[Congressional Bills 111th Congress]
[From the U.S. Government Publishing Office]
[S. 2968 Enrolled Bill (ENR)]
S.2968
One Hundred Eleventh Congress
of the
United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Tuesday,
the fifth day of January, two thousand and ten
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 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
``(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.
``(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 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.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.