[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2129 Engrossed in House (EH)]
103d CONGRESS
2d Session
H. R. 2129
_______________________________________________________________________
AN ACT
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.
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 ``Madrid Protocol Implementation
Act''.
SEC. 2. PROVISIONS TO IMPLEMENT THE PROTOCOL RELATING TO THE MADRID
AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF
MARKS.
The Act entitled ``An Act to provide for the registration and
protection of trade-marks used in commerce, to carry out the provisions
of certain international conventions, and for other purposes'',
approved July 5, 1946, as amended (15 U.S.C. 1051 and following)
(commonly referred to as the ``Trademark Act of 1946'') is amended by
adding after section 51 the following new title:
``TITLE XII--THE MADRID PROTOCOL
``SEC. 60. DEFINITIONS.
``For purposes of this title:
``(1) 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.
``(2) 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.
``(3) 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.
``(4) Contracting party.--The term `Contracting Party'
means any country or inter-governmental organization that is a
party to the Madrid Protocol.
``(5) Date of recordal.--The term `date of recordal' means
the date on which a request for extension of protection that is
filed after an international registration is granted is
recorded on the International Register.
``(6) 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, or to cause mistake, or to deceive.
``(7) Extension of protection.--The term `extension of
protection' means the protection resulting from an
international registration that extends to a Contracting Party
at the request of the holder of the international registration,
in accordance with the Madrid Protocol.
``(8) 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.
``(9) International application.--The term `international
application' means an application for international
registration that is filed under the Madrid Protocol.
``(10) International bureau.--The term `International
Bureau' means the International Bureau of the World
Intellectual Property Organization.
``(11) International register.--The term `International
Register' means the official collection of such data concerning
international registrations maintained by the International
Bureau that the Madrid Protocol or its implementing regulations
require or permit to be recorded, regardless of the medium
which contains such data.
``(12) International registration.--The term `international
registration' means the registration of a mark granted under
the Madrid Protocol.
``(13) International registration date.--The term
`international registration date' means the date assigned to
the international registration by the International Bureau.
``(14) Notification of refusal.--The term `notification of
refusal' means the notice sent by an Office of a Contracting
Party 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 Patent
and Trademark Office, including any extension of time granted
under section 13.
``SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES
APPLICATIONS OR REGISTRATIONS.
``The owner of a basic application pending before the Patent and
Trademark Office, or the owner of a basic registration granted by the
Patent and Trademark Office, who--
``(1) is a national of the United States,
``(2) is domiciled in the United States, or
``(3) has a real and effective industrial or commercial
establishment in the United States,
may file an international application by submitting to the Patent and
Trademark Office a written application in such form, together with such
fees, as may be prescribed by the Commissioner.
``SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
``Upon the filing of an application for international registration
and payment of the prescribed fees, the Commissioner 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. Upon examination and
certification of the international application, the Commissioner shall
transmit the international application to 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 Commissioner 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 cancelled, 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 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 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
Commissioner.
``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 United States is Office of Origin.--An extension of
protection resulting from an international registration of a mark shall
not apply to the United States if the Patent and Trademark Office is
the office of origin with respect to that mark.
``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 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 an extension of
protection to the United States shall be entitled to claim a date of
priority based on the right of priority within the meaning of Article 4
of the Paris Convention for the Protection of Industrial Property if--
``(1) the international registration contained a claim of
such priority; and
``(2)(A) the international application contained a request
for extension of protection to the United States, or
``(B) the date of 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).
``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 Commissioner shall cause
the mark to be published in the Official Gazette of the 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. Unless successfully opposed, the request for
extension of protection shall not be refused.
``(3) Extension of protection shall not be refused under this
section on the ground that the mark has not been used in commerce.
``(4) Extension of protection shall be refused under this section
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 Commissioner 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 Commissioner 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 Commissioner has sent a notification of the
possibility of opposition under paragraph (1)(C), the Commissioner
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 Commissioner
after the expiration of the time periods set forth in paragraph (1) or
(2), as the case may be.
``(4) If a notification specified in paragraph (1) or (2) is not
sent to the International Bureau within the time period set forth in
such paragraph, with respect to a request for extension of protection,
the request for extension of protection shall not be refused and the
Commissioner shall issue a certificate of extension of protection
pursuant to the request.
``(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 shall designate, by a written
document filed in the 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 address given in the last designation, such
notice or process may be served upon the Commissioner.
``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 Commissioner
shall issue a certificate of extension of protection pursuant to the
request and shall cause notice of such certificate of extension of
protection to be published in the Official Gazette of the 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 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 Commissioner 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 cancelled.
``(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
cancelled 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 an 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 cancelled by the Commissioner--
``(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 Commissioner, 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 Commissioner; 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 Commissioner, 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 holder of the
international registration files in the Patent and
Trademark Office an affidavit under subsection (b)
together with a fee prescribed by the Commissioner; 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 an additional fee
prescribed by the Commissioner.
``(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.
``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 Commissioner issues the
certificate of the extension of protection under section 69, except as
provided in section 74.
``SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
``An extension of protection shall convey the same rights as an
existing registration for the same mark, if--
``(1) the extension of protection and the existing
registration are owned by the same person;
``(2) the goods and services listed in the existing
registration are also listed in the extension of protection;
and
``(3) the certificate of extension of protection is issued
after the date of the existing registration.''.
SEC. 3. EFFECTIVE DATE.
Subject to the satisfactory resolution of the issues relating to
voting rights of member nations under the Madrid Protocol, this Act
shall take effect on the date on which the Madrid Protocol enters into
force with respect to the United States.
Passed the House of Representatives October 3, 1994.
Attest:
Clerk.
103d CONGRESS
2d Session
H. R. 2129
_______________________________________________________________________
AN ACT
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.