[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.