[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.

                                  
