    [United States Statutes at Large, Volume 124, 111th Congress, 2nd Session]
    [From the U.S. Government Publishing Office, www.gpo.gov]

    Public Law 111-146
    111th Congress

    An Act

    To make certain technical and conforming amendments to the Lanham
    Act. <>

    Be it enacted by the Senate and House of Representatives of the
    United States of America in Congress assembled, <>
    SECTION 1. <> SHORT TITLE.

    This Act may be cited as the ``Trademark Technical and Conforming
    Amendment Act of 2010.''.
    SEC. 2. DEFINITION.

    For purposes of this Act, the term ``Trademark Act of 1946'' means
    the Act entitled ``An Act to provide for the registration and protection
    of trademarks used in commerce, to carry out the provisions of certain
    international conventions, and for other purposes'', approved July 5,
    1946 (commonly referred to as the ``Lanham Act''; 15 U.S.C. 1051 et.
    seq).
    SEC. 3. TECHNICAL AND CONFORMING AMENDMENTS.

    (a) Certificates of Registration.--Section 7 of the Trademark Act of
    1946 (15 U.S.C. 1057) is amended--
    (1) by inserting ``United States'' before ``Patent and
    Trademark Office'' each place that term appears;
    (2) in subsection (b), by striking ``registrant's'' each
    place that appears and inserting ``owner's'';
    (3) in subsection (e)--
    (A) by striking ``registrant'' each place that term
    appears and inserting ``owner''; and
    (B) in the third sentence, by striking ``or, if said
    certificate is lost or destroyed, upon a certified copy
    thereof''; and
    (4) by amending subsection (g) to read as follows:

    ``(g) Correction of Patent and Trademark Office Mistake.--
    Whenever <> a material mistake in a registration,
    incurred through the fault of the United States Patent and Trademark
    Office, is clearly disclosed by the records of the Office a certificate
    stating the fact and nature of such mistake shall be issued without
    charge and recorded and a printed copy thereof shall be attached to each
    printed copy of the registration and such corrected registration shall
    thereafter have the same effect as if the same had been originally
    issued in such corrected form, or in the discretion of the Director a
    new certificate of registration may be issued without charge. All
    certificates of correction heretofore issued in accordance with the
    rules of the United States Patent and Trademark Office and the
    registrations to which they are attached shall

    [[Page 67]]

    have the same force and effect as if such certificates and their issue
    had been specifically authorized by statute.''.

    (b) Incontestability of Right To Use Mark Under Certain
    Conditions.--Section 15 of the Trademark Act of 1946 (15 U.S.C. 1065) is
    amended--
    (1) by striking ``right of the registrant'' and inserting
    ``right of the owner'';
    (2) by amending paragraph (1) to read as follows:
    ``(1) there has been no final decision adverse to the
    owner's claim of ownership of such mark for such goods or
    services, or to the owner's right to register the same or to
    keep the same on the register; and''; and
    (3) in paragraph (2), by inserting ``United States'' before
    ``Patent and Trademark Office''.

    (c) Appeal to Courts.--Section 21 of the Trademark Act of 1946 (15
    U.S.C. 1071) is amended--
    (1) by inserting ``United States'' before ``Patent and
    Trademark Office'' each place that term appears;
    (2) in subsection (a)(1), by inserting ``or section 71''
    after ``section 8''; and
    (3) in subsection (b)(4), by striking ``If there be'' and
    inserting ``If there are''.

    (d) Conforming Requirements for Affidavits.--
    (1) Duration, affidavits and fees.--Section 8 of the
    Trademark Act of 1946 (15 U.S.C. 1058) is amended to read as
    follows:
    ``SEC. 8. DURATION, AFFIDAVITS AND FEES.

    ``(a) Time Periods for Required Affidavits.--Each registration shall
    remain in force for 10 years, except that the registration of any mark
    shall be canceled by the Director unless the owner of the registration
    files in the United States Patent and Trademark Office affidavits that
    meet the requirements of subsection (b), within the following time
    periods:
    ``(1) Within the 1-year period immediately preceding the
    expiration of 6 years following the date of registration under
    this Act or the date of the publication under section 12(c).
    ``(2) Within the 1-year period immediately preceding the
    expiration of 10 years following the date of registration, and
    each successive 10-year period following the date of
    registration.
    ``(3) The owner may file the affidavit required under this
    section within the 6-month grace period immediately following
    the expiration of the periods established in paragraphs (1) and
    (2), together with the fee described in subsection (b) and the
    additional grace period surcharge prescribed by the Director.

    ``(b) Requirements for Affidavit.--The affidavit referred to in
    subsection (a) shall--
    ``(1)(A) state that the mark is in use in commerce;
    ``(B) set forth the goods and services recited in the
    registration on or in connection with which the mark is in use
    in commerce;
    ``(C) be accompanied by such number of specimens or
    facsimiles showing current use of the mark in commerce as may be
    required by the Director; and
    ``(D) be accompanied by the fee prescribed by the Director;
    or

    [[Page 68]]

    ``(2)(A) set forth the goods and services recited in the
    registration on or in connection with which the mark is not in
    use in commerce;
    ``(B) include a showing that any nonuse is due to special
    circumstances which excuse such nonuse and is not due to any
    intention to abandon the mark; and
    ``(C) be accompanied by the fee prescribed by the Director.

    ``(c) Deficient Affidavit.--If any submission filed within the
    period set forth in subsection (a) is deficient, including that the
    affidavit was not filed in the name of the owner of the registration,
    the deficiency may be corrected after the statutory time period, within
    the time prescribed after notification of the deficiency. Such
    submission shall be accompanied by the additional deficiency surcharge
    prescribed by the Director.
    ``(d) Notice of Requirement.--Special notice of the requirement for
    such affidavit shall be attached to each certificate of registration and
    notice of publication under section 12(c).
    ``(e) Notification of Acceptance or Refusal.--The Director shall
    notify any owner who files any affidavit required by this section of the
    Director's acceptance or refusal thereof and, in the case of a refusal,
    the reasons therefor.
    ``(f) Designation of Resident for Service of Process and Notices.--
    If the owner is not domiciled in the United States, the owner may
    designate, by a document filed in the United States Patent and Trademark
    Office, the name and address of a person resident in the United States
    on whom may be served notices or process in proceedings affecting the
    mark. Such notices or process may be served upon the person so
    designated by leaving with that person or mailing to that person a copy
    thereof at the address specified in the last designation so filed. If
    the person so designated cannot be found at the last designated address,
    or if the owner does not designate by a document filed in the United
    States Patent and Trademark Office the name and address of a person
    resident in the United States on whom may be served notices or process
    in proceedings affecting the mark, such notices or process may be served
    on the Director.''.
    (2) Affidavits and fees.--Section 71 of the Trademark Act of
    1946 (15 U.S.C. 1141k) is amended to read as follows:
    ``SEC. 71. DURATION, AFFIDAVITS AND FEES.

    ``(a) Time Periods for Required Affidavits.--Each extension of
    protection for which a certificate 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 unless the holder of the
    international registration files in the United States Patent and
    Trademark Office affidavits that meet the requirements of subsection
    (b), within the following time periods:
    ``(1) Within the 1-year period immediately preceding the
    expiration of 6 years following the date of issuance of the
    certificate of extension of protection.
    ``(2) Within the 1-year period immediately preceding the
    expiration of 10 years following the date of issuance of the
    certificate of extension of protection, and each successive 10-
    year period following the date of issuance of the certificate of
    extension of protection.

    [[Page 69]]

    ``(3) The holder may file the affidavit required under this
    section within a grace period of 6 months after the end of the
    applicable time period established in paragraph (1) or (2),
    together with the fee described in subsection (b) and the
    additional grace period surcharge prescribed by the Director.

    ``(b) Requirements for Affidavit.--The affidavit referred to in
    subsection (a) shall--
    ``(1)(A) state that the mark is in use in commerce;
    ``(B) set forth the goods and services recited in the
    extension of protection on or in connection with which the mark
    is in use in commerce;
    ``(C) be accompanied by such number of specimens or
    facsimiles showing current use of the mark in commerce as may be
    required by the Director; and
    ``(D) be accompanied by the fee prescribed by the Director;
    or
    ``(2)(A) set forth the goods and services recited in the
    extension of protection on or in connection with which the mark
    is not in use in commerce;
    ``(B) include a showing that any nonuse is due to special
    circumstances which excuse such nonuse and is not due to any
    intention to abandon the mark; and
    ``(C) be accompanied by the fee prescribed by the Director.

    ``(c) Deficient Affidavit.--If any submission filed within the
    period set forth in subsection (a) is deficient, including that the
    affidavit was not filed in the name of the holder of the international
    registration, the deficiency may be corrected after the statutory time
    period, within the time prescribed after notification of the deficiency.
    Such submission shall be accompanied by the additional deficiency
    surcharge prescribed by the Director.
    ``(d) Notice of Requirement.--Special notice of the requirement for
    such affidavit shall be attached to each certificate of extension of
    protection.
    ``(e) Notification of Acceptance or Refusal.--The Director shall
    notify the holder of the international registration who files any
    affidavit required by this section of the Director's acceptance or
    refusal thereof and, in the case of a refusal, the reasons therefor.
    ``(f) Designation of Resident for Service of Process and Notices.--
    If the holder of the international registration of the mark is not
    domiciled in the United States, the holder may designate, by a document
    filed in the United States Patent and Trademark Office, the name and
    address of a person resident in the United States on whom may be served
    notices or process in proceedings affecting the mark. Such notices or
    process may be served upon the person so designated by leaving with that
    person or mailing to that person a copy thereof at the address specified
    in the last designation so filed. If the person so designated cannot be
    found at the last designated address, 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 resident in the United States on
    whom may be served notices or process in proceedings affecting the mark,
    such notices or process may be served on the Director.''.
    SEC. 4. STUDY AND REPORT.

    (a) In General.--Not later than 1 year after the date of enactment
    of this Act, the Secretary of Commerce, in consultation with

    [[Page 70]]

    the Intellectual Property Enforcement Coordinator, shall study and
    report to the Committee on the Judiciary of the Senate and the Committee
    on the Judiciary of the House of Representatives on--
    (1) the extent to which small businesses may be harmed by
    litigation tactics by corporations attempting to enforce
    trademark rights beyond a reasonable interpretation of the scope
    of the rights granted to the trademark owner; and
    (2) the best use of Federal Government services to protect
    trademarks and prevent counterfeiting.

    (b) Recommendations.--The study and report required under paragraph
    (1) shall also include any policy recommendations the Secretary of
    Commerce and the Intellectual Property Enforcement Coordinator deem
    appropriate.

    Approved March 17, 2010.

    LEGISLATIVE HISTORY--S. 2968:
    ---------------------------------------------------------------------------

    CONGRESSIONAL RECORD, Vol. 156 (2010):
    Jan. 28, considered and passed Senate.
    Mar. 3, considered and passed House.