[Senate Report 106-249]
[From the U.S. Government Publishing Office]
Calendar No. 433
106th Congress Report
SENATE
2d Session 106-249
======================================================================
MADRID PROTOCOL IMPLEMENTATION ACT
_______
March 27, 2000.--Ordered to be printed
_______
Mr. Hatch, from the Committee on the Judiciary, submitted the following
R E P O R T
[To accompany S. 671]
The Committee on the Judiciary, to which was referred the
bill (S. 671) to amend the Trademark Act of 1946 to provide for
the registration and protection of trademarks used in commerce,
in order to carry out provisions of certain international
conventions, and for other purposes, having considered the
same, reports favorably thereon, without amendment, and
recommends that the bill do pass.
CONTENTS
Page
I. Purpose..........................................................1
II. Legislative history..............................................1
III. Discussion.......................................................2
IV. Vote of the Committee............................................5
V. Section-by-section analysis......................................5
VI. Cost estimate....................................................7
VII. Regulatory impact statement......................................8
VIII.Changes in existing law..........................................8
I. Purpose
The purpose of S. 671 is to implement the Protocol Relating
to the Madrid Agreement Concerning the International
Registration of Marks, adopted at Madrid, Spain, on June 27,
1989, which provides for an international registration system
for trademarks.
II. Legislative History
S. 671, the ``Madrid Protocol Implementation Act,'' was
introduced on March 19, 1999. The Judiciary Committee met in
executive session on February 10, 2000, to consider the bill. A
reporting quorum being present, the bill was approved by voice
vote and ordered favorably reported to the Senate.
This legislation was first introduced in the 103rd Congress
as S. 977 by Senator Dennis DeConcini and was reintroduced in
the 105th Congress by Senator Leahy as S. 2191. The House of
Representatives passed this legislation in the 103rd and 105th
Congresses, but after referral to the Senate Committee on the
Judiciary, no further action was taken. In the 106th Congress,
the House of Representatives passed an identical bill, H.R.
769, on April 13, 1999, which was received in the Senate on
April 14, 1999.
III. Discussion
A. Background
Trademark protection under federal law provides for the
legal protection of particular words or symbols that have been
used on particular goods or services. Trademark protection
generally entitles the owner of a trademark to protection
against others' use of identical or similar marks which are
likely to result in consumer confusion or to dilute the
distinctive quality of a famous mark.
Trademarks constitute a significant part of the value of a
product and figure largely in the advertising of the product. A
widely recognized mark reflects the popularity of a product and
often is prominently featured in a company's advertising. The
protection of the mark is therefore of paramount importance to
the affected company. Understandably, an individual or company
using another company's mark could significantly diminish the
market share of a particular product or compromise the goodwill
derived from ownership of the mark.
Since products are marketed and sold on an international
scale, protection in countries other than the United States
improves the competitiveness of American business. Each country
has its own laws determining the level of protection for
trademarks and the type of marks that can be registered for
particular products. American citizens seeking protection for
their trademarks outside the United States are currently
required to register separately in each country in which
protection is sought. Registering in multiple countries is a
time-consuming, complicated and expensive process--a process
which places a disproportionate burden on smaller American
companies seeking international trademark protection. In too
many cases, these small- and medium-sized businesses are forced
to forego effective worldwide protection of their marks and to
settle instead for the limited protection afforded by trademark
registration in only a few select countries.
As with many intellectual property rights, there are
international agreements relating to the registration and
protection of trademarks. Since 1891, the Madrid Agreement
Concerning the International Registration of Marks (``Madrid
Agreement'') has provided an international registration system
operated under the auspices of the International Bureau of the
World Intellectual Property Organization (WIPO). Although the
Madrid Agreement offers significant benefits in terms of
increased efficiency and reduced costs in the registration
process, the United States has never been a signatory to the
Madrid Agreement. TheUnited States originally declined to join
the agreement because it contained terms deemed inimical to American
intellectual property interests.
B. Madrid Protocol
On June 27, 1989, at a Diplomatic Conference in Madrid,
Spain, the parties to the Madrid Agreement signed the Protocol
relating to the Madrid Agreement concerning the International
Registration of Marks (``Madrid Protocol'' or ``Protocol'').
The United States was an observer and advisor to these talks
but not a participant in the negotiations since only
signatories could amend the Madrid Agreement through the
Protocol. Subsequent talks, at which the United States has
participated as an observer, have been devoted to developing
regulations for the implementation of the Protocol for those
countries and entities which have and will become signatories
to it.
Practically speaking, the Protocol ``updated'' the Madrid
Agreement, in many respects by conforming its contents to
existing provisions in U.S. law. For example, under the
Protocol, applications for international trademark extension
can be completed in English; formerly, applications were
required to be completed in French. Moreover, under the
Protocol, an international application may be based on a
country of origin application--as opposed to an actual
registration--thus allowing U.S. applicants to seek
international protection at the same time they file a U.S.
application, including an application based on a bona fide
intention to use a mark in commerce. The Protocol also adopts
an extended 18-month period in which a country can refuse to
give effect to an international registration and allows for
higher filing and renewal fees, both of which conform with the
effective pendency and fee structure of the U.S. Patent and
Trademark Office. Finally, the Protocol does away with the so-
called ``central attack'' provision of the Madrid Agreement,
under which the cancellation of an international registration
in the country of origin would result in a cancellation of the
mark in all international registrations. Under the Protocol, a
canceled international registration may be converted into a
national application in a given country and retain the benefit
of its original effective filing date, meaning that a U.S.
applicant whose mark is canceled in the U.S. will not
automatically forfeit international protection. In sum, the
Madrid Protocol provides all the benefits of the Madrid
System's one-stop shop for worldwide trademark protection,
without requiring any change in substantive American trademark
law.
The Protocol took effect in April 1996, and currently binds
43 countries, but not the United States. Without U.S.
participation, the Protocol may never achieve its purpose of
providing a one-stop, inexpensive ``shop'' for trademark
applicants who, by filing one application in their country and
in their language, can receive protection from each member
country of the Protocol.
There is no opposition to S. 671, nor to the substantive
portions of the underlying Protocol. The fact that the
Judiciary Committee did not act on the bill in previous
Congresses reflects the fact that since 1994 the State
Department has been trying to resolve differences between the
Administration and the European Community (EC) regarding the
voting rights of intergovernmental members of the Protocol in
the Assembly established by the agreement. Pursuant to the
Protocol, the European Commission receives a separate vote as
an intergovernmental organization, in addition to the votes of
the Member States of the European Community. While it may be
argued that the existence of a supranational European trademark
issued by the Office for Harmonization in the Internal Market
(``European Trademark Office'') justifies the additional vote,
the State Department has opposed this proviso as a
contravention of the democratic concept of one vote per
country. State Department officials also expressed concern that
this voting structure may establish a precedent for deviation
from the one-vote-one-state principle in future international
agreements.
This dispute over the voting rights of the European
Community and participation of an intergovernmental
organization in this intellectual property agreement appears to
have been resolved in accordance with the U.S. position.
Specifically, on February 2, 2000, the Council of the European
Union and the Representatives of the Governments of the Member
States meeting within the Council approved a Statement of
Intent in which the European Community and its Member States
affirmed their commitment to a consensus-based decision process
within the Assembly. In those cases in which a vote is called
for, the European Community and its Member States will endeavor
to conduct prior consultations with the United States and other
like-minded participants in an effort to reach a common
position. Should a common position not be possible in a given
instance, the European Community and its Member States have
agreed ``to use their voting rights in such a way as to ensure
that the number of votes cast by the European Community and its
Member States does not exceed the number of the European
Community's Member States.'' This agreement is similar to that
reflected in the agreement establishing the World Trade
Organization, in which the European Commission is permitted a
vote, but can cast no more votes than the number of member
states.
Moreover, the fear concern that the Protocol's voting
rights provisions would form a precedent for future
international agreements has been allayed by intervening
precedents. Since the adoption of the Madrid Protocol, three
treaties have been negotiated without administrative provisions
similar to those contained in the Madrid Protocol. The
Trademark Law Treaty, adopted on October 27, 1994, for example,
contains no such voting provisions, despite proposals advanced
by the European Commission that were similar to the Madrid
Protocol provisions. Neither the WIPO Copyright Treaty nor the
WIPO Performances and Phonograms Treaty, which were completed
in 1996 and implemented domestically in the 105th Congress,
permit the European Commission an extra vote. Thus, to the
extent the Madrid Protocol established any sort of precedent
with respect to voting rights issues, that precedent has been
effectively vitiated at this point.
With the voting rights issue apparently resolved to the
satisfaction of the State Department, it is expected that the
administration will now finally forward the Madrid Protocol to
the Senate for its advice and consent.
C. The need for S. 671, the Madrid Protocol Implementation Act
S. 671 serves as the implementing legislation for the
Madrid Protocol. It is identical to measures introduced in
prior Congresses. In short, the bill makes no changes to
substantive U.S. trademark law, but rather establishes the
structural and procedural mechanisms to accommodate the filing,
acceptance, and examination of international applications in
the U.S. Patent and Trademark Office, and the registration,
maintenance, and cancellation of marks based on such
applications.
While the administration has still not forwarded the treaty
to the Senate for ratification, thereby allowing the United
States to become a member of the Protocol, it is expected to do
so in the near future. Passage of S. 671 will help to ensure
timely accession to and implementation of the Madrid Protocol,
and it will send a clear signal to the international community,
U.S. businesses, and trademark owners that Congress is serious
about our Nation becoming part of a low-cost, efficient system
to promote theinternational registration of marks. U.S.
membership in the Protocol would assist American businesses in
protecting their proprietary names and brand-name goods while saving
money, time, and effort. This is especially critical to small
businesses which may otherwise lack the resources to acquire world-wide
protection for their trademarks.
Technical amendments will be offered upon Senate
consideration of the bill to reflect language changes inter
alia, adopted in the ``American Inventors Protection Act of
1999,'' Public Law 106-113, to identify the head of the U.S.
Patent and Trademark Office (USPTO), and to reflect uniformly
the name of the USPTO.
IV. Vote of the Committee
The Senate Committee on the Judiciary, with a quorum
present met on Thursday, February 10, 2000, at 10:00 a.m., to
consider the ``Madrid Protocol Implementation Act.'' The
Committee considered S. 671 by voice vote, with no objection
noted, and ordered the bill to be reported favorably to the
Senate, with a recommendation that the bill do pass.
V. Section-by-Section Analysis
Section 1. Short title.--This section provides a short
title: the ``Madrid Protocol Implementation Act.''
Section 2. Amendments to the Trademark Act of 1946.--This
section amends the ``Trademark Act of 1946'' by adding a new
title XII which contains the following provisions:
The owner of a registration granted by the Patent and
Trademark Office (PTO) or the owner of a pending application
before the PTO may file an international application for
trademark protection at the PTO.
After receipt of the appropriate fee and inspection of the
application, the PTO Commissioner is charged with the duty of
transmitting the application to the WIPO International Bureau.
The Commissioner is also obliged to notify the
International Bureau whenever the international application has
been ``restricted, abandoned, canceled, or has expired,''
within a specified time period.
The holder of an international registration may request an
extension of its registration by filing with the PTO or the
International Bureau.
The holder of an international registration is entitled to
the benefits of extension in the United States to the extent
necessary to give effect to any provision of the Protocol;
however, an extension of an international registration shall
not apply to the United States if the PTO is the office of
origin with respect to that mark.
The holder of an international registration with an
extension of protection in the United States may claim a date
of priority based on certain conditions.
If the PTO Commissioner believes that an applicant is
entitled to an extension of protection, he or she publishes the
mark in the ``Official Gazette of the Patent and Trademark
Office.'' This serves notice to third parties who oppose the
extension. Unless an official protest conducted pursuant to
existing law is successful, the request for extension may not
be refused. If the request for extension is denied, however,
the Commissioner notifies the International Bureau of such
action and sets forth the reason(s) why. The Commissioner must
also uprise the International Bureau of other relevant
information pertaining to requests for extension within
designated time periods.
If an extension for protection is granted, the Commissioner
issues a certificate attesting to such action, and publishes
notice of the certificate in the ``Gazette.'' Holders of
extension certificates thereafter enjoy protection equal to
that of other owners of registration listed on the Principal
Register of the PTO.
If the International Bureau notifies the PTO of a
cancellation of some or all of the goods and services listed in
the international registration, the Commissioner must cancel an
extension of protection with respect to the same goods and
services as of the date on which the international registration
was canceled. Similarly, if the International Bureau does not
renew an international registration, the corresponding
extension of protection in the United States shall cease to be
valid. Finally, the holder of an international registration
canceled in whole or in part by the International Bureau may
file an application for the registration of the same mark for
any of the goods and services to which the cancellation applies
that were covered by an extension of protection to the United
States based on that international registration.
The holder of an extension of protection must, within
designated time periods and under certain conditions, file an
affidavit setting forth the relevant goods or services covered
and any explanation as to why their nonuse in commerce is
related to ``special circumstances,'' along with a filing fee.
The right to an extension of protection may be assigned to
a third party so long as that individual is a national of, or
is domiciled in, or has a ``bonafide'' business located in a
country that is a member of the Protocol; or has such a
business in a country that is a member of an intergovernmental
organization (like the EC) belonging to the Protocol.
An extension of protection conveys the same rights as an
existing registration for the same mark if the extension and
existing registration are owned by the same person, and
extension of protection and the existing registration cover the
same goods or services, and the certificate of extension is
issued after the date of the existing registration.
Section 3. Effective date.--This section states that the
effective date of the act shall commence on the date on which
the Madrid Protocol takes effect in the United States.
VI. Cost Estimate
In compliance with paragraph 11(a) of rule XXVI of the
standing Rules of the Senate, the Committee sets forth, with
respect to the bill, S. 671, 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, February 22, 2000.
Hon. Orrin G. Hatch,
Chairman, Committee on the Judiciary,
U.S. Senate, Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for S. 671, the Madrid
Protocol Implementation Act.
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contact is Mark Hadley.
Sincerely,
Barry B. Anderson
(For Dan L. Crippen, Director).
Enclosure.
congressional budget office cost estimate
S. 671--Madrid Protocol Implementation Act
S. 671 would amend the Trademark Act of 1946 in order to
facilitate the implementation of the Madrid Protocol, an
international agreement that provides for the possibility of
obtaining trademark protection in several jurisdictions by a
single registration. The bill specifies administrative
procedures that would be followed by companies applying for
international protection of trademarks.
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. Section 4 of the Unfunded Reform
Mandates Act excludes from the application of that act any
legislative provisions that are necessary for the ratification
or implementation of international treaty obligations. CBO has
determined that S. 671 would fit within that exclusion because
it would implement the Madrid Protocol, an international
agreement requiring ratification by the Senate.
S. 671 would become effective at the same time as the
Madrid Protocol, which the Senate has not yet ratified.
Assuming the Madrid Protocol enters into force in 2000, CBO
estimates that, subject to the availability of appropriated
funds, the United States Patent and Trademark Office (PTO)
would incur net costs of less than $500,000 in 2000 to
establish a computer database.
United States participation in the Madrid Protocol would
likely result in an increase in the number of trademark
applications received by the PTO. The PTO's costs for
processing trademark applications are fully funded by filing
fees paid by the applicants. Such fees are collected and spent
under authority provided in annual appropriation acts. Because
income from fees offsets the costs of processing applications,
CBO estimates that a change in the number of trademark
applications would have no net budgetary impact.
On April 1, 1999, CBO transmitted a cost estimate of H.R.
769, the Madrid Protocol Implementation Act, as ordered
reported by the House Committee on the Judiciary on March 24,
1999. That act is nearly identical to S. 671, and the estimated
costs are the same.
The CBO staff contact for this estimate is Mark Hadley. The
estimate was approved by Robert A. Sunshine, Assistant Director
for Budget Analysis.
VII. Regulatory Impact Statement
In compliance with paragraph 11(b)(1), rule XXVI of the
Standing Rules of the Senate, the Committee, after due
consideration, concludes that S. 671 will not have significant
regulatory impact.
VIII. Changes in Existing Law
In compliance with paragraph 12 of rule XXVI of the
Standing Rules of the Senate, changes in existing law made by
S. 671, as reported, are shown as follows (existing law
proposed to be omitted is enclosed in black brackets, new
matter is printed in italic, and existing law in which no
change is proposed is shown in roman):
THE TRADEMARK ACT OF 1946
* * * * * * *
Sec. 51. All certificates of registration based upon
applications for registration pending in the Patent and
Trademark Office on the effective date of the Trademark Law
Revision Act of 1988 shall remain in force for a period of 10
years.
TITLE XII--THE MADRID PROTOCOL
SEC. 60. DEFINITIONS.
For purposes of this title:
(1) Madrid protocol.--The term ``Madrid Protocol''
means the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks,
adopted at Madrid, Spain, on June 27, 1989.
(2) Basic application.--The term ``basic
application'' means the application for the
registration of a mark that has been filed with an
Office of a Contracting Party and that constitutes the
basis for an application for the international
registration of that mark.
(3) Basic registration.--The term ``basic
registration'' means the registration of a mark that
has been granted by an Office of a Contracting Party
and that constitutes the basis for an application for
the international registration of that mark.
(4) Contracting party.--The term ``Contracting
Party'' means any country or inter-governmental
organization that is a party to the Madrid Protocol.
(5) Date of recordal.--The term ``date of recordal''
means the date on which a request for extension of
protection that is filed after an international
registration is granted is recorded on the
International Register.
(6) Declaration of bona fide intention to use the
mark in commerce.--The term ``declaration of bona fide
intention to use the mark in commerce'' means a
declaration that is signed by the applicant for, or
holder of, an international registration who is seeking
extension of protection of a mark to the United States
and that contains a statement that--
(A) the applicant or holder has a bona fide
intention to use the mark in commerce,
(B) the person making the declaration
believes that person, or the firm, corporation,
or association in whose behalf that person
makes the declaration, to be entitled to use
the mark in commerce, and
(C) no other person, firm, corporation, or
association, to the best of such person's
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 person, firm,
corporation, of association, to cause
confusion, or to cause mistake, or to deceive.
(7) Extension of protection.--The term ``extension of
protection'' means the protection resulting from an
international registration that extends to a
Contracting Party at the request of the holder of the
international registration, in accordance with the
Madrid Protocol.
(8) Holder of an international registration.--A
``holder'' of an international registration is the
natural or juristic person in whose name the
international registration is recorded on the
International Register.
(9) International application.--The term
``international application'' means an applicant for
international registration that is filed under the
Madrid Protocol.
(10) International bureau.--The term ``International
Bureau'' means the International Bureau of the World
Intellectual Property Organization.
(11) International register.--The term
``International Register'' means the official
collection of such data concerning international
registrations maintained by the International Bureau
that the Madrid Protocol or its implementing
regulations require or permit to be recorded,
regardless of the medium which contains such data.
(12) International registration.--The term
``international registration'' means the registration
of a mark granted under the Madrid Protocol.
(13) International registration date.--The term
``international registration date'' means the date
assigned to the international registration by the
International Bureau.
(14) Notification of refusal.--The term
``notification of refusal'' means the notice sent by an
Office of a Contracting Party to the International
Bureau declaring that an extension of protection cannot
be granted.
(15) Office of a contracting party.--The term
``Office of a Contracting Party'' means--
(A) the office, or governmental entity, of a
Contracting Party that is responsible for the
registration of marks, or
(B) the common office, or governmental
entity, of more than 1 Contracting Party that
is responsible for the registration of marks
and is so recognized by the International
Bureau.
(16) Office of origin.--The term ``office of origin''
means the Office of a Contracting Party with which a
basic application was filed or by which a basic
registration was granted.
(17) Opposition period.--The term ``opposition
period'' means the time allowed for filing an
opposition in the Patent and Trademark Office,
including any extension of time granted under section
13.
SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES APPLICATIONS
OR REGISTRATIONS.
The owner of a basic application pending before the Patent
and Trademark Office, or the owner of a basic registration
granted by the Patent and Trademark Office, who--
(1) is a national of the United States,
(2) is domiciled in the United States, or
(3) has a real and effective industrial or commercial
establishment in the United States,
may file an international application by submitting to the
Patent and Trademark Office a written application in such form,
together with such fees, as may be prescribed by the
Commissioner.
SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
Upon the filing of an application for international
registration and payment of the prescribed fees, the
Commissioner shall examine the international application for
the purpose of certifying that the information contained in the
international application corresponds to the information
contained in the basic application or basic registration at the
time of the certification. Upon examination and certification
of the international application, the Commissioner shall
transmit the international application to the International
Bureau.
SEC 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A
BASIC APPLICATION OR BASIC REGISTRATION.
With respect to an international application transmitted to
the International Bureau under section 62, the Commissioner
shall notify the International Bureau whenever the basic
application or basic registration which is the basis for the
international application has been restricted, abandoned, or
canceled, or has expired, with respect to some or all of the
goods and services listed in the international registration--
(1) within 5 years after the international
registration date; or
(2) more than 5 years after the international
registration date if the restriction, abandonment, or
cancellation of the basic application or basic
registration resulted from an action that began before
the end of that 5-year period.
SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO
INTERNATIONAL REGISTRATION.
The holder of an international registration that is based
upon a basic application filed with the Patent and Trademark
Office or a basic registration granted by the Patent and
Trademark Office may request an extension of protection of its
international registration by filing such a request--
(1) directly with the International Bureau, or
(2) with the Patent and Trademark Office for
transmittal to the International Bureau, if the request
is in such form, and contains such transmittal fee, as
may be prescribed by the Commissioner.
SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO
THE UNITED STATES UNDER THE MADRID PROTOCOL.
(a) In General.--Subject to the provisions of section 68,
the holder of an international registration shall be entitled
to the benefits of extension of protection of that
international registration to the United States to the extent
necessary to give effect to any provision of the Madrid
Protocol.
(b) If United States Is Office of Origin.--An extension of
protection resulting from an international registration of a
mark shall not apply to the United States if the Patent and
Trademark Office is the office of origin with respect to that
mark.
SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN
INTERNATIONAL REGISTRATION TO THE UNITED STATES.
(a) Requirement for Request for Extension of Protection.--A
request for extension of protection of an international
registration to the United States that the International Bureau
transmits to the Patent and Trademark Office shall be deemed to
be properly filed in the United States if such request, when
received by the International Bureau, has attached to it a
declaration of bona fide intention to use the mark in commerce
that is verified by the applicant for, or holder of, the
international registration.
(b) Effect of Proper Filing.--Unless extension of
protection is refused under section 68, the proper filing of
the request for extension of protection under subsection (a)
shall constitute constructive use of the mark, conferring the
same rights as those specified in section 7(c), as of the
earliest of the following:
(1) The international registration date, if the
request for extension of protection was filed in the
international application.
(2) The date of recordal of the request for extension
of protection, if the request for extension of
protection was made after the international
registration date.
(3) The date of priority claimed under section 67.
SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO
THE UNITED STATES.
The holder of an international registration with an
extension of protection to the United States shall be entitled
to claim a date of priority based on the right of priority
within the meaning of Article 4 of the Paris Convention for the
Protection of Industrial Property if--
(1) the international registration contained a claim
of such priority; and
(2)(A) the international application contained a
request for extension of protection to the United
States, or
(B) the date of recordal of the request for extension
of protection to the United States is not later than 6
months after the date of the first regular national
filing (within the meaning of Article 4(A)(3) of the
Paris Convention for the Protection of Industrial
Property) or a subsequent application (within the
meaning of Article 4(C)(4) of the Paris Convention).
SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF
PROTECTION; NOTIFICATION OF REFUSAL.
(a) Examination and Opposition.--(1) A request for
extension of protection described in section 66(a) shall be
examined as an application for registration on the Principal
Register under this Act, and if on such examination it appears
that the applicant is entitled to extension of protection under
this title, the Commissioner shall cause the mark to be
published in the Official Gazette of the Patent and Trademark
Office.
(2) Subject to the provisions of subsection (c), a request
for extension of protection under this title shall be subject
to opposition under section 13. Unless successfully opposed,
the request for extension of protection shall not be refused.
(3) Extension of protection shall not be refused under this
section on the ground that the mark has not been used in
commerce.
(4) Extension of protection shall be refused under this
section to any mark not registrable on the Principal Register.
(b) Notification of Refusal.--If, a request for extension
of protection is refused under subsection (a), the Commissioner
shall declare in a notification of refusal (as provided in
subsection (c)) that the extension of protection cannot be
granted, together with a statement of all grounds on which the
refusal was based.
(c) Notice to International Bureau.--(1) Within 18 months
after the date on which the International Bureau transmits to
the Patent and Trademark Office a notification of a request for
extension of protection, the Commissioner shall transmit to the
International Bureau any of the following that applies to such
request:
(A) A notification of refusal based on an examination
of the request for extension of protection.
(B) A notification of refusal based on the filing of
an opposition to the request.
(C) A notification of the possibility that an
opposition to the request may be filed after the end of
that 18-month period.
(2) If the Commissioner has sent a notification of the
possibility of opposition under paragraph (1)(C), the
Commissioner shall, if applicable, transmit to the
International Bureau a notification of refusal on the basis of
the opposition, together with a statement of all the grounds
for the opposition, within 7 months after the beginning of the
opposition period or within 1 month after the end of the
opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension
of protection is transmitted under paragraph (1) or(2), no
grounds for refusal of such request other than those set forth in such
notification may be transmitted to the International Bureau by the
Commissioner after the expiration of the time periods set forth in
paragraph (1) or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is
not sent to the International Bureau within the time period set
forth in such paragraph, with respect to a request for
extension of protection, the request for extension of
protection shall not be refused and the Commissioner shall
issue a certificate of extension of protection pursuant to the
request.
(d) Designation of Agent for Service of Process.--In
responding to a notification of refusal with respect to a mark,
the holder of the international registration of the mark shall
designate, by a written document filed in the Patent and
Trademark Office, the name and address of a person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be
served upon the person so designated by leaving with that
person, or mailing to that person, a copy thereof at the
address specified in the last designation so filed. If the
person so designated cannot be found at the address given in
the last designation, such notice or process may be served upon
the Commissioner.
SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
(a) Issuance of Extension of Protection.--Unless a request
for extension of protection is refused under section 68, the
Commissioner shall issue a certificate of extension of
protection pursuant to the request and shall cause notice of
such certificate of extension of protection to be published in
the Official Gazette of the Patent and Trademark Office.
(b) Effect of Extension of Protection.--From the date on
which a certificate of extension of protection is issued under
subsection (a)--
(1) such extension of protection shall have the same
effect and validity as a registration on the Principal
Register, and
(2) the holder of the international registration
shall have the same rights and remedies as the owner of
a registration on the Principal Register.
SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE UNITED STATES ON
THE UNDERLYING INTERNATIONAL REGISTRATION.
(a) Effect of Cancellation of International Registration.--
If the International Bureau notifies the Patent and Trademark
Office of the cancellation of an international registration
with respect to some or all of the goods and services listed in
the international registration, the Commissioner shall cancel
any extension of protection to the United States with respect
to such goods and services as of the date on which the
international registration was canceled.
(b) Effect of Failure To Renew International
Registration.--If the International Bureau does not renew an
international registration, the corresponding extension of
protection to the United States shall cease to be valid as of
the date of the expiration of the international registration.
(c) Transformation of an Extension of Protection Into a
United States Application.--The holder of an international
registration canceled in whole or in part by the International
Bureau at the request of the office of origin, under Article
6(4) of the Madrid Protocol, may file an application, under
section 1 or 44 of this Act, for the registration of the same
mark for any of the goods and services to which the
cancellation applies that were covered by an extension of
protection to the United States based on that international
registration. Such an application shall be treated as if it had
been filed on the international registration date or the date
of recordal of the request for extension of protection with
theInternational Bureau, whichever date applies, and, if the extension
of protection enjoyed priority under section 67 of this title, shall
enjoy the same priority. Such an application shall be entitled to the
benefits conferred by this subsection only if the application is filed
not later than 3 months after the date on which the international
registration was canceled, in whole or in part, and only if the
application complies with all the requirements of this Act which apply
to any application filed under section 1 or 44.
SEC. 71. AFFIDAVITS AND FEES.
(a) Required Affidavits and Fees.--An extension of
protection for which a certificate of extension of protection
has been issued under section 69 shall remain in force for the
term of the international registration upon which it is based,
except that the extension of protection of any mark shall be
canceled by the Commissioner--
(1) at the end of the 6-year period beginning on the
date on which the certificate of extension of
protection was issued by the Commissioner, unless
within the 1-year period preceding the expiration of
that 6-year period the holder of the international
registration files in the Patent and Trademark Office
an affidavit under subsection (b) together with a fee
prescribed by the Commissioner; and
(2) at the end of the 10-year period beginning on the
date on which the certificate of extension of
protection was issued by the Commissioner, and at the
end of each 10-year period thereafter, unless--
(A) within the 6-month period preceding the
expiration of such 10-year period the holder of
the international registration files in the
Patent and Trademark Office an affidavit under
subsection (b) together with a fee prescribed
by the Commissioner; or
(B) within 3 months after the expiration of
such 10-year period, the holder of the
international registration files in the Patent
and Trademark Office an affidavit under
subsection (b) together with the fee described
in subparagraph (A) and an additional fee
prescribed by the Commissioner.
(b) Contents of Affidavit.--The affidavit referred to in
subsection (a) shall set forth those goods or services recited
in the extension of protection on or in connection with which
the mark is in use in commerce and the holder of the
international registration shall attach to the affidavit a
specimen or facsimile showing the current use of the mark in
commerce, or shall set forth that any nonuse is due to special
circumstances which excuse suchnonuse 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 extension of
protection.
SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.
An extension of protection may be assigned, together with
the goodwill associated with the mark, only to a person who is
a national of, is domiciled in, or has a bona fide and
effective industrial or commercial establishment either in a
country that is a Contracting Party or in a country that is a
member of an intergovernmental organization that is a
Contracting Party.
SEC. 73. INCONTESTABILITY.
The period of continuous use prescribed under section 15
for a mark covered by an extension of protection issued under
this title may begin no earlier than the date on which the
Commissioner issues the certificate of the extension of
protection under section 69, except as provided in section 74.
SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
An extension of protection shall convey the same rights as
an existing registration for the same mark, if--
(1) the extension of protection and the existing
registration are owned by the same person;
(2) the goods and services listed in the existing
registration are also listed in the extension of
protection; and
(3) the certificate of extension of protection is
issued after the date of the existing registration.