class of goods or services identified in the 
registration. The language ``setting forth those goods or 
services recited in the registration on or in connection with 
which the mark is not in use in commerce'' is proposed to be 
added to parallel the affidavit requirements pertaining to use 
of the mark and to clarify that the owner must specify the 
goods or services to which a showing of non-use pertains.
            Existing Subsection 8(b)
    The requirements set out in former subsection 8(b) of the 
Trademark Act of 1946, pertaining to marks published pursuant 
to section 12(c) of the Trademark Act of 1946, have been set 
out in subsections 8(a)(2), 8(b) and (8)(c) and conform to the 
proposed revisions as to the time of filing the affidavit, the 
grace period and the correction of deficiencies.
            Existing Subsection 8(c)
    Subsection 8(c) of the Trademark Act of 1946 is now set out 
in the subsection 8(c) and is amended to reflect the revisions 
in subsections 8(a) and (b) to add requirements for the 
periodic filing of additional affidavits by changing reference 
from ``.  .  . any owner who files either of the above-
prescribed affidavits .  .  .'' to ``.  .  . any owner who 
files one of the above-prescribed affidavits.  .  .  .''
            Subsection 8(f)--Appointment of Domestic Representative
    Section 5 of this Act adds a section 8(f) to the Trademark 
Act of 1946 to provide for the appointment of a domestic 
representative for service of notices or process in proceedings 
affecting the mark by owners not domiciled in the United 
States. This new subsection is consistent with similar 
requirements imposed on applicants by subsection 1(e) of the 
Trademark Act of 1946. This is necessary because the 
appointment required in subsection 1(e) of the Trademark Act of 
1946 pertains only during the pendency of the application.
            Registrant or Owner; Who must file?
    Throughout the revised section 8, the term ``registrant'' 
has been replaced by the term ``owner.'' The practice at the 
Patent and Trademark Office has been to require that the 
current owner of the registration file all the post-
registration affidavits needed to maintain a registration. The 
current owner of the registration must aver to actual knowledge 
of the use of the mark in the subject registration. However, 
the definition of ``registrant'' in section 45 of the Act 
states that the ``terms `applicant' and `registrant' embrace 
the legal representatives, predecessors, successors and assigns 
of each applicant and registrant.'' Therefore, use of the term 
``registrant'' in section 8 of the Act would imply that any 
legal representative, predecessor, successor or assign of the 
registrant could successfully file the affidavits required by 
sections 8 and 9. To correct this situation, and to keep with 
the general principal, as set out in section 1, that the owner 
is the proper person to prosecute an application, section 8 has 
been amended to state that the owner must file the affidavits 
required by the section.
Section 6.--Renewal of Registration
            Summary
    This section amends subsection 9(a) of the Trademark Act of 
1946 to cross-reference the obligatory registration maintenance 
requirements of section 8 of the Trademark Act of 1946, to 
delete the obligation to submit as part of a renewal 
application verified statements regarding the use of the mark 
in commerce and attaching to the application verified 
statements regarding the use of the mark in commerce and 
attaching to the application a specimen or facsimile showing 
current use of the mark; to extend the time for filing a 
renewal application to up to one year before the expiration of 
the period for which the registration was issued or renewed 
and, for an additional fee, up to six months after the end of 
the expiring period of the registration, and to grant authority 
to the Commissioner to prescribe the form of the written 
application for renewal of the registration.
    This section amends subsection 9(c) to specify the 
requirements for the appointment by registrants not domiciled 
in the United States of a domestic representative for service 
of notices or process in proceedings affecting the mark.
            Trademark Law Treaty and Existing Law
    As discussed in the analysis of the amendment to section 8 
of the Trademark Act of 1946, Article 13(1) of the Treaty 
establishes a comprehensive list of indications that may be 
required in a request to renew a trademark or service mark 
registration. The goal of this Article is simplifying and 
harmonizing the process for renewal of a trademark or service 
mark registration worldwide. This list does not include a 
declaration and/or evidence concerning use of the mark. Article 
13(4)(iii) expressly prohibits a requirement for the furnishing 
of a declaration and/or evidence concerning use of the mark as 
part of a request for renewal. However, the Treaty contains no 
prohibition against a requirement for the periodic filing of a 
declaration and/or evidence of use in connection with a 
registration, as long as such requirement is not part of the 
requirements for renewal. In fact, Article 13(1)(b) of the 
Treaty, concerning renewal fees, recognizes that fees may be 
required in connection with the filing of a declaration and/or 
evidence of use of a registered mark.
    Sections 8 an 9 of the Trademark Act of 1946 are the two 
provisions of the Act containing requirements for registration 
maintenance. These two sections are analogous in their 
requirements for the filing of a verified document attesting to 
the use of the mark in commerce and specimens or facsimiles, or 
a showing of excusable non-use. Section 8 of the Trademark Act 
of 1946 requires the aforementioned filing during the year 
preceding the sixth year following registration to avoid 
cancellation of the registration. Section 9 of the Trademark 
Act of 1946 requires the aforementioned filing as part of the 
registration renewal application. Under the terms of the 
Treaty, the United States may continue to require the periodic 
filing of a verified document attesting to the use of the mark 
in commerce and specimens or facsimiles, or a showing of 
excusable non-use. However, the United States may not make such 
a requirement in connection with registration renewal.
            Use Requirement for Registration Renewal
    Separate from the obligation to renew a trademark 
registration at ten-year intervals, the U.S. Patent and 
Trademark Office continues to believe in the value of requiring 
a period filing verifying the continued use of the mark as a 
way to maintain the integrity of the trademark register by 
periodically removing from the register marks no longer in use 
in commerce. Therefore, consistent with the Treaty obligations, 
the proposed revision deletes from subsection 9(a) of the 
Trademark Act of 1946 the requirement that the renewal 
application include a verified statement attesting to the use 
of the mark in commerce, accompanied by a specimen or facsimile 
evidencing current use of the mark, or a showing of excusable 
non-use. These requirements are to be added to subsection 8(a) 
of the Trademark Act of 1946 in the form of an obligation to 
file an affidavit of use or excusable non- use, consistent with 
the requirements set forth in the subsection, on the tenth 
anniversary of the registration and every ten years thereafter.
    Also, consistent with the treaty obligations, the 
requirement that the renewal application be verified is to be 
deleted and the Commissioner is granted authority to prescribe 
the form of the written renewal application, consistent with 
law and international treaties or agreements to which the 
United States is a party.
            Grace Period and Harmonization
    Rule 8 of the Regulations under the Trademark Law Treaty 
provides that a renewal request must be accepted for at least a 
six-month period, upon payment of a surcharge, after the date 
the renewal is due. The existing provisions of section 9 of the 
Trademark Act of 1946 permit the renewal application to be 
filed within a three-month period, upon payment of a surcharge, 
after the date the renewal is due. The revision changes the 
three-month grace period for requesting registration renewal to 
the six-month grace period required by the treaty and 
harmonizes the requirements for filings under section 8 and 9 
of the Trademark Act of 1946. Harmonization of the filing 
requirements of sections 8 and 9 will require the amendment of 
both sections to provide this six-month grace period for making 
the required filing. This amendment is a liberalization of 
sections 8 and 9 of the Trademark Act of 1946, which is 
desirable to avoid, to the extent possible, the removal from 
the register for more technical reasons of marks that are still 
in use in commerce. In particular, consistent with the filing 
requirements in section 8 of the Trademark Act of 1946, the 
period for filing a renewal request is expressly defined as the 
period one year prior to expiration of the period for which the 
registration was issued or renewed, or within a grace period of 
six months after the end of the expiring period.
            Subsection 9(c)--Appointment of Domestic Representative
    Subsection 6(b) of this Act amends subsection 9(c) to the 
Trademark Act of 1946 to provide for the appointment of a 
domestic representative for service of notices or process in 
proceedings affecting the mark by owners not domiciled in the 
United States, rather than referencing the requirements in 
subsection 1(e) of the Trademark Act of 1946. This is 
preferable because the appointment required in subsection 1(e) 
of the Trademark Act of 1946 pertains only during the pendency 
of the application.
Section 7.--Recording Assignment of Mark
    This section amends section 10 of the Trademark Act of 1946 
(15 U.S.C. 1060) to clarify that the PTO will record a change 
in ownership without requiring a copy of the underlying 
document; and to remove the proscription against the assignment 
of a mark in an application filed under section 1(b) of the 
Trademark Act of 1946 (15 U.S.C. 1051(b)) (intent-to-use) upon 
the filing of an amendment to allege use pursuant to section 
1(c) of the Trademark Act of 1946 (15 U.S.C. 1051(c)).
    The PTO has interpreted the present reference to a ``record 
of assignments'' in section 10 to require the PTO to record a 
copy of the actual assignment document. Article 11(4) of the 
Trademark Law Treaty prohibits the requirement of a statement 
or proof of such transfer in order to record an assignment of a 
trademark registration. The amendment clarifies that, rather 
than maintaining a ``record of assignments,'' the PTO ``shall 
maintain a record of the prescribed information on assignments, 
in such form as may be prescribed by the Commissioner.'' The 
amendment authorizes the PTO to determine what information 
regarding assignments it will record and maintain. The revision 
will ensure that a transfer of goodwill remains a necessary 
element of a valid assignment of a trademark; however, the PTO 
will not require a statement or proof of the transfer of 
goodwill in order to record an assignment of a trademark 
registration.
    Additionally, pertaining to the proscription against the 
assignment of a mark in an application filed under section 1(b) 
of the Trademark Act of 1946 (intent-to-use), the amendment 
adds reference to section 1(c) of the Trademark Act of 1946 so 
that the filing of an amendment to allege use pursuant to 
section 1(c) removes the restriction against assigning the mark 
except to the successor to the business of the applicant, or 
portion thereof, to which the mark pertains, if that business 
is ongoing and existing. Presently, prior to registration of an 
application filed pursuant to section 1(b) of the Trademark Act 
of 1946 (15 U.S.C. 1051(b)), based upon a bona fide intention 
to use a mark in commerce on the identified goods or services, 
applicants must file either a verified statement of use under 
section 1(d) of the Trademark Act of 1946 (15 U.S.C. 1051(c)). 
The substance of the two filings is essentially the same. The 
difference between the two filings is the point at which the 
filing is made. Presently, section 10 of the Trademark Act of 
1946 (15 U.S.C. 1060) limits the assignability of an 
application to register a mark under section 1(b) of the 
Trademark Act of 1946 (15 U.S.C. 10512(b)) until such time as 
applicant files a verified statement of use under section 1(d) 
of the Trademark Act of 1946 (15 U.S.C. 1051(d)). Since the 
effect of the filing of an amendment to allege use under 
section 1(c) of the Trademark Act of 1946 (15 U.S.C. 1051( c)) 
is analogous, there is no policy or legal reason for omitting 
to include reference to section 1(c) in section 10.
Section 8.--International Conventions; Copy of Foreign Registration
    This section amends section 44(e) of the Trademark Act of 
1946 (15 U.S.C. 1126 (e)) to change the requirement that an 
application be accompanied by a certificate or certified copy 
of the foreign registration, which has been interpreted to be a 
filing date requirement, so that such copy may be submitted to 
the PTO prior to registration, within such time limits as may 
be prescribed by the Commissioner. Such a requirement as a 
prerequisite to receiving a filing date is prohibited pursuant 
to Article 5 of the Trademark Law Treaty.
Section 9.--Miscellaneous Amendments
    This section amends section 14(3) of the Trademark Act of 
1946 (15 U.S.C. 1064 (3)) to add functionality to the list of 
statutory defenses to infringement in a suit involving an 
incontestible registration. The amendment also adds 
functionality as a ground for cancellation of an incontestible 
registration. These changes become necessary to clarify 
confusion among certain courts over functionality issues.
    The need to be able to assert functionality as a defense 
and as a ground for cancellation has grown with the increase in 
trade dress applications, where registration is sought for 
three dimensional features and colors, many of which have 
utilitarian aspects. With this increase, the number of 
functional designs which are registered as trademarks in error 
and attain incontestible status is likewise expected to rise. 
The amendment provides both a means of rectifying the Trademark 
Register by removal of such marks and a necessary means of 
defending a charge of infringement of such marks.
Section 10.--Transitional Provisions
    This section seeks to clarify the status of trademarks and 
applications throughout the time period for enactment. Section 
10(a) states that section 8(a) of the Trademark Act of 1946, as 
amended by section 5 of this Act, applies to a registration for 
a trademark issued or renewed for a 20-year term, and existing 
on the effective date of this Act, on or after the date that is 
one year before the date on which the 20-year term expires.
    Section 10(b) states the Act and the amendments to the Act 
apply to all applications pending on, or filed after, the 
effective date of the Act.
    Section 10(c) states that section 8(b) of the Trademark Act 
of 1946, as amended by section 5 of this act, applies to the 
filing of an affidavit if the sixth anniversary of the 
registration, or publication under section 12(c) of the 
Trademark Act of 1946, for which the affidavit is filed on or 
after the effective date of this Act.
    Section 10(d) states that the amendment made by section 6 
shall apply to the filing of an application for renewal of a 
registration if the expiration date of the registration for 
which the renewal application is filed is on or after the 
effective date of the Act.
Section 11.--Effective Date
    Tthis section provides that this Act shall take effect one 
year after enactment of the Act or upon entry into force of the 
Treaty in respect to the United States, whichever occurs first. 
Since the provisions of the Act will modernize and simplify 
procedures pertaining to trademark application filing and 
registration maintenance, this section provides that, if the 
U.S. has not acceded to the treaty and become subject to the 
obligations thereunder within a year after enactment, the Act 
will become effective so that it benefits can be realized by 
trademark owners.
    Since the United States is not one of the first five Stats 
to deposit its instrument of ratification or accession, Article 
20 of the Treaty provides that the Treaty shall enter into 
force three months after the date on which the instrument of 
ratification or accession is deposited.

  

         Changes in Existing Law Made by the Bill, as Reported

    In compliance with clause 3 of rule XIII of the Rules of 
the House of Representatives, changes in existing law made by 
the bill, as reported, are shown as follows (existing law 
proposed to be omitted is enclosed in black brackets, new 
matter is printed in italics, existing law in which no change 
is proposed is shown in roman):

                          ACT OF JULY 5, 1946

        (Commonly referred to as the ``Trademark Act of 1946'')

 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.

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

                    TITLE I--THE PRINCIPAL REGISTER

    [Section 1. (a) The owner of a trade-mark used in commerce 
may apply to register his or her trade-mark under this Act on 
the principal register hereby established:
            [(1) By filing in the Patent and Trademark Office--
                    [(A) a written application, in such form as 
                may be prescribed by the Commissioner, verified 
                by the applicant, or by a member of the firm or 
                an officer of the corporation or association 
                applying, specifying applicant's domicile and 
                citizenship, the date of applicant's first use 
                of the mark, the date of applicant's first use 
                of the mark in commerce, the goods in 
                connection with which the mark is used and the 
                mode or manner in which the mark is used in 
                connection with such goods, and including a 
                statement to the effect that the person making 
                the verification believes himself, or the firm, 
                corporation, or association in whose behalf he 
                makes the verification, to be the owner of the 
                mark sought to be registered, that the mark is 
                in use in commerce, and that no other person, 
                firm, corporation, or association, to the best 
                of his knowledge and belief, has the right to 
                use such mark in commerce either in the 
                identical form thereof or in such near 
                resemblance thereto as to be likely, when used 
                on or in connection with the goods of such 
                other person, to cause confusion, or to cause 
                mistake, or to deceive: Provided, That in the 
                case of every application claiming concurrent 
                use the applicant shall state exceptions to his 
                claim of exclusive use in which he shall 
                specify, to the extent of his knowledge, any 
                concurrent use by others, the goods in 
                connection with which and the areas in which 
                each concurrent use exists, the periods of each 
                use, and the goods and area for which the 
                applicant desires registration;
                    [(B) a drawing of the mark; and
                    [(C) such number of specimens or facsimiles 
                of the mark as used as may be required by the 
                Commissioner.
            [(2) By paying into the Patent and Trademark Office 
        the prescribed fee.
            [(3) By complying with such rules or regulations, 
        not inconsistent with law, as may be prescribed by the 
        Commissioner.
    [(b) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a 
trademark in commerce may apply to register the trademark under 
this Act on the principal register hereby established:
            [(1) By filing in the Patent and Trademark Office--
                    [(A) a written application, in such form as 
                may be prescribed by the Commissioner, verified 
                by the applicant, or by a member of the firm or 
                an officer of the corporation or association 
                applying, specifying applicant's domicile and 
                citizenship, applicant's bona fide intention to 
                use the mark in commerce, the goods on or in 
                connection with which the applicant has a bona 
                fide intention to use the mark and the mode or 
                manner in which the mark is intended to be used 
                on or in connection with such goods, including 
                a statement to the effect that the person 
                making the verification believes himself or 
                herself, or the firm, corporation, or 
                association in whose behalf he or she makes the 
                verification, to be entitled to use the mark in 
                commerce, and that no other person, firm, 
                corporation, or association, to the best of his 
                or her knowledge and belief, has the right to 
                use such mark in commerce either in the 
                identical form of the mark or in such near 
                resemblance to the mark as to be likely, when 
                used on or in connection with the goods of such 
                other person, to cause confusion, or to cause 
                mistake, or to deceive; however, except for 
                applications filed pursuant to section 44, no 
                mark shall be registered until the applicant 
                has met the requirements of subsection (d) of 
                this section; and
                    [(B) a drawing of the mark.
            [(2) By paying in the Patent and Trademark Office 
        the prescribed fee.
            [(3) By complying with such rules or regulations, 
        not inconsistent with law, as may be prescribed by the 
        Commissioner.]
    Section 1. (a)(1) The owner of a trademark used in commerce 
may request registration of its trademark on the principal 
register hereby established by paying the prescribed fee and 
filing in the Patent and Trademark Office an application and a 
verified statement, in such form as may be prescribed by the 
Commissioner, and such number of specimens or facsimiles of the 
mark as used as may be required by the Commissioner.
    (2) The application shall include specification of the 
applicant's domicile and citizenship, the date of the 
applicant's first use of the mark, the date of the applicant's 
first use of the mark in commerce, the goods in connection with 
which the mark is used, and a drawing of the mark.
    (3) The statement shall be verified by the applicant and 
specify that--
            (A) the person making the verification believes 
        that he or she, or the juristic person in whose behalf 
        he or she makes the verification, to be the owner of 
        the mark sought to be registered;
            (B) to the best of the verifier's knowledge and 
        belief, the facts recited in the application are 
        accurate;
            (C) the mark is in use in commerce; and
            (D) to the best of the verifier's knowledge and 
        belief, no other person has the right to use such mark 
        in commerce either in the identical form thereof or in 
        such near resemblance thereto as to be likely, when 
        used on or in connection with the goods of such other 
        person, to cause confusion, or to cause mistake, or to 
        deceive, except that, in the case of every application 
        claiming concurrent use, the applicant shall--
                    (i) state exceptions to the claim of 
                exclusive use; and
                    (ii) shall specify, to the extent of the 
                verifier's knowledge--
                            (I) any concurrent use by others;
                            (II) the goods on or in connection 
                        with which and the areas in which each 
                        concurrent use exists;
                            (III) the periods of each use; and
                            (IV) the goods and area for which 
                        the applicant desires registration.
    (4) The applicant shall comply with such rules or 
regulations as may be prescribed by the Commissioner. The 
Commissioner shall promulgate rules prescribing the 
requirements for the application and for obtaining a filing 
date herein.
    (b)(1) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a 
trademark in commerce may request registration of its trademark 
on the principal register hereby established by paying the 
prescribed fee and filing in the Patent and Trademark Office an 
application and a verified statement, in such form as may be 
prescribed by the Commissioner.
    (2) The application shall include specification of the 
applicant's domicile and citizenship, the goods in connection 
with which the applicant has a bona fide intention to use the 
mark, and a drawing of the mark.
    (3) The statement shall be verified by the applicant and 
specify--
            (A) that the person making the verification 
        believes that he or she, or the juristic person in 
        whose behalf he or she makes the verification, to be 
        entitled to use the mark in commerce;
            (B) the applicant's bona fide intention to use the 
        mark in commerce;
            (C) that, to the best of the verifier's knowledge 
        and belief, the facts recited in the application are 
        accurate; and
            (D) that, to the best of the verifier's knowledge 
        and belief, no other person has the right to use such 
        mark in commerce either in the identical form thereof 
        or in such near resemblance thereto as to be likely, 
        when used on or in connection with the goods of such 
        other person, to cause confusion, or to cause mistake, 
        or to deceive.
Except for applications filed pursuant to section 44, no mark 
shall be registered until the applicant has met the 
requirements of subsections (c) and (d) of this section.
    (4) The applicant shall comply with such rules or 
regulations as may be prescribed by the Commissioner. The 
Commissioner shall promulgate rules prescribing the 
requirements for the application and for obtaining a filing 
date herein.
          * * * * * * *
    (d)(1) * * *
          * * * * * * *
    [(4) The failure to timely file a verified statement of use 
under this subsection shall result in abandonment of the 
application.]
    (4) The failure to timely file a verified statement of use 
under paragraph (1) or an extension request under paragraph (2) 
shall result in abandonment of the application, unless it can 
be shown to the satisfaction of the Commissioner that the delay 
in responding was unintentional, in which case the time for 
filing may be extended, but for a period not to exceed the 
period specified in paragraphs (1) and (2) for filing a 
statement of use.
          * * * * * * *

                               [duration

    [Sec. 8. (a) Each certificate of registration shall remain 
in force for ten years: Provided, That the registration of any 
mark under the provisions of this Act shall be canceled by the 
Commissioner at the end of six years following its date, unless 
within one year next preceding the expiration of such six years 
the registrant shall file in the Patent and Trademark Office an 
affidavit setting forth those goods or services recited in the 
registration on or in connection with which the mark is in use 
in commerce and attaching to the affidavit a specimen or 
facsimile showing current use of the mark, or showing that any 
nonuse is due to special circumstances which excuse such nonuse 
and is not due to any intention to abandon the mark. Special 
notice of the requirement for such affidavit shall be attached 
to each certificate of registration.
    [(b) Any registration published under the provisions of 
subsection (c) of section 12 of this Act shall be canceled by 
the Commissioner at the end of six years after the date of such 
publication unless within one year next preceding the 
expiration of such six years the registrant shall file in the 
Patent and Trademark Office an affidavit showing that said mark 
is in use in commerce or showing that its nonuse is due to 
special circumstances which excuse such nonuse and is not due 
to any intention to abandon the mark.
    [(c) The Commissioner shall notify any registrant who files 
either of the above-prescribed affidavits of his acceptance or 
refusal thereof and, if a refusal, the reasons therefore.
    [Sec. 9. (a) Each registration may be renewed for periods 
of ten years from the end of the expiring period upon payment 
of the prescribed fee and the filing of a verified application 
therefor, setting forth those goods or services recited in the 
registration on or in connection with which the mark is still 
in use in commerce and having attached thereto a specimen or 
facsimile showing current use of the mark, or showing that any 
nonuse is due to special circumstances which excuse such nonuse 
and it is not due to any intention to abandon the mark. Such 
application may be made at any time within six months before 
the expiration of the period for which the registration was 
issued or renewed, or it may be made within three months after 
such expiration on payment of the additional fee herein 
prescribed.
    [(b) If the Commissioner refuses to renew the registration, 
he shall notify the registrant of his refusal and the reasons 
therefor.
    [(c) An applicant for renewal not domiciled in the United 
States shall be subject to and comply with the provisions of 
section 1(e) of this Act.

                              [assignment

    [Sec. 10. A registered mark or a mark for which application 
to register has been filed shall be assignable with the 
goodwill of the business in which the mark is used, or with 
that part of the goodwill of the business connected with the 
use of and symbolized by the mark ,. However, no application to 
register a mark under section 1(b) shall be assignable prior to 
the filing of the verified statement of use under section 1(d), 
except to a successor to the business of the applicant, or 
portion thereof, to which the mark pertains, if that business 
is ongoing and existing. In any assignment authorized by this 
section it shall not be necessary to include the goodwill of 
the business connected with the use of and symbolized by any 
other mark used in the business or by the name or style under 
which the business is conducted.. Assignments shall be by 
instruments in writing duly executed. Acknowledgment shall be 
prima facie evidence of the execution of an assignment and when 
recorded in the Patent and Trademark Office the record shall be 
prima facie evidence of execution. An assignment shall be void 
as against any subsequent purchaser for a valuable 
consideration without notice, unless it is recorded in the 
Patent and Trademark Office within three months after the date 
thereof or prior to such subsequent purchase. A separate record 
of assignments submitted for recording hereunder shall be 
maintained in the Patent and Trademark Office.
    [An assignee not domiciled in the United States shall be 
subject to and comply with the provisions of section 1(e) of 
this Act.]


                                duration


    Sec. 8. (a) Each registration shall remain in force for 10 
years, except that the registration of any mark shall be 
canceled by the Commissioner for failure to comply with the 
provisions of subsection (b) of this section, upon the 
expiration of the following time periods, as applicable:
            (1) For registrations issued pursuant to the 
        provisions of this Act, at the end of 6 years following 
        the date of registration.
            (2) For registrations published under the 
        provisions of section 12(c), at the end of 6 years 
        following the date of publication under such section.
            (3) For all registrations, at the end of each 
        successive 10-year period following the date of 
        registration.
    (b) During the 1-year period immediately preceding the end 
of the applicable time period set forth in subsection (a), the 
owner of the registration shall pay the prescribed fee and file 
in the Patent and Trademark Office--
            (1) an affidavit setting forth those goods or 
        services recited in the registration on or in 
        connection with which the mark is in use in commerce 
        and such number of specimens or facsimiles showing 
        current use of the mark as may be required by the 
        Commissioner; or
            (2) an affidavit setting forth those goods or 
        services recited in the registration on or in 
        connection with which the mark is not in use in 
        commerce and showing that any such nonuse is due to 
        special circumstances which excuse such nonuse and is 
        not due to any intention to abandon the mark.
    (c) The owner of the registration may make the submissions 
required by this section, or correct any deficiency in a timely 
filed submission, within a grace period of 6 months after the 
end of the applicable time period set forth in subsection (a). 
Such submission must be accompanied by a surcharge prescribed 
therefor. If any submission required by this section filed 
during the grace period is deficient, the deficiency may be 
corrected within the time prescribed after notification of the 
deficiency. Such submission must be accompanied by a surcharge 
prescribed therefor.
    (d) Special notice of the requirement for affidavits under 
this section shall be attached to each certificate of 
registration and notice of publication under section 12(c).
    (e) The Commissioner shall notify any owner who files 1 of 
the affidavits required by this section of the Commissioner's 
acceptance or refusal thereof and, in the case of a refusal, 
the reasons therefor.
    (f) If the registrant is not domiciled in the United 
States, the registrant shall designate by a written document 
filed in the Patent and Trademark Office the name and address 
of some 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 address given in the last designation, such notice 
or process may be served upon the Commissioner.


                        renewal of registration


    Sec. 9. (a) Subject to the provisions of section 8, each 
registration may be renewed for periods of 10 years at the end 
of each successive 10-year period following the date of 
registration upon payment of the prescribed fee and the filing 
of a written application, in such form as may be prescribed by 
the Commissioner. Such application may be made at any time 
within 1 year before the end of each successive 10-year period 
for which the registration was issued or renewed, or it may be 
made within a grace period of 6 months after the end of each 
successive 10-year period, upon payment of a fee and surcharge 
prescribed therefor. If any application filed during the grace 
period is deficient, the deficiency may be corrected within the 
time prescribed after notification of the deficiency, upon 
payment of a surcharge prescribed therefor.
    (b) If the Commissioner refuses to renew the registration, 
the Commissioner shall notify the registrant of the 
Commissioner's refusal and the reasons therefor.
    (c) If the registrant is not domiciled in the United 
States, the registrant shall designate by a written document 
filed in the Patent and Trademark Office the name and address 
of some 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 address given in the last designation, such notice 
or process may be served upon the Commissioner.


                               assignment


    Sec. 10. (a) A registered mark or a mark for which an 
application to register has been filed shall be assignable with 
the good will of the business in which the mark is used, or 
with that part of the good will of the business connected with 
the use of and symbolized by the mark. Notwithstanding the 
preceding sentence, no application to register a mark under 
section 1(b) shall be assignable prior to the filing of an 
amendment under section 1(c) to bring the application into 
conformity with section 1(a) or the filing of the verified 
statement of use under section 1(d), except for an assignment 
to a successor to the business of the applicant, or portion 
thereof, to which the mark pertains, if that business is 
ongoing and existing. In any assignment authorized by this 
section, it shall not be necessary to include the good will of 
the business connected with the use of and symbolized by any 
other mark used in the business or by the name or style under 
which the business is conducted. Assignments shall be by 
instruments in writing duly executed. Acknowledgment shall be 
prima facie evidence of the execution of an assignment, and 
when the prescribed information reporting the assignment is 
recorded in the Patent and Trademark Office, the record shall 
be prima facie evidence of execution. An assignment shall be 
void against any subsequent purchaser for valuable 
consideration without notice, unless the prescribed information 
reporting the assignment is recorded in the Patent and 
Trademark Office within 3 months after the date of the 
subsequent purchase or prior to the subsequent purchase. The 
Patent and Trademark Office shall maintain a record of 
information on assignments, in such form as may be prescribed 
by the Commissioner.
    (b) An assignee not domiciled in the United States shall 
designate by a written document filed in the Patent and 
Trademark Office the name and address of some 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 address given in the last 
designation, such notice or process may be served upon the 
Commissioner.
          * * * * * * *

                              publication

    Sec. 12. (a) * * *
    (b) If the applicant is found not entitled to registration, 
the examiner shall advise the applicant thereof and of the 
reasons therefor. The applicant shall have a period of six 
months in which to reply or amend his application, which shall 
then be reexamined. This procedure may be repeated until (1) 
the examiner finally refuses registration of the mark or (2) 
the applicant fails for a period of six months to reply or 
amend or appeal, whereupon the application shall be deemed to 
have been abandoned, unless it can be shown to the satisfaction 
of the Commissioner that the delay in responding was 
[unavoidable] unintentional, whereupon such time may be 
extended.
          * * * * * * *
    Sec. 14. A petition to cancel a registration of a mark, 
stating the grounds relied upon, may, upon payment of the 
prescribed fee, be filed as follows by any person who believes 
that he is or will be damaged by the registration of a mark on 
the principal register established by this Act, or under the 
Act of March 3, 1881, or the Act of February 20, 1905:
            (1) Within five years from the date of the 
        registration of the mark under this Act.
            (2) Within five years from the date of publication 
        under section 12(c) hereof of a mark registered under 
        the Act of March 3, 1881, or the Act of February 20, 
        1905.
            (3) At any time if the registered mark becomes the 
        generic name for the goods or services, or a portion 
        thereof, for which it is registered, or is functional, 
        or has been abandoned, or its registration was obtained 
        fraudulently or contrary to the provisions of section 4 
        or of subsection (a), (b), or (c) of section 2 for a 
        registration under this Act, or contrary to similar 
        prohibitory provisions of such prior Acts for a 
        registration under such Acts, or if the registered mark 
        is being used by, or with the permission of, the 
        registrant so as to misrepresent the source of the 
        goods or services on or in connection with which the 
        mark is used. If the registered mark becomes the 
        generic name for less than all of the goods or services 
        for which it is registered, a petition to cancel the 
        registration for only those goods or services may be 
        filed. A registered mark shall not be deemed to be the 
        generic name of goods or services solely because such 
        mark is also used as a name of or to identify a unique 
        product or service. The primary significance of the 
        registered mark to the relevant public rather than 
        purchaser motivation shall be the test for determining 
        whether the registered mark has become the generic name 
        of goods or services on or in connection with which it 
        has been used.
          * * * * * * *

                           TITLE VI--REMEDIES

          * * * * * * *
    Sec. 33. (a) * * *
    (b) To extent that the right to use the registered mark has 
become incontestable under section 15, the registration shall 
be conclusive evidence of the validity of the registered mark 
and of the registration of the mark, of the registrant's 
ownership of the mark, and of the registrant's exclusive right 
to use the registered mark in commerce. Such conclusive 
evidence shall relate to the exclusive right to use the mark on 
or in connection with the goods or services specified in the 
affidavit filed under the provisions of section 15, or in the 
renewal application filed under the provisions of section 9 if 
the goods or services specified in the renewal are fewer in 
number, subject to any conditions or limitations in the 
registration or in such affidavit or renewal application. Such 
conclusive evidence of the righty to use the registered mark 
shall be subject to proof of infringement as defined in section 
32, and shall be subject to the following defenses or defects:
    (1) That the registration or the incontestable right to use 
the mark was obtained fraudulently; or
    (7) That the mark has been or is being used to violate the 
antitrust laws of the United States; or
    (8) That the mark is functional; or
    [(8)] (9) That equitable principles, including laches, 
estoppel, and acquiescence, are applicable.
          * * * * * * *

                  TITLE VIX--INTERNATIONAL CONVENTIONS

    Sec. 44. (a) * * *
          * * * * * * *
    (d) An application for registration of a mark under section 
1, 3, 4, [23, or 44(e) of this Act] or 23 of this Act or under 
subsection (e) of this section filed by a person described in 
subsection (b) of this section who has previously duly filed an 
application for registration of the same mark in one of the 
countries described in subsection (b) shall be accorded the 
same force and effect as would be accorded to the same 
application if filed in the United States on the same date on 
which the application was first filed in such foreign country: 
Provided, That--
            (1) * * *
          * * * * * * *
            (3) the rights required by third parties before the 
        date of the filing of the first application in the 
        foreign country shall in no way be affected by a 
        registration obtained on an applicant filed under [this 
        subsection (d)] this subsection;
            (4) nothing in [this subsection (d)] this 
        subsection shall entitle the owner of a registration 
        granted under this section to sue for acts committed 
        prior to the date on which his mark was registered in 
        this country unless the registration is based on use in 
        commerce.
    In like manner and subject to the same conditions and 
requirements, the right provided in this section may be based 
upon a subsequent regularly filed application in the same 
foreign country, instead of the first filed foreign 
application: Provided, That any foreign application filed prior 
to such subsequent application has been withdrawn, abandoned, 
or otherwise disposed of, without having been laid open to 
public inspection and without leaving any rights outstanding, 
and has not served, nor thereafter shall serve, as a basis for 
claiming a right of priority.
    (e) A mark duly registered in the country of origin of the 
foreign applicant may be registered on the principal register 
if eligible, otherwise on the supplemental register herein 
provided. [The application therefor shall be accompanied by a 
certification or a certified copy of the subsections 
registration in the country of origin of the applicant.] Such 
applicant shall submit, within such time period as may be 
prescribed by the Commissioner, a certification or a certified 
copy of the registration in the country of origin of the 
applicant. The application must state the applicant's bona fide 
intention to use the mark in commerce, but use in commerce 
shall not be required prior to registration.
          * * * * * * *
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