[Senate Report 107-46]
[From the U.S. Government Publishing Office]



                                                       Calendar No. 101
107th Congress                                                   Report
                                 SENATE
 1st Session                                                     107-46

======================================================================



 
                 THE MADRID PROTOCOL IMPLEMENTATION ACT

                                _______
                                

                 July 25, 2001.--Ordered to be printed

                                _______
                                

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

                              R E P O R T

                         [To accompany S. 407]

    The Committee on the Judiciary, to which was referred the 
bill (S. 407) 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, with an amendment, and 
recommends that the bill, as amended, 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......................................7
.................................................................
 VI. Cost estimate....................................................8
.................................................................
VII. Regulatory impact statement......................................9
.................................................................
VIII.Changes in existing law.........................................10


                               I. Purpose

    The purpose of S. 407 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. 407, the ``Madrid Protocol Implementation Act,'' was 
introduced by Senator Leahy and Senator Hatch on February 27, 
2001. Given the noncontroversial contents of S. 407 and the 
Committee's consideration of this legislation in the prior 
Congress, the Committee selected not to conduct any hearings on 
the matter. The Judiciary Committee met in executive session on 
July 19, 2001, 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 and 106th Congresses by Senator Leahy as S. 2191 and 
S. 671, respectively. On February 10, 2000, the Senate 
Judiciary Committee favorably reported S. 671, and filed a 
report on March 27, 2000. No further action was taken. The 
House of Representatives passed this legislation in the 103rd, 
105th, and 106th Congresses.
    In the 107th Congress, on March 14, 2001, the House of 
Representatives passed H.R. 741, which is identical to S. 407, 
and the bill was referred to the Senate Committee on the 
Judiciary.

                            III. Discussion

A. Background

    Trademark protection under Federal law provides for the 
legal protection of particular signs, including 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 can constitute a significant part of the value 
of a product or service and often figure largely in the 
advertising of products and services. A 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 increasingly 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 or 
region in which protection is sought. Registering in multiple 
countries is a time-consuming, complicated and expensive 
process and is especially burdensome for smaller American 
companies seeking international trademark protection. In too 
many cases, 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 InternationalRegistration 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 
not been a signatory to the Madrid Agreement. The United States 
originally declined to join the Madrid Agreement because it contained 
obligations deemed inimical to American intellectual property 
interests, such as the requirement that all applications under the 
Agreement be completed in French.

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; as noted above, applications under 
the Agreement are 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 permits 
an extended 18-month period in which a country may 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 modifies the so-called ``central 
attack'' provision of the Madrid Agreement. Under the Madrid 
Agreement, if during the first 5 years of an international 
registration, the national application or registration upon 
which the international registration is dependent is limited or 
cancelled, all rights obtained in the member countries of the 
Madrid Agreement based on extensions of that registration are 
similarly limited or cancelled. This is known as ``central 
attack.'' With the Protocol, in the event of a ``central 
attack'' on the home mark and the subsequent cancellation of 
the international registration, the international registration 
may be ``transformed'' into a series of national applications 
in the designated countries, all of which will retain the 
original filing date (i.e. the international registration date) 
and any priority claimed. So, a U.S. trademark owner whose mark 
is cancelled in the United States will still be able to retain 
a priority in other countries in which it is seeking 
protection. After 5 years, the loss of the home registration 
has no effect on the international registration which remains 
in force in all countries to which it had been extended.
    The Protocol took effect in April 1996, and currently binds 
52 countries, but not the United States. Without U.S. 
participation, the Protocol may never achieve its purpose of 
providing a one-stop ``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. 407, nor to the substantive 
portions of the underlying Protocol. The fact that the Senate 
did not act on the bill in previous Congresses reflects the 
fact that since 1994 the State Department had 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 
Madrid Agreement. Pursuant to the Protocol, intergovernmental 
organizations like the European Community would receive a 
separate vote, 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 has 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 Sates 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 Community is permitted a 
vote, but the European Community together, with its Member 
States can cast no more votes than the number of Member States.
    Moreover, the 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, other intellectual 
property 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 Community 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. More 
recently, the Hague Agreement Concerning the International 
Registration of Industrial Designs and the Patent Law Treaty 
(2000), do not allow intergovernmental organizations to receive 
an extra vote in the Assembly. 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 resolved to the satisfaction 
of the U.S. Department of State, the administration forwarded 
the Madrid Protocol to the Senate for its advice and consent in 
September, 2000. By its terms, the amendments to the Trademark 
Act made by S. 407 would not take effect until thedate the 
Madrid Protocol enters into the force with respect to the United States 
or 1 year after the date of enactment of the act, whichever occurs 
later. During the 106th Congress, Senate accession to the Protocol and 
passage of implementing language were unfortunately stalled as a result 
of a private dispute over a mark (``Havana Club'') between a rum 
distiller (Bacardi) and a French concern (Pernod), which had formed a 
joint venture with the Cuban Government. This dispute prompted an 
effort to insert language in the instrument of accession accompanying 
the Protocol clarifying that the treaty could not be interpreted to 
honor the expropriation of a mark registered to a third party. As a 
result, the Senate neither ratified the Protocol nor acted on the 
implementing language of S. 671.

C. The need for S. 407, the Madrid Protocol Implementation Act

    S. 407 serves as the implementing legislation for the 
Madrid Protocol. It 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 marks based on such applications.
    Passage of S. 407 will help to ensure timely accession to 
and implementation of the Madrid Protocol, and 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 the 
international 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- and 
medium-sized businesses which may otherwise lack the resources 
to acquire world-wide protection for their trademarks.

                       IV. Vote of the Committee

    The Senate Committee on the Judiciary, with a quorum 
present met on Thursday, July 19, 2001, to consider the 
``Madrid Protocol Implementation Act.'' The Committee 
considered a substitute amendment offered by Chairman Leahy and 
Ranking Member Hatch to S. 407 and approved the bill, so 
amended, 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.
    The amendment of Senators Leahy and Hatch approved by the 
Committee made the following technical and clarifying changes 
to S. 407: (1) in section 60, the definitions are put in 
alphabetical order; (2) in paragraph 60(10), which provides a 
definition of the term ``international register,'' the 
unnecessary word ``such'' and the unnecessary phrase 
``regardless of the medium which contains the data'' are 
deleted; (3) in section 65(b), no substantive change is made 
but the language is clarified that where the office of origin 
for a trademark application or registration is the U.S. Patent 
and Trademark Office, the international registration based on 
that U.S. application or registration, based on that U.S. 
application or registration, cannot be used to obtain the 
benefits of the Madrid Protocol in the United States; (4) in 
section 67, no substantive change is made but the language is 
clarified that where the holder of an international 
registration with a request for extension of protection to the 
United States is entitled to claim priority under article 
4(A)(3) of the Paris Convention for the Protection of 
Industrial Property, either as part of its international 
application or as part of a later recording of the extension of 
protection, the claimed date of priority must be within 6 
months of the international registration date or of the date of 
recording; (5) in section 68(2), the unnecessary sentence 
``Unless successfully opposed, the request for extension of 
protection shall not be refused,'' which implies that the 
extension of protection could not be refused on examination 
grounds, is deleted; (6) in section 68(3), the unnecessary 
phrase ``under this section'' is deleted to clarify that the 
extension of protection should not be refused on the ground 
that the mark has not been used in commerce; (7) in section 
68(4), the unnecessary phrase ``under this section'' is deleted 
to clarify that the extension of protection will be refused to 
any mark not registrable on the Principal Register and that the 
grounds for such refusal are not limited to section 68(4); (8) 
in section 68(d), the designation of an agent for service of 
process is modified to mirror language on the designation of 
agents for service of process that already exists in other 
parts of the Trademark Act; (9) in section 71(a)(2)(B), the 
words ``the surcharge'' are substituted for the words ``an 
additional fee'' to reflect the language used in regard to 
affidavits of use filed by U.S. registrants under section 8 of 
the Trademark Act; (10) in section 71, subsection (c) is added 
to provide the holder of an extension of protection with the 
same notice that is given to the owner of a U.S. registration 
where its section 8 affidavit is accepted or rejected, since 
the affidavit required of the holder of an extension of 
protection by section 71 is equivalent to the section 8 
affidavit and therefore the same type of notification is 
appropriate; (11) in section 71, subsection (d) is added 
concerning the designation of an agent for service of process 
to reflect identical language that occurs in section 8 the 
Trademark Act where the identical kind of affidavit is being 
filed; and (12) in section 74, the language has been redrafted 
to permit the owner of an international registration, who is 
also the owner of a U.S. registration, to maintain the U.S. 
registration if the owner so chooses.

                     V. Section-by-Section Analysis

    Section 1.--Short Title. This section provides a short 
title: the ``Madrid Protocol Implementation Act.''
    Section 2.--Provisions to implement the Protocol Relating 
to the Madrid Agreement Concerning the International 
Registration of Marks. This section amends the ``Trademark Act 
of 1946'' by adding a new ``Title XII--The Madrid Protocol,'' 
which contains new sections 60 through 74 with the following:
    The owner of a registration granted by the U.S. 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 Director is charged with the duty of 
transmitting the application to the WIPO International Bureau.
    The Director 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 Director believes that an applicant is entitled 
to an extension of protection, the mark will be published in 
the ``Official Gazette of the Patent and Trademark Office.'' 
This serves notice to third parties who oppose the extension. 
Unless an opposition and/or other court proceeding conducted 
pursuant to existing law is successful, the request for 
extension may not be refused. If the request for extension of 
protection is denied, however, the Director notifies the 
International Bureau of such action and sets forth the 
reason(s) why. The Director must also apprise the International 
Bureau of other relevant information pertaining to requests for 
extension of protection within designated time periods.
    If an extension for protection is granted, the PTO issues a 
certificate attesting to such action, and publishes notice of 
the certificate in the ``Official Gazette.'' Holders of 
extension certificates thereafter enjoy protection equal to 
that of other owners of registration listed on the Principal 
Register of the PTO.
    I the International Bureau notifies the PTO of a 
cancellation of some or all of the goods and services listed in 
the international registration, the PTO 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 in 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 on or in 
connection with which the mark is in use in commerce and 
attaching a specimen or facsimile showing the current use of 
the mark in commerce, or setting forth that any nonuse is due 
to special circumstances which excuse such nonuse and is not 
due to any intention to abandon the mark.
    The right to an extension of protection may be assigned to 
a third party so long as that person is a national of, or is 
domiciled in, or has a ``bonafide'' and effective industrial or 
commercial establishment 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 (such as 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 enters into force with respect to the 
United States or 1 year after the date of enactment of the act, 
whichever occurs later.

                           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. 407, 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 24, 2001.
Hon. Patrick J. Leahy,
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. 407, 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 Ken Johnson.
            Sincerely,
                                          Barry B. Anderson
                                    (For Dan L. Crippen, Director).
Enclosure.

               congressional budget office cost estimate


S. 407--Madrid Protocol Implementation Act

    S. 407 would amend the Trademark Act of 1946 to facilitate 
the implementation of the Madrid Protocol, an international 
agreement that would allow companies to obtain trademark 
protection in several countries through a single application.
    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 Mandates 
Reform 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. 407 would fit within that exclusion because 
it would implement the Madrid Protocol, an international 
agreement requiring ratification by the Senate.
    S. 407 would take effect when the Madrid Protocol is 
ratified by the Senate, or one year after the bill's date of 
enactment, whichever comes later. For this estimate, CBO 
assumes that the bill will take effect at the beginning of 
2003. Based on information from the Patent and Trademark Office 
(PTO), CBO expects that, in order to implement the bill, the 
PTO would need to upgrade certain computer systems so that the 
agency could better exchange information with the international 
trademark office that administers the Protocol. CBO estimates 
that the agency would incur net costs of less than $500,000 for 
this purpose during the 2003-2004 period, subject to the 
availability of appropriated funds.
    United States participation in the Madrid Protocol also 
could cause a rise in the number of trademark applications 
received by the PTO. The PTO's costs for processing such 
applications are fully funded by filing fees paid by the 
applicants. Those fees are collected and spent under authority 
provided in annual appropriation acts. Because the income from 
fees offsets the costs of processing applications, CBO 
estimates that an increase in the number of trademark 
applications would not have a significant net budgetary impact.
    On March 13, 2001, CBO transmitted a cost estimate for H.R. 
741, the Madrid Protocol Implementation Act, as ordered 
reported by the House Committee on the Judiciary on March 8, 
2001. This bill is very similar to S. 407, except that H.R. 741 
would take effect as soon as the Madrid Protocol is ratified by 
the Senate. For that estimate, CBO assumed that H.R. 741 would 
take effect in 2001. Therefore, CBO estimated that implementing 
the bill would increase the net costs of the PTO by less than 
$500,000 per year during the 2001-2002 period, not the 2003-
2004 period as under S. 407.
    The CBO staff contact for this estimate is Ken Johnson. The 
estimate was approved by Peter H. Fontaine, Deputy 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. 407 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. 407, 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.

    In this title:
          (1) 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.
          (2) 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.
          (3) Contracting party.--The term ``Contracting 
        Party'' means any country or inter-governmental 
        organization that is a party to the Madrid Protocol.
          (4) Date of recordal.--The term ``date of recordal'' 
        means the date on which a request for extension of 
        protection, filed after an international registration 
        is granted, is recorded on the International Register.
          (5) 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 himself or herself, or the firm, 
                corporation, or association in whose behalf he 
                or she 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 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, 
                firm, corporation, or association, to cause 
                confusion, mistake, or deception.
          (6) Extension of protection.--The term ``extension of 
        protection'' means the protection resulting from an 
        international registration that extends to the United 
        States at the request of the holder of the 
        international registration, in accordance with the 
        Madrid Protocol.
          (7) 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.
          (8) International application.--The term 
        ``international application'' means an application for 
        international registration that is filed under the 
        Madrid Protocol.
          (9) International bureau.--The term ``International 
        Bureau'' means the International Bureau of the World 
        Intellectual Property Organization.
          (10) International register.--The term 
        ``International Register'' means the official 
        collection of data concerning international 
        registrations maintained by the International Bureau 
        that the Madrid Protocol or its implementing 
        regulations require or permit to be recorded.
          (11) International registration.--The term 
        ``international registration'' means the registration 
        of a mark granted under the Madrid Protocol
          (12) International registration date.--The term 
        ``international registration date'' means the date 
        assigned to the international registration by the 
        International Bureau.
          (13) 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.
          (14) Notification of refusal.--The term 
        ``notification of refusal'' means the notice sent by 
        the United States Patent and Trademark Office 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 United States Patent and Trademark 
        Office, including any extension of time granted under 
        section 13.

SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES APPLICATIONS 
                    OR REGISTRATIONS.

    (a) In General.--The owner of a basic application pending 
before the United States Patent and TrademarkOffice, or the 
owner of a basic registration granted by the United States Patent and 
Trademark Office may file an international application by submitting to 
the United States Patent and Trademark Office a written application in 
such form, together with such fees, as may be prescribed by the 
Director.
    (b) Qualified Owners.--A qualified owner, under subsection 
(a), shall--
          (1) be a national of the United States;
          (2) be domiciled in the United States; or
          (3) have a real and effective industrial or 
        commercial establishment in the United States.

SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.

    (a) Certification Procedure.--Upon the filing of an 
application for international registration and payment of the 
prescribed fees, the Director 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.
    (b) Transmittal.--Upon examination and certification of the 
international application, the Director shall transmit the 
international application to be 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 Director 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 United States 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 United States 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 Director.

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 the United States Is Office of Origin.--Where the 
United States Patent and Trademark Office is the office of 
origin for a trademark application or registration, any 
international registration based on such application or 
registration cannot be used to obtain the benefits of the 
Madrid Protocol in the United States.

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 United States 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 pursuant to section 
        67.

SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO 
                    THE UNITED STATES.

    The holder of an international registration with a request 
for an extension of protection to the United States shall be 
entitled to claim a date of priority based on a right of 
priority within the meaning of Article 4 of the Paris 
Convention for the Protection of Industrial Property if--
          (1) the request for extension of protection contains 
        a claim of priority; and
          (2) the date of international registration or the 
        date of the 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 for 
        the Protection of Industrial Property).

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 Director shall cause the mark to be published 
in the Official Gazette of the United States 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.
    (3) Extension of protection shall not be refused on the 
ground that the mark has not been used in commerce.
    (4) Extension of protection shall be refused 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 Director 
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 Director 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 Director has sent a notification of the 
possibility of opposition under paragraph (1)(C), the Director 
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 Director after the expiration of the time periods 
set forth in paragraph (1) and (2), as the case may be.
    (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 may 
designate, by a document filed in the United States Patent and 
Trademark Office, the name and address of a person residing in 
the United States on whom notices or process in proceedings 
affecting the mark may be served. Such notices or process may 
be served upon the person designated by leaving with that 
person, or mailing to that person, a copy thereof at the 
address specified in the last designation filed. If the person 
designated cannot be found at the address given in the last 
designation, or if the holder does not designate by a document 
filed in the United States Patent and Trademark Office the name 
and address of a person residing in the United States for 
service of notices or process in proceedings affecting the 
mark, the notice or process may be served on the Director.

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 
Director shall issue a certificate of extension of protection 
pursuant to the request and shallcause notice of such 
certificate of extension of protection to be published in the Official 
Gazette of the United States 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 United States 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 Director 
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 the 
International Bureau, whichever date applies, and, if the 
extension of protection enjoyed priority under section 67 of 
this title, shall enjoy the same priority. Such as 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 pursuant to 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 Director--
          (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 Director, 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 Director; 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 Director, 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 holderof 
the international registration files in the United States Patent and 
Trademark Office an affidavit under subsection (b) together with a fee 
prescribed by the Director: 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 the surcharge 
                prescribed by the Director.
    (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 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 extension of protection.
    (c) Notification.--The Director shall notify the holder of 
the international registration who files 1 of the affidavits of 
the Director's acceptance or refusal thereof and, in a case of 
a refusal, the reason therefor.
    (d) Service of Notice or process.--The holder of the 
international registration of the mark may designate, by a 
document filed in the United States Patent and Trademark 
Office, the name and address of a person residing in the United 
States on whom notices or process in proceedings affecting the 
mark may be served. Such notices of 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 designated 
cannot be found at the address given in the last designation, 
or if the holder does not designate by a document filed in the 
United States Patent and Trademark Office the name and address 
of a person residing in the United States for service of 
notices or process in proceedings affecting the mark, the 
notice or process may be served on the Director.

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 
Director issues the certificate of the extension of protection 
under section 69, except as provided in section 74.

SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

    When a United States registration and a subsequently issued 
certificate of extension of protection to the United States are 
owned by the same person, identify the same mark, and list the 
same goods or services, the extension of protection shall have 
the same rights that accrued to the registration prior to 
issuance of the certificate of extension of protection.

                                
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