[Congressional Bills 105th Congress]
[From the U.S. Government Publishing Office]
[S. 2193 Enrolled Bill (ENR)]
S.2193
One Hundred Fifth Congress
of the
United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Tuesday,
the twenty-seventh day of January, one thousand nine hundred and ninety-
eight
An Act
To implement the provisions of the Trademark Law Treaty.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,

9f7103a840f22fea897c49c63da1f41ca1c2d1b832f76b9017c25969dc88660b

This title may be cited as the ``Trademark Law Treaty
Implementation Act''.

b03833e0e07a23c66d8b44b6446edcbdd50cd14da8e3af137887d90cac2b7f47

TITLE I

-TRADEMARK LAW TREATY IMPLEMENTATION

For purposes of this title, 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 (15 U.S.C. 1051 et seq.), shall
be referred to as the ``Trademark Act of 1946''.

73ad5f414a8258c1627b5f7946e6ea89cad9ee6c3508582dc610bb5fd8ee4a55

(a) Application for Use of Trademark.--Section 1(a) of the
Trademark Act of 1946 (15 U.S.C. 1051(a)) is amended to read as
follows:
``Section 1. (a)(1) The owner of a trademark used in commerce may
request registration of its trademark on the principal register hereby
established by paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement, in such form
as may be prescribed by the Commissioner, and such number of specimens
or facsimiles of the mark as used as may be required by the
Commissioner.
``(2) The application shall include specification of the
applicant's domicile and citizenship, the date of the applicant's first
use of the mark, the date of the applicant's first use of the mark in
commerce, the goods in connection with which the mark is used, and a
drawing of the mark.
``(3) The statement shall be verified by the applicant and specify
that--
``(A) the person making the verification believes that he or
she, or the juristic person in whose behalf he or she makes the
verification, to be the owner of the mark sought to be registered;
``(B) to the best of the verifier's knowledge and belief, the
facts recited in the application are accurate;
``(C) the mark is in use in commerce; and
``(D) to the best of the verifier's knowledge and belief, no
other person has the right to use such mark in commerce either in
the identical form thereof or in such near resemblance thereto as
to be likely, when used on or in connection with the goods of such
other person, to cause confusion, or to cause mistake, or to
deceive, except that, in the case of every application claiming
concurrent use, the applicant shall--
``(i) state exceptions to the claim of exclusive use; and
``(ii) shall specify, to the extent of the verifier's
knowledge--
``(I) any concurrent use by others;
``(II) the goods on or in connection with which and the
areas in which each concurrent use exists;
``(III) the periods of each use; and
``(IV) the goods and area for which the applicant
desires registration.
``(4) The applicant shall comply with such rules or regulations as
may be prescribed by the Commissioner. The Commissioner shall
promulgate rules prescribing the requirements for the application and
for obtaining a filing date herein.''.
(b) Application for Bona Fide Intention To Use Trademark.--
Subsection (b) of section 1 of the Trademark Act of 1946 (15 U.S.C.
1051(b)) is amended to read as follows:
``(b)(1) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use a trademark
in commerce may request registration of its trademark on the principal
register hereby established by paying the prescribed fee and filing in
the Patent and Trademark Office an application and a verified
statement, in such form as may be prescribed by the Commissioner.
``(2) The application shall include specification of the
applicant's domicile and citizenship, the goods in connection with
which the applicant has a bona fide intention to use the mark, and a
drawing of the mark.
``(3) The statement shall be verified by the applicant and
specify--
``(A) that the person making the verification believes that he
or she, or the juristic person in whose behalf he or she makes the
verification, to be entitled to use the mark in commerce;
``(B) the applicant's bona fide intention to use the mark in
commerce;
``(C) that, to the best of the verifier's knowledge and belief,
the facts recited in the application are accurate; and
``(D) that, to the best of the verifier's knowledge and belief,
no other person has the right to use such mark in commerce either
in the identical form thereof or in such near resemblance thereto
as to be likely, when used on or in connection with the goods of
such other person, to cause confusion, or to cause mistake, or to
deceive.
Except for applications filed pursuant to section 44, no mark shall be
registered until the applicant has met the requirements of subsections
(c) and (d) of this section.
``(4) The applicant shall comply with such rules or regulations as
may be prescribed by the Commissioner. The Commissioner shall
promulgate rules prescribing the requirements for the application and
for obtaining a filing date herein.''.
(c) Consequence of Delays.--Paragraph (4) of section 1(d) of the
Trademark Act of 1946 (15 U.S.C. 1051(d)(4)) is amended to read as
follows:
``(4) The failure to timely file a verified statement of use under
paragraph (1) or an extension request under paragraph (2) shall result
in abandonment of the application, unless it can be shown to the
satisfaction of the Commissioner that the delay in responding was
unintentional, in which case the time for filing may be extended, but
for a period not to exceed the period specified in paragraphs (1) and
(2) for filing a statement of use.''.

56e20d21882c9e37fe418505a0b40987780a24f920b4b483c7a1787d5f523484

Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 1062(b)) is
amended in the last sentence by striking ``unavoidable'' and by
inserting ``unintentional''.

20cbadce8f378885942cb84618ae7f9dff7b498ae6674cbecbfecb25d71d80a3

CONTINUED USE; NOTICE OF COMMISSIONER'S ACTION.
Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is amended
to read as follows:
``duration
``Sec. 8. (a) Each registration shall remain in force for 10 years,
except that the registration of any mark shall be canceled by the
Commissioner for failure to comply with the provisions of subsection
(b) of this section, upon the expiration of the following time periods,
as applicable:
``(1) For registrations issued pursuant to the provisions of
this Act, at the end of 6 years following the date of registration.
``(2) For registrations published under the provisions of
section 12(c), at the end of 6 years following the date of
publication under such section.
``(3) For all registrations, at the end of each successive 10-
year period following the date of registration.
``(b) During the 1-year period immediately preceding the end of the
applicable time period set forth in subsection (a), the owner of the
registration shall pay the prescribed fee and file in the Patent and
Trademark Office--
``(1) an affidavit setting forth those goods or services
recited in the registration on or in connection with which the mark
is in use in commerce and such number of specimens or facsimiles
showing current use of the mark as may be required by the
Commissioner; or
``(2) an affidavit setting forth those goods or services
recited in the registration on or in connection with which the mark
is not in use in commerce and showing that any such nonuse is due
to special circumstances which excuse such nonuse and is not due to
any intention to abandon the mark.
``(c)(1) The owner of the registration may make the submissions
required under this section within a grace period of 6 months after the
end of the applicable time period set forth in subsection (a). Such
submission is required to be accompanied by a surcharge prescribed by
the Commissioner.
``(2) If any submission filed under this section is deficient, the
deficiency may be corrected after the statutory time period and within
the time prescribed after notification of the deficiency. Such
submission is required to be accompanied by a surcharge prescribed by
the Commissioner.
``(d) Special notice of the requirement for affidavits under this
section shall be attached to each certificate of registration and
notice of publication under section 12(c).
``(e) The Commissioner shall notify any owner who files 1 of the
affidavits required by this section of the Commissioner's acceptance or
refusal thereof and, in the case of a refusal, the reasons therefor.
``(f) If the registrant is not domiciled in the United States, the
registrant shall designate by a written document filed in the Patent
and Trademark Office the name and address of some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served
upon the person so designated by leaving with that person or mailing to
that person a copy thereof at the address specified in the last
designation so filed. If the person so designated cannot be found at
the address given in the last designation, such notice or process may
be served upon the Commissioner.''.

24baba0d1ce6b4538dd5011bde33fda88ea63eec34ac2a4c373b68e58318cf7b

Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended
to read as follows:
``renewal of registration
``Sec. 9. (a) Subject to the provisions of section 8, each
registration may be renewed for periods of 10 years at the end of each
successive 10-year period following the date of registration upon
payment of the prescribed fee and the filing of a written application,
in such form as may be prescribed by the Commissioner. Such application
may be made at any time within 1 year before the end of each successive
10-year period for which the registration was issued or renewed, or it
may be made within a grace period of 6 months after the end of each
successive 10-year period, upon payment of a fee and surcharge
prescribed therefor. If any application filed under this section is
deficient, the deficiency may be corrected within the time prescribed
after notification of the deficiency, upon payment of a surcharge
prescribed therefor.
``(b) If the Commissioner refuses to renew the registration, the
Commissioner shall notify the registrant of the Commissioner's refusal
and the reasons therefor.
``(c) If the registrant is not domiciled in the United States, the
registrant shall designate by a written document filed in the Patent
and Trademark Office the name and address of some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served
upon the person so designated by leaving with that person or mailing to
that person a copy thereof at the address specified in the last
designation so filed. If the person so designated cannot be found at
the address given in the last designation, such notice or process may
be served upon the Commissioner.''.

42d109c0a3664894d617e804d5875b8d8b18b66ee2b7e6bb52a64290a291c52d

Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060) is amended
to read as follows:
``assignment
``Sec. 10. (a) A registered mark or a mark for which an application
to register has been filed shall be assignable with the good will of
the business in which the mark is used, or with that part of the good
will of the business connected with the use of and symbolized by the
mark. Notwithstanding the preceding sentence, no application to
register a mark under section 1(b) shall be assignable prior to the
filing of an amendment under section 1(c) to bring the application into
conformity with section 1(a) or the filing of the verified statement of
use under section 1(d), except for an assignment to a successor to the
business of the applicant, or portion thereof, to which the mark
pertains, if that business is ongoing and existing. In any assignment
authorized by this section, it shall not be necessary to include the
good will of the business connected with the use of and symbolized by
any other mark used in the business or by the name or style under which
the business is conducted. Assignments shall be by instruments in
writing duly executed. Acknowledgment shall be prima facie evidence of
the execution of an assignment, and when the prescribed information
reporting the assignment is recorded in the Patent and Trademark
Office, the record shall be prima facie evidence of execution. An
assignment shall be void against any subsequent purchaser for valuable
consideration without notice, unless the prescribed information
reporting the assignment is recorded in the Patent and Trademark Office
within 3 months after the date of the subsequent purchase or prior to
the subsequent purchase. The Patent and Trademark Office shall maintain
a record of information on assignments, in such form as may be
prescribed by the Commissioner.
``(b) An assignee not domiciled in the United States shall
designate by a written document filed in the Patent and Trademark
Office the name and address of some person resident in the United
States on whom may be served notices or process in proceedings
affecting the mark. Such notices or process may be served upon the
person so designated by leaving with that person or mailing to that
person a copy thereof at the address specified in the last designation
so filed. If the person so designated cannot be found at the address
given in the last designation, such notice or process may be served
upon the Commissioner.''.

29bfe3a6ffdaa1eae4e5aa484e9f26f076cc098384b6ce209967e899627728c8

Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is
amended--
(1) in subsection (d)--
(A) by striking ``23, or 44(e) of this Act'' and inserting
``or 23 of this Act or under subsection (e) of this section'';
and
(B) in paragraphs (3) and (4) by striking ``this subsection
(d)'' and inserting ``this subsection''; and
(2) in subsection (e), by striking the second sentence and
inserting the following: ``Such applicant shall submit, within such
time period as may be prescribed by the Commissioner, a
certification or a certified copy of the registration in the
country of origin of the applicant.''.

cb9d6bd143edb6f5f27dee00fa4e2df3f8f0d1d0a77dfd53d2de7ec48edc4299

(a) Registrations in 20-Year Term.--The provisions of section 8 of
the Trademark Act of 1946, as amended by section 105 of this Act, shall
apply to a registration for trademark issued or renewed for a 20-year
term, if the expiration date of the registration is on or after the
effective date of this Act.
(b) Applications for Registration.--This title and the amendments
made by this title shall apply to any application for registration of a
trademark pending on, or filed on or after, the effective date of this
Act.
(c) Affidavits.--The provisions of section 8 of the Trademark Act
of 1946, as amended by section 105 of this Act, shall apply to the
filing of an affidavit if the sixth or tenth anniversary of the
registration, or the sixth anniversary of publication of the
registration under section 12(c) of the Trademark Act of 1946, for
which the affidavit is filed is on or after the effective date of this
Act.
(d) Renewal Applications.--The amendment made by section 106 shall
apply to the filing of an application for renewal of a registration if
the expiration date of the registration for which the renewal
application is filed is on or after the effective date of this Act.

59b6f548d37998a096a90876b7f05379cc0c689bd61308da6304c6ccdbd4f413

This title and the amendments made by this title shall take
effect--
(1) on the date that is 1 year after the date of the enactment
of this Act, or
(2) upon the entry into force of the Trademark Law Treaty with
respect to the United States,
whichever occurs first.

afe8c9a08636503027016a0f3fed0bd8e9bc08a3ce11799b42e195cae5bb371c

(a) In General.--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 (15 U.S.C. 1051 et seq.) (commonly
referred to as the Trademark Act of 1946), is amended as follows:
(1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended--
(A) by inserting ``and,'' after ``specifying the date of
the applicant's first use of the mark in commerce''; and
(B) by striking ``and, the mode or manner in which the mark
is used on or in connection with such goods or services''.
(2) Section 2 (15 U.S.C. 1052) is amended--
(A) in subsection (e)--
(i) in paragraph (3) by striking ``or'' after
``them,''; and
(ii) by inserting before the period at the end the
following: ``, or (5) comprises any matter that, as a
whole, is functional''; and
(B) in subsection (f), by striking ``paragraphs (a), (b),
(c), (d), and (e)(3)'' and inserting ``subsections (a), (b),
(c), (d), (e)(3), and (e)(5)''.
(3) Section 7(a) (15 U.S.C. 1057(a)) is amended in the first
sentence by striking the second period at the end.
(4) Section 14(3) (15 U.S.C. 1064(3)) is amended by inserting
``or is functional,'' before ``or has been abandoned''.
(5) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking
``or device'' and inserting ``, device, any matter that as a whole
is not functional,''.
(6) Section 26 (15 U.S.C. 1094) is amended by striking
``7(c),,'' and inserting ``, 7(c),''.
(7) Section 31 (15 U.S.C. 1113) is amended--
(A) by striking--
``Sec. 31. Fees'';
and
(B) by striking ``(a)'' and inserting ``Sec. 31. (a)''.
(8) Section 32(1) (15 U.S.C. 1114(1)) is amended by striking
``As used in this subsection'' and inserting ``As used in this
paragraph''.
(9) Section 33(b) (15 U.S.C. 1115(b)) is amended--
(A) by redesignating paragraph (8) as paragraph (9); and
(B) by inserting after paragraph (7) the following:
``(8) That the mark is functional; or''.
(10) Section 39(a) (15 U.S.C. 1121(a)) is amended by striking
``circuit courts'' and inserting ``courts''.
(11) Section 42 (15 U.S.C. 1124) is amended by striking ``the
any domestic'' and inserting ``any domestic''.
(12) The Act is amended by striking ``trade-mark'' each place
it appears in the text and the title and inserting ``trademark''.
(b) Effective Date.--The amendments made by this section shall take
effect on the date of enactment of this Act, and shall apply only to
any civil action filed or proceeding before the United States Patent
and Trademark Office commenced on or after such date relating to the
registration of a mark.

a59ec238b5e77566f942836afeb3dc3291a6a724fd5503576a8b356a59b56639

TITLE II

-TECHNICAL CORRECTIONS

PURPOSES.
Section 14 of 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 (15 U.S.C. 1064) (commonly referred
to as the Trademark Act of 1946) is amended by adding at the end the
following: ``Nothing in paragraph (5) shall be deemed to prohibit the
registrant from using its certification mark in advertising or
promoting recognition of the certification program or of the goods or
services meeting the certification standards of the registrant. Such
uses of the certification mark shall not be grounds for cancellation
under paragraph (5), so long as the registrant does not itself produce,
manufacture, or sell any of the certified goods or services to which
its identical certification mark is applied.''.

33faac664c3940860a45873def9fdaa1efc7e86111fb0bfc0ecdebc4f724ca36

TITLE III

-MISCELLANEOUS PROVISIONS

(a) In General.--The Commissioner of Patents and Trademarks shall
study the issues surrounding the protection of the official insignia of
federally and State recognized Native American tribes. The study shall
address at least the following issues:
(1) The impact on Native American tribes, trademark owners, the
Patent and Trademark Office, any other interested party, or the
international legal obligations of the United States, of any change
in law or policy with respect to--
(A) the prohibition of the Federal registration of
trademarks identical to the official insignia of Native
American tribes;
(B) the prohibition of any new use of the official insignia
of Native American tribes; and
(C) appropriate defenses, including fair use, to any claims
of infringement.
(2) The means for establishing and maintaining a listing of the
official insignia of federally or State recognized Native American
tribes.
(3) An acceptable definition of the term ``official insignia''
with respect to a federally or State recognized Native American
tribe.
(4) The administrative feasibility, including the cost, of
changing the current law or policy to--
(A) prohibit the registration, or prohibit any new uses of
the official insignia of State or federally recognized Native
American tribes; or
(B) otherwise give additional protection to the official
insignia of federally and State recognized Native American
tribes.
(5) A determination of whether such protection should be
offered prospectively or retrospectively and the impact of such
protection.
(6) Any statutory changes that would be necessary in order to
provide such protection.
(7) Any other factors which may be relevant.
(b) Comment and Report.--
(1) Comment.--Not later than 60 days after the date of
enactment of this Act, the Commissioner shall initiate a request
for public comment on the issues identified and studied by the
Commissioner under subsection (a) and invite comment on any
additional issues that are not included in such request. During the
course of the public comment period, the Commissioner shall use any
appropriate additional measures, including field hearings, to
obtain as wide a range of views as possible from Native American
tribes, trademark owners, and other interested parties.
(2) Report.--Not later than September 30, 1999, the
Commissioner of Patents and Trademarks shall complete the study
under this section and submit a report including the findings and
conclusions of the study to the chairman of the Committee on the
Judiciary of the Senate and the chairman of the Committee on the
Judiciary of the House of Representatives.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.

5e7ba02a025fdf57e3db6913b2678a53b6e38a2c576ec1482880e9ab408f920b

Trademark Law Treaty Implementation Act

Other Sections

TITLE I

TITLE II

TITLE III

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