July 23, 1997 Received; read twice and referred to the Committee on the Judiciary

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,

SECTION 1. SHORT TITLE.

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

SEC. 2. REFERENCE TO THE TRADEMARK ACT OF 1946.

For purposes of this Act, 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'.

SEC. 3. APPLICATION FOR REGISTRATION; VERIFICATION.

(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.'.

SEC. 4. REVIVAL OF ABANDONED APPLICATION.

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'.

SEC. 5. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT OF 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) The owner of the registration may make the submissions required by this

section, or correct any deficiency in a timely filed submission, within a

grace period of 6 months after the end of the applicable time period set

forth in subsection (a). Such submission must be accompanied by a surcharge

prescribed therefor. If any submission required by this section filed during

the grace period is deficient, the deficiency may be corrected within the

time prescribed after notification of the deficiency. Such submission must

be accompanied by a surcharge prescribed therefor.

`(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.'.

SEC. 6. RENEWAL OF REGISTRATION.

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 during the grace

period 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.'.

SEC. 7. RECORDING ASSIGNMENT OF MARK.

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.'.

SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REGISTRATION.

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.'.

SEC. 9. MISCELLANEOUS AMENDMENTS.

(a) CANCELLATION OF FUNCTIONAL MARKS- Section 14(3) of the Trademark Act of

1946 (15 U.S.C. 1064(3)) is amended by inserting `or is functional,' before

`or has been abandoned'.

(b) INCONTESTABILITY DEFENSES- Section 33(b) of the Trademark Act of 1946

(15 U.S.C. 1115(b)) is amended--

(1) by redesignating paragraph (8) as paragraph (9); and

(2) by inserting after paragraph (7) the following:

`(8) That the mark is functional; or'.

(c) REMEDIES IN CASES OF DILUTION OF FAMOUS MARKS-

(1) INJUNCTIONS- (A) Section 34(a) of the Trademark Act of 1946 (15

U.S.C. 1116(a)) is amended in the first sentence by striking `section

43(a)' and inserting `subsection (a) or (c) of section 43'.

(B) Section 43(c)(2) of the Trademark Act of 1946 (15 U.S.C. 1125(c)(2))

is amended in the first sentence by inserting `as set forth in section

34' after `relief'.

(2) DAMAGES- Section 35(a) of the Trademark Act of 1946 (15 U.S.C.

1117(a)) is amended in the first sentence by striking `or a violation

under section 43(a),' and inserting `a violation under section 43(a), or

a willful violation under section 43(c),'.

(3) DESTRUCTION OF ARTICLES- Section 36 of the Trademark Act of 1946 (15

U.S.C. 1118) is amended in the first sentence--

(A) by striking `or a violation under section 43(a),' and inserting

`a violation under section 43(a), or a willful violation under

section 43(c),'; and

(B) by inserting after `in the case of a violation of section 43(a)'

the following: `or a willful violation under section 43(c)'.

SEC. 10. EFFECTIVE DATE.

This Act and the amendments made by this Act 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.

Passed the House of Representatives July 22, 1997.

Attest:

ROBIN H. CARLE,

Clerk.

END