[Pages S6573-S6580]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

By Mr. HATCH (for himself and Mr. Leahy):
S. 2193. A bill to implement the provisions of the Trademark Law
Treaty; to the Committee on the Judiciary.

Trademark Law Treaty Implementation Act

Mr. HATCH. Mr. President, I rise to introduce the Trademark Law
Treaty Implementation Act of 1998. This legislation makes necessary
changes in our domestic trademark law and procedures to ensure that we
are in compliance when we ratify the treaty, which appears more likely
this year than previously. The Trademark Law Treaty was done and signed
at Geneva in October of 1994, and entered into force in 1996.
The obligations under the Trademark Law Treaty legislation will
require some relatively minor changes to U.S. trademark practice, but
will bring significant improvements in the trademark practices of a
number of important countries around the world in which U.S. trademark
owners seek protection. The required changes will eliminate
complexities and simplify the process of obtaining, renewing, and
managing trademark assets for American firms marketing their products
and services around the world.
Countries around the world have a number of varying requirements for
filing trademark applications, effecting changes of ownership of
trademark registrations, and other procedures associated with managing
trademark assets. These differences cause considerable

[[Page S6574]]

aggravation and expense to trademark owners seeking to protect their
marks around the world. Many of these procedures and requirements
imposed by foreign countries are non-substantive and highly technical.
In addition, many of these requirements in the various procedures of
foreign trademark offices impose very significant cost burdens, both in
official fees to be paid to local trademark offices, as well as agent's
fees for fulfilling the various requirements. For example, many
countries require that signatures on applications for powers of
attorney be notarized, authenticated, and legalized. This very
expensive and time consuming procedure is prohibited under the Treaty
in all cases except where the registrant is surrendering a
registration.
The Treaty eliminates these conflicting and expensive practices by
setting forth a list of maximum requirements which a member State can
impose for various actions. Specifically, the Treaty sets forth maximum
requirements for: the contents of a trademark application; the content
of a power of attorney; the elements necessary for an application to
receive a filing date; a request to record a change in the name or
address of a trademark owner; and, a request to renew a trademark
registration. These requirements are implemented through the adoption
of model forms for trademark applicants and owners to use which must be
accepted by every member State. While a member need not impose all of
the requirements or elements listed, it cannot demand the inclusion of
any additional requirements or elements in respect of a particular
action.
There are several other guarantees mandated by the Treaty that will
benefit trademark applicants and owners. Under the Treaty, countries
will have to register and protect service marks, as well as goods
marks, an important consideration to the U.S. service economy, which
has many valuable service marks, such as Marriott and American
Airlines. Applicants will be able to file for protection under multiple
classifications for goods and services, which will mature into multiple
class registrations. No longer will trademark owners be forced to make
a separate filing for each power of attorney; one general power will
suffice. Member countries are precluded from considering goods or
services as being similar to each other simply on the ground that they
appear in the same class of the NICE classification. Moreover, a
request to change the name or address of a trademark owner or a request
to correct a mistake in a trademark registration may not be refused
without giving the trademark owner an opportunity to comment.
As I indicated, the Trademark Law Treaty Implementation Act of 1998
makes only minor changes in our domestic trademark law. These changes
include: the elimination of the requirement for a statement of the
manner in which a mark is used or intended to be used in connection
with the goods or services identified in the application; the
elimination of the requirement that the applicant verify an
application; the adoption of a grace period of at least six months for
the filing of a renewal application; the elimination of a declaration
or evidence concerning the use of a mark in connection with the filing
of a renewal application; and, the elimination of a requirement to file
a copy of the actual assignment document as a condition for recording
the assignment of a trademark registration.
This bill will also harmonize and simplify the procedural
requirements under the Trademark Act of 1946. Sections 8 and 9 will be
amended to establish a similar period of one year prior to the end of
the applicable time period, along with a grace period of six months
after that period, for filing both affidavits of use and renewal
applications. While it separates the ten-year affidavit of use from the
renewal application, as required by the Treaty, the bill permits them
both to be filed during the same time period which will benefit
trademark applicants.
The Trademark Law Treaty Implementation Act of 1998 will help
American companies protect their trademark assets in markets around the
world thereby facilitating their ability to compete. At the same time,
the changes it makes in U.S. trademark law are made in a manner that
will assist American trademark owners protect their marks in this
country.
Mr. President, I hope my colleagues will support this legislation
which is so important to American trademark owners.
I ask unanimous consent that the text of the bill and an explanatory
section by section analysis be printed in the Record.
There being no objection, the items were ordered to be printed in the
Record, as follows:

S. 2193

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.

[[Page S6575]]

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)(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.''.

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 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.''.

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. TRANSITION PROVISIONS.

(a) Registrations in 20-Year Term.--The provisions of
section 8 of the Trademark Act of 1946, as amended by section
5 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 Act and the
amendments made by this Act 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 5 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 6
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.

[[Page S6576]]

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.
____

Section-by-Section Analysis

Section 1. SHORT TITLE

This section provides a short title: ``Trademark Law Treaty
Implementation Act.''

Section 2. REFERENCE TO THE TRADEMARK ACT OF 1946

This section provides that the Act entitle ``An Act to
provide for the registration and protection of trademarks
used in commerce, to carry out the provision of certain
international conventions, and for other purposes'', approved
July 5, 1946, as amended (15 U.S.C 1051 et. seq.) shall be
referred to as the ``Trademark Act of 1946''.

Section 3. APPLICATION FOR REGISTRATION; VERIFICATION

Summary of Section 3
This section amends subsections 1(a) (Application for Use)
and 1(b) (Application for Intent to Use) of the Trademark Act
of 1946 (15 U.S.C. 1051(a) and 1051(b)) to create a clear
distinction between the written application, the form of
which may be prescribed by the Commissioner, and the
declaration pertaining to applicant's use or intention to use
the mark, the substance of which is detailed in the
respective subsections; to require that the declaration
pertaining to use or intention to use be verified by the
applicant; to authorize the Commissioner to promulgate rules
prescribing both the elements of the application, in addition
to those specified in the proposed provision, and those
elements necessary for a filing date; to omit the requirement
in the written application for a statement of the ``mode or
manner'' in which the mark is used or intended to be used in
connection with the specified goods or services; and to
clarify and modernize the language of the subsections, as
appropriate. In addition, an amendment is made to subsection
1(d) (15 U.S.C. 1051(d)) to clarify that an application may
be revived after a notice of allowance is issued.
Applications under the Trademark Law Treaty and Existing U.S.
Law
With the goal of simplifying and harmonizing the
registration process worldwide, Article 3(1) of the Trademark
Law Treaty (``Treaty'' or ``TLT'') establishes a
comprehensive list of indications or elements that may be
required in an application to register a trademark or service
mark (``mark''). This list permits a Contracting Party to the
Treaty (``Party'') to require, inter alia, a signature and
declarations of use and intention to use a mark. The list
does not permit a Party to require, inter alia, a statement
of the mode or manner in which the mark is used, or intended
to be used, in connection with the goods or services
specified in the application. Article 3(4) of the Treaty
obligates a Party that requires a signature to permit either
the applicant or his representative to sign the application,
except that a Party may require declarations of use and
intention to use a mark to be signed by the applicant.
The existing subsections 1(a) and 1(b) of the Trademark Act
of 1946 (15 U.S.C. 1051(a)) and 1051(b)) require,
respectively, declarations pertaining to use and intention to
use a mark and require verification by the applicant of the
written application, which includes the aforementioned
declarations. Under the terms of the Treaty, the United
States may continue to require the aforementioned
declarations and may require verification by the applicant of
such declarations, but may not require verification by the
applicant of the written application. Thus, it becomes
necessary to distinguish the declarations of use and
intention to use from the other elements of the application.
Additionally, the existing subsections 1(a) and 1(b) of the
Trademark Act of 1946 (15 U.S.C. 1051(a)) and 1051(b))
require, respectively, a statement of the mode or manner in
which the mark is used or intended to be used, in connection
with the goods specified in the application. Thus, it becomes
necessary to delete the requirement for this statement from
the list of required elements in the written application.
Distinction Between Written Application and Verified
Declarations
Consistent with the Treaty obligations, the proposed
revision will distinguish between the written application and
the declarations of use and intention to use for purposes of
the signature requirement. The proposed revision will
continue to require a written application, in such form as
may be prescribed by the Commissioner, and a declaration
verified by the applicant, as set forth in the two
subsections.
By separating the written application from the verified
declarations, there will no longer be a requirement in the
law for verification by the applicant of the written
application. In the proposed revision, as in the existing
subsections, the Commissioner will retain authority to
prescribe the form of the application. Thus, the Commissioner
will have discretion to permit the written application to be
filed with no signature or with the signature of applicant's
representative. Also, the Commissioner may permit the filing
of a single document, which combines the elements of the
written application and the declaration, and which is signed
by the applicant, as under the existing subsections.
Elements of the Written Application
The proposed revision specifies a non-exclusive list of
elements and grants authority to the Commissioner to
prescribe, by regulation and consistent with law and
international obligations, additional elements which the
Commissioner considers to be necessary for an application and
those elements necessary for receipt of a filing date. This
proposal improves the ability of the law pertaining to
application requirements to accommodate advancing technology
and further international procedural harmonization. The
proposed revision specifically requires the application to
include applicant's domicile and citizenship, the dates of
applicant's first use of the mark and first use of the mark
in commerce in an application under subsection 1(a), the
goods in connection with which the mark is used or intended
to be used, and a drawing of the mark. Consistent with the
Treaty, the proposed revision omits a requirement for
specification of the mode or manner in which the mark is
used, or intended to be used, in connection with the goods
specified in the application.
Additionally, the proposed revision reorganizes subsections
1(a) and (b) 1946 (15 U.S.C. 1051(a)) and 1051(b)) to clarify
the provisions and to modernize the language. To parallel the
language of the Treaty, the phrase ``may apply to
register'' is replaced by ``may request registration''.
Reference to ``firm, corporation or association'' is
replaced by a reference to ``juristic person'' or
``person.'' Section 45 defines ``person'' as including
``juristic persons.'' These terms are considered
preferable in view of the numerous types of juristic
persons in existence today.
The Verified Statement
Rather than requiring in the verified statement a
repetition of statements in the written application
identifying goods and, in a section 1(a) application, dates
of use, the proposed revision requires a statement that, to
the best of the applicant's knowledge and belief, the facts
recited in the application are accurate. In addition, the
proposed revision specifies the averments that the applicant
must make in the verified statement concerning applicant's
use, or bona fide intention to use, the mark in commerce,
ownership of the mark and lack of knowledge of conflicting
third party rights. These averments do not differ from those
in the existing provisions.
The proposed revision requires verification of the
statement by the applicant and omits the specification of the
appropriate person to verify the declaration for a juristic
applicant, i.e., the proposed revision omits the phrase
requiring verification by ``a member of the firm or an
officer of the corporation or association applying.'' While
this revision is not required by the Treaty, it will greatly
simplify the filing of an application without compromising
the integrity of the information contained therein. This
proposed revision will give the Patent and Trademark Office
(``PTO'') the discretion to determine the appropriate person
with authority to sign the declaration for a juristic
applicant.
Under the existing provision, the PTO has been limited to
accepting, for example, only the signature of an officer of a
corporation on an application when another corporate
manager's signature would be appropriate because the
corporate manager has authority to bind the corporation
legally or because the corporate manager has specific
knowledge of the facts asserted in the application. The
unnecessary rigidity of the existing provision has worked a
hardship on applicants who have been denied filing dates
because the person verifying their application has not met
the strict requirement of being an officer of the corporate
applicant. Additionally, the Patent and Trademark Office has
had difficulty applying the officer requirement to foreign
juristic entities whose managers are not clearly officers
under the United States' corporate standards.
Revival of Applications After the Notice of Allowance Has
Issued
Existing subsection 1(d) (15 U.S.C. 1051(d)) is amended to
clarify that applications which are awaiting the filing of a
statement of use or a request for extension of time to file a
statement of use may be revived if it can be shown to the
satisfaction of the Commissioner that the failure to file was
unintentional. Although this change is not necessary for the
implementation of the TLT, the change clarifies that the
Commissioner has the authority to revive such an application
so long as reviving the application does not extend the
statutory period for filing the statement of use. The
standard for revival is that the applicant's failure to file
was unintentional. This is the same standard that is being
proposed in subsection 12(b) of the Trademark Act of 1946 (15
U.S.C. 1062(b)) for reviving applications during the
examination process.

SECTION 4. REVIVAL OF AN ABANDONED APPLICATION

Summary of Section 4
This section amends subsection 12(b) of the Trademark Act
of 1946 (15 U.S.C. 1062(b)) by changing the present standard
for reviving an abandoned application upon a showing of
``unavoidable'' delay to the standard of ``unintentional''
delay.

[[Page S6577]]

Revival of Applications Under the Historical ``Unavoidable
Delay'' Standard
Section 12(b) of the Trademark Act of 1946 (15 U.S.C.
1062(b)) provides that an application is abandoned if the
applicant does not timely respond to an Office Action,
``unless it can be shown to the satisfaction of the
Commissioner that the delay in responding was unavoidable,
whereupon such time may be extended.''
Prior to the implementation of the Trademark Act of 1946,
there was no statutory provision for abandonment and revival
of abandoned trademark applications. There was a regulatory
provision that an abandoned application could be revived if
it were ``shown to the satisfaction of the Commissioner that
the delay in the prosecution of the same was unavoidable,''
However, the legislative history of the Lanham Act is silent
as to the meaning or intention behind the ``unavoidable
delay'' standard for revival of abandoned applications.
The language of section 12(b) of the Trademark Act of 1946
is virtually identical to the analogous provision of the
patent law, 35 U.S.C. 133, which provides for abandonment of
patent applications and revival upon a showing of unavoidable
delay. The requirements for reviving an ``unavoidably''
abandoned patent applications, set forth in 37 C.F.R.
Sec. 1.137(a), are identical to the requirements for reviving
an abandoned trademark application under 37 C.F.R. Sec. 2.66.
Courts have held that the Commissioner has broad discretion
in determining whether a delay is unavoidable. Under current
law, the Commissioner's decision is subject to judicial
review, but will be reversed only if it is arbitrary,
capricious, or an abuse of discretion. Morganroth v. Quigg,
885 F.2d 843, 21 USPQ2d 1125 (Fed. Cir. 1989); Smith v.
Mossinghoff, 671 F.2d 533, 213 USPQ 977 (D.C. Cir. 1982);
Douglas v. Manbeck, 21 USPQ2d 1697 (E.D. Pa. 1991).
Revival of Applications Under the New ``Unintentional Delay''
Standard
Prior to 1982, patent applications, like trademark
applications, could be revived only upon a showing of
unavoidable delay. Under Public Law 97-247, Sec. 3, 96 Stat.
317 (1982) codified at 35 U.S.C. 41(a)(7), it became possible
to revive an unintentionally abandoned patent application.
Section 41(a)(7) establishes two different fees for filing
petitions with two different standards to revive abandoned
applications. There is one for a petition to revive an
unavoidably abandoned application and another fee for a
petition to revive an unintentionally abandoned application.
The procedure for petitioning to revive an unintentionally
abandoned application is set forth in 37 C.F.R.
Sec. 1.137(b), effective October 1, 1982. 58 Fed. Reg. 44277
(Aug. 20, 1993); 48 Fed. Reg. 2696 (Jan. 20, 1983). The
rule requires, among other things, that the applicant
submit a verified statement that the delay was
unintentional, and provides that the ``Commissioner may
require additional information where there is a question
that the delay was unintentional.''
The legislative history of Public Law 97-247 states:
Section 41(a)7 establishes two different fees for filing
petitions with different standards to revive abandoned
applications. . . Since the section provides for two
alternative fees with different standards, the section would
permit the applicant seeking revival . . . to choose one or
the other of the fees and standards under such regulations as
the Commissioner may establish. . . This section would permit
the Commissioner to have more discretion than present law to
revive abandoned applications . . . in appropriate
circumstances (emphasis added). H.R. Rep. No. 542, 97th Cong.
2d Sess. 6-7 (1982), quoted in In re Rutan, 231 USPQ 864, 865
(Comm'r Pats. 1986).
The legislative history of Public Law 97-247 pertains
primarily to fees. However, the intent of Congress appears to
be to give the Commissioner the power to revive abandoned
applications using a much less strict standard than had been
previously applied. In re Rutan, supra. Neither the
legislative history of the Lanham Act nor the relevant case
law limit the Commissioner's authority to establish
procedures for revival of unintentionally abandoned trademark
applications.
With the goal of the Trademark Law Treaty to simplify the
registration process worldwide, this proposed amendment
parallels the unintentional standard for revival available to
patent applicants and relaxes the standard for reviving
trademark applications. This will enable the majority of
applicants, who file a timely petition to revive an
application that was abandoned due to an unintentional delay,
to proceed to registration from the point that the
application became abandoned, rather than requiring these
applicants to refile their applications.

section 5. duration of registration; cancellation; affidavit of
continued use; notice of commissioner's action

Note on Sections 5 and 6: Registration Maintenance under the
Trademark Law Treaty and Existing U.S. Law
Sections 5 and 6 of this legislation amend existing
sections 8 and 9 of the Trademark Act of 1946, which are the
two provisions of the Act containing requirements for
registration maintenance. These two sections are analogous in
their requirements for the filing of a verified document
attesting to the use of the mark in commerce and specimens or
facsimiles, or a showing of excusable non-use. Section 8 of
the Trademark Act of 1946 requires the aforementioned filing
during the year preceding the sixth year following
registration to avoid cancellation of the registration.
Section 9 of the Trademark Act of 1946 requires the
aforementioned filing as part of the registration renewal
application.
With the goal of simplifying and harmonizing the process
for renewal of a trademark or service mark registration
worldwide, Article 13(1) of the Treaty establishes a
comprehensive list of indications that may be required in a
request to renewal a trademark or service mark registration.
This list does not include a declaration and/or evidence
concerning use of the mark. Article 13(4)(iii) expressly
prohibits a requirement for the furnishing of a
declaration and/or evidence concerning use of the mark as
part of a request for renewal. However, the Treaty
contains no prohibition against a requirement for the
periodic filing of a declaration and/or evidence of use in
connection with a registration, as long as such
requirement is not part of the requirements for renewal.
In fact, Article 13(1)(b) of the Treaty, concerning
renewal fees, recognizes that fees may be required in
connection with the filing of a declaration and/or
evidence of use of a registered mark.
Under the terms of the Treaty, the United States may
continue to require the periodic filing of a verified
document attesting to the use of the mark in commerce and
specimens or facsimiles, or a showing of excusable non-use.
However, the United States may not make such a requirement in
connection with registration renewal.
Harmonization of Trademark Act Sections 8 and 9 Requirements
The proposed revision harmonizes certain procedural
requirements for the affidavits required under this section
with the requirements for a registration renewal application
contained in section 9 of the Trademark Act of 1946. While
both sections contain requirements for registration
maintenance, the specific requirements pertaining to the
filing required by each existing section differ
unnecessarily. These differing requirements have caused
confusion to some registrants, particularly those proceeding
pro se, resulting in the cancellation of registrations of
marks still in use in commerce due to non-compliance with the
technical requirements of one or the other of these
maintenance sections. Furthermore, since the proposed
revision to section 8 adds an affidavit requirement at ten-
year internals, harmonizing the filing procedures with those
for renewal enables the registrant to make both filings at
the same time, thus, simplifying registration maintenance.
Summary of Section 5
This section amends section 8 of the Trademark Act of 1946
(15 U.S.C. 1058). The main purpose of the revision of this
section is to set out, in one section, all of the
requirements for filing any of the affidavits of use needed
to maintain a registration and to ensure that the
requirements of each use affidavit are identical. This
section includes the affidavit of use filed between the fifth
and the sixth year after registration, between the fifth and
the sixth year after publication under subsection 12(c), and
in the year preceding every ten year anniversary of the
registration.
This purpose is accomplished by adding an obligation to
file an affidavit of use or non-use, consistent with the
requirements set forth in the subsections, in the year
preceding every tenth anniversary of the registration, to
provide for correction of deficiencies in submissions under
these subsections; to provide for a grace period for making
submissions required by these subsections; to modernize the
language and to simplify and clarify the existing procedural
requirements for filing affidavits under these subsections;
and to harmonize certain procedural requirements for such
affidavits with the requirements for a registration renewal
application contained in section 9 of the Trademark Act of
1946.
Subsection 8(a) states the duration of each registration
and provides that the registration shall be canceled by the
Commissioner if timely affidavits of use are not
filed. Paragraph (1) of subsection 8(a) states that an
affidavit of use must be filed by the end of six years
following registration. Paragraph (2) of subsection 8(a)
states that an affidavit of use must be filed by the end
of six years following the date of publication under
subsection 12(c) of the Trademark Act of 1946 (15 U.S.C.
1062(c)). Paragraph (3) of subsection 8(a) states that an
affidavit of use must be filed by the end of each
successive ten-year period following the date of
registration.
Subsection 8(b) sets out the length of the time period
during which the statutory filing can be made and the
contents needed in each filing. In every case, there is a one
year statutory period for filing the affidavit.
Subsection 8(c) permits the filing of the use affidavit,
after the statutory period for filing has ended upon payment
of an additional ``grace period'' surcharge. The section also
provides that a correction of a deficiency, after the
statutory period, may be made upon payment of an additional
``deficiency'' surcharge.
Subsection 8(c)(1) sets out the time period for filing the
use affidavit where the statutory period has expired, the so-
called ``grace'' period, and gives the Commissioner authority
to prescribe a surcharge for affidavits filed during the
grace period.
Subsection 8(c)(2) allows for correction of deficiencies in
the filings submitted under this section upon payment of the
deficiency surcharge.

[[Page S6578]]

Subsection 8(d) sets out the requirement that the
Commissioner attach to each certificate of registration, and
notice of publication under section 12(c), a special notice
of the requirement for the affidavits required by this
section. This section preserves an obligation of the
Commissioner that is set out in the last sentence of existing
section 8(a) and in section 12(c).
Subsection 8(e) preserves the obligation of the
Commissioner, in existing subsection 8(c), to notify any
owner who files an affidavit under section 8 of his
acceptance or refusal of the affidavit. The subsection has
been revised to reflect the revisions in subsections 8 (a)
and (b) by stating that it applies to any of the above
prescribed affidavits.
Subsection 8(f) has been added to require the appointment
by owners, not domiciled in the United States, of a domestic
representative for service of notices or process in
proceedings affecting the mark.
Periodic Filing of the Affidavit
The PTO continues to believe in the value of requiring a
periodic filing verifying the continued use of the mark as a
way to maintain the integrity of the trademark register by
periodically removing from the register marks no longer in
use in commerce. Therefore, consistent with the Treaty
obligations, the proposed revision adds to section 8 of the
Trademark Act of 1946 an obligation to file an affidavit of
use or excusable non-use, consistent with the requirements
set forth in the subsection, in the year preceding the tenth
anniversary of the registration and every ten years
thereafter. This revision is proposed in view of the proposed
deletion of the requirement in connection with registration
renewal, in section 9 of the Trademark Act of 1946, for a
verified statement attesting to the use of the mark in
commerce, accompanied by specimens or facsimiles, or a
showing of excusable non-use.
Grace Period and Correction of Deficiencies
Rules 8 of the Regulations under the Trademark Law Treaty
provides that renewal request must be accepted for at least a
six-month period, upon payment of a surcharge, after the date
the renewal is due. The existing provisions of section 9 of
the Trademark Act of 1946 permit the renewal application to
be filed within a three-month period, upon payment of a
surcharge, after the date the renewal is due. The existing
provisions of section 8 of the Trademark Act of 1946 contain
no grace period for the filing of the required affidavit
after its due date. As described below, the proposed revision
incorporates the six-month grace period required by the
treaty for filing renewal requests and harmonizes the
requirements for filings under sections 8 and 9 of the
Trademark Act of 1946. Harmonization of the filing
requirements of sections 8 and 9 will require the amendment
of both sections to provide this six-month grace period for
making the required filing. This amendment is a
liberalization of sections 8 and 9 of the Trademark Act of
1946, which is desirable to avoid, to the extent possible,
the removal from the register for mere technical reasons of
marks that are still in use in commerce.
The proposed revision to section 8 of the Trademark Act of
1946 will amend the existing law by providing a six-month
grace period for filing the required affidavit, conditioned
upon payment of a ``grace period'' surcharge. Additionally,
the proposed revision permits the correction of a deficiency
after the sixth anniversary of registration. Such correction
must be accompanied by a ``deficiency surcharge'' and be
filed no later than the end of a prescribed period after
notification of the deficiency. This proposed revision is
consistent with the practice proposed in the revision to
section 9(a) of the Trademark Act of 1946, concerning
renewal.
Only an owner who did not make any filing prior to the end
of the statutory period may make the required filing under
the grace period provisions. The owner filing an affidavit
prior to the end of the statutory period, but correcting a
deficiency either during or after the grace period, will be
subject to the ``deficiency surcharge'' only. On the other
hand, the owner filing an affidavit during the six-month
grace period, will be subject to the ``grace period
surcharge'' (for the ability to file the affidavit during the
grace period) and, if notified of deficiencies, the
``deficiency surcharge'' (for the ability to correct a
deficiency after the end of the statutory period.) The
proposed revision does not define deficiency or place any
limits on the type of deficiency or omission that can be
cured after expiration of the statutory filing period. The
Commissioner has broad discretion to provide procedures and
fees for curing deficiencies or omissions.
Simplification and Clarification of Section 8 of the
Trademark Act
The proposed revision conforms the requirements of
subsections 8(a) and (b) of the Trademark Act of 1946 to
current practice. First, the language in the existing
subsections ``attaching to the affidavit a specimen or
facsimile showing current use of the mark'' is revised to
clarify that the specimens or fascimiles are to be filed
along with the affidavit but are not considered part of the
affidavit for purposes of complying with the requirement to
set forth in the affidavit the goods or services on or in
connection with which the mark is in use in commerce. The
sentence comprising subsection 8(a) of the Trademark Act of
1946 has been revised to clarify and distinguish the
requirements for the fee, the affidavit, the specimens and a
showing of non-use. The proposed revision further permits
the Commissioner to specify the number of specimens or
facsimiles required so that he may require a specimen or
facsimile for each class of goods or services identified
in the registration. The language ``setting forth those
goods or services recited in the registration on or in
connection with which the mark is not in use in commerce''
is proposed to be added to parallel the affidavit
requirements pertaining to use of the mark and to clarify
that the owner must specify the goods or services to which
a showing of non-use pertains.
Existing Subsection 8(b)
The requirements set out in former subsection 8(b) of the
Trademark Act of 1946, pertaining to marks published pursuant
to section 12(c) of the Trademark Act of 1946, have been set
out in subsections 8(a)(2), 8(b) and (8)(c) and conform to
the proposed revisions as to the time of filing the
affidavit, the grace period and the correction of
deficiencies.
Existing Subsection 8(c)
Subsection 8(c) of the Trademark Act of 1946 is now set out
in subsection 8(e) and has been amended to reflect the
revisions in subsections 8 (a) and (b) to add requirements
for the periodic filing of additional affidavits by changing
reference from ``. . . any owner who files either of the
above-prescribed affidavits . . .'' to ``. . . any owner who
files one of the above-prescribed affidavits . . .''.
Subsection 8(f)--Appointment of Domestic Representative
Section 5 of this Act proposes to add a section 8(f) to the
Trademark Act of 1946 to provide for the appointment of a
domestic representative for service of notices or process in
proceedings affecting the mark by owners not domiciled in the
United States. This new subsection is consistent with similar
requirements imposed on applicants by subsection 1(e) of the
Trademark Act of 1946. This is necessary because the
appointment required in subsection 1(e) of the Trademark Act
of 1946 pertains only during the pendency of the application.
Registrant or Owner: Who must file?
Throughout the revised section 8, the term ``registrant''
has been replaced by the term ``owner.'' The practice at the
Patent and Trademark Office has been to require that the
current owner of the registration file all the post-
registration affidavits needed to maintain a registration.
The current owner of the registration must aver to actual
knowledge of the use of the mark in the subject registration.
However, the definition of ``registrant'' in section 45 of
the Act states that the ``terms `applicant' and `registrant'
embrace the legal representatives, predecessors, successors
and assigns of each applicant and registrant.'' Therefore,
use of the term ``registrant'' in section 8 of the Act would
imply that any legal representative, predecessor, successor
or assign of the registrant could successfully file the
affidavits required by sections 8 and 9. To correct this
situation, and to keep with the general principle, as set out
in section 1, that the owner is the proper person to
prosecute an application, section 8 has been amended to state
that the owner must file the affidavits required by the
section.

section 6. renewal of registration

Summary of Section 6
This section amends subsection 9(a) of the Trademark Act of
1946 to cross-reference the obligatory registration
maintenance requirements of section 8 of the Trademark Act of
1946; to delete the obligation to submit as part of a renewal
application verified statements regarding the use of the mark
in commerce and attaching to the application a specimen or
facsimile showing current use of the mark; to extend the time
for filing a renewal application to up to one year before the
expiration of the period for which the registration was
issued or renewed and, for an additional fee, up to six
months after the end of the expiring period of the
registration; to grant authority to the Commissioner to
prescribe the form of the written application for renewal of
the registration; and, to permit the correction of
deficiencies after the statutory filing period.
This section amends subsection 9(c) to specify the
requirements for the appointment by registrants not domiciled
in the United States of a domestic representative for service
of notices or process in proceedings affecting the mark.
Use Requirement for Registration Renewal
Separate from the obligation to renew a trademark
registration at ten-year intervals, the U.S. Patent and
Trademark Office continues to believe in the value of
requiring a periodic filing verifying the continued use of
the mark as a way to maintain the integrity of the trademark
register by periodically removing from the register marks no
longer in use in commerce. Therefore, consistent with the
Treaty obligations, the proposed revision deletes from
subsection 9(a) of the Trademark Act of 1946 the requirement
that the renewal application include a verified statement
attesting to the use of the mark in commerce, accompanied by
a specimen or facsimile evidencing current use of the mark,
or a showing of excusable non-use. These requirements are
proposed to be added to subsection 8(a) of the Trademark Act
of 1946 in the form of an obligation to file an affidavit of
use or excusable non-use, consistent with the requirements
set forth in the subsection, on the tenth anniversary of the
registration and every ten years thereafter.

[[Page S6579]]

Also, consistent with the treaty obligations, the
requirement that the renewal application be verified is
proposed to be deleted and the Commissioner is granted
authority to prescribe the form of the written renewal
application, consistent with law and international treaties
or agreements to which the United States is a party.
Grace Period and Harmonization
Rule 8 of the Regulations under the Trademark Law Treaty
provides that a renewal request must be accepted for at least
a six-month period, upon payment of a surcharge, after the
date the renewal is due. The existing provisions of section 9
of the Trademark Act of 1946 permit the renewal application
to be filed within a three-month period, upon payment of a
surcharge, after the date the renewal is due. The revision
proposes to change the three-month grace period for
requesting registration renewal to the six-month grace period
required by the treaty and harmonizes the requirements for
filings under sections 8 and 9 of the Trademark Act of 1946.
Harmonization of the filing requirements of sections 8 and 9
will require the amendment of both sections to provide this
six-month grace period for making the required filing.
This amendment is a liberalization of sections 8 and 9 of
the Trademark Act of 1946, which is desirable to avoid, to
the extent possible, the removal from the register for
mere technical reasons of marks that are still in use in
commerce. In particular, consistent with the filing
requirements in section 8 of the Trademark Act of 1946,
the period for filing a renewal request is expressly
defined as the period one year prior to expiration of the
period for which the registration was issued or renewed,
or within a grace period of six months after the end of
the expiring period.
Subsection 9(c)--Appointment of Domestic Representatives
Subsection 6(b) of this Act amends subsection 9(c) to the
Trademark Act of 1946 to provide for the appointment of a
domestic representative for service of notices or process in
proceedings affecting the mark by owners not domiciled in the
United States, rather than referencing the requirements in
subsection 1(e) of the Trademark Act of 1946. This is
preferable because the appointment required in subsection
1(e) of the Trademark Act of 1946 pertains only during the
pendency of the application.

section 7. recording assignment of mark

This section amends section 10 of the Trademark Act of 1946
(15 U.S.C. 1060) to clarify that the PTO will record a change
in ownership without requiring a copy of the underlying
document; and to remove the proscription against the
assignment of a mark in an application filed under section
1(b) of the Trademark Act of 1946 (15 U.S.C. 1051(b))
(intent-to-use) upon the filing of an amendment to allege use
pursuant to section 1(c) of the Trademark Act of 1946 (15
U.S.C. 1051(c)).
The PTO has interpreted the present reference to a ``record
of assignments'' in section 10 to require the PTO to record a
copy of the actual assignment document. Article 11(4) of
Trademark Law Treaty prohibits the requirement of a statement
or proof of such transfer in order to record an assignment of
a trademark registration. The proposed amendment clarifies
that, rather than maintaining a ``record of assignments,''
the PTO ``shall maintain a record of the prescribed
information on assignments, in such form as may be prescribed
by the Commissioner.'' The proposed amendment authorizes the
PTO to determine what information regarding assignments it
will record and maintain. The proposed amendment will ensure
that a transfer of goodwill remains a necessary element of a
valid assignment of a trademark; however, the PTO will not
require a statement or proof of the transfer of goodwill in
order to record an assignment of a trademark registration.
Additionally, pertaining to the proscription against the
assignment of a mark in an application filed under section
1(b) of the Trademark Act of 1946 (intent-to-use), the
proposed amendment adds reference to section 1(c) of the
Trademark Act of 1946 so that the filing of an amendment to
allege use pursuant to section 1(c) removes the restriction
against assigning the mark except to the successor to the
business of the applicant, or portion thereof, to which the
mark pertains, if that business is ongoing and existing.
Presently, prior to registration of an application filed
pursuant to section 1(b) of the Trademark Act of 1946
(15 U.S.C. 1051(b)) based upon a bona fide intention to
use a mark in commerce on the identified goods or
services, an applicant must file either a verified
statement of use under section 1(d) of the Trademark Act
of 1946 (15 U.S.C. 1051(d)) or an amendment to allege use
under section 1(c) of the Trademark Act of 1946 (15 U.S.C.
1051(c)). The substance of the two filings is essentially
the same. The difference between the two filings is the
point at which the filing is made. Presently, section 10
of the Trademark Act of 1946 (15 U.S.C. 1060) limits the
assignability of an application to register a mark under
section 1(b) of the Trademark Act of 1946 (15 U.S.C.
1051(b)) until such time as applicant files a verified
statement of use under section 1(d) of the Trademark Act
of 1946 (15 U.S.C. 1051(d)). Since the effect of the
filing of an amendment to allege use under section 1(c) of
the Trademark Act of 1946 (15 U.S.C. 1051(c)) is
analogous, there is no reason in law or policy for
omitting to include reference to section 1(c) in section
10.

section 8. international conventions; copy of foreign registration

This section amends section 44(e) of the Trademark Act of
1946 (15 U.S.C. 1126(e)) to change the requirement that an
application ``be accompanied by a certificate or certified
copy'' of the foreign registration, which has been
interpreted to be a filing date requirement, so that such
copy may be submitted to the PTO prior to registration,
within such time limits as may be prescribed by the
Commissioner. Such a requirement as a prerequisite to
receiving a filing date is prohibited pursuant to Article 5
of the Trademark Law Treaty.

section 9. transition provisions

This section clarifies when and how the new provisions set
out for the maintenance of registrations will apply to
existing and future applications and registrations.
Section 9(a) provides that registrations issued or renewed
with a 20 year term, i.e. those registrations issued or
renewed prior to the effective date of the Trademark Law
Revision Act of 1988, will be subject to the post-
registration provisions of this Act on or after a date that
is 1 year before the date on which the twenty year term
expires. This provision will allow those registrations to
have the benefit of the one year statutory filing period and
the six-month grace period provided by the Act.
Section 9(b) provides that the Act shall apply to any
application for the registration of a trademark pending on,
or filed after, the effective date of the Act.
Section 9(c) provides that the filing of an affidavit under
Section 5 of the Act, which amends Section 8(b) of the
Trademark Act of 1946, shall be required for any registration
if the sixth or tenth anniversary of the registration, or the
sixth anniversary of publication under section 12(c) of the
Trademark Act of 1946, occurs on or after the effective date
of this Act.
Section 9(d) provides that the amendment made by section 6
of this Act shall apply to the filing of an application for
the 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.

section 10. effective date

This section provides that this Act shall take effect one
year after enactment of the Act or upon entry into force of
the Treaty in respect to the United States, whichever occurs
first. Since the provisions of the Act will modernize and
simplify procedures pertaining to trademark application
filing and registration maintenance, this section provides
that, if the U.S. has not acceded to the treaty and become
subject to the obligations thereunder within a year after
enactment, the Act will become effective so that its benefits
can be realized by trademark owners.
Since the United States is not one of the first five States
to deposit its instrument of ratification or accession,
Article 20 of the Treaty provides that the Treaty shall enter
into force three months after the date on which the
instrument of ratification or accession is deposited.

Mr. LEAHY. Mr. President, I am pleased today to introduce the
Trademark Law Treaty Implementation and Registration Simplification Act
(TLT Act). The TLT Act, which will implement the Trademark Law Treaty
of 1994, is an important step in our continuing endeavor to harmonize
trademark law around the world so that American businesses--
particularly small American businesses--seeking to expand
internationally will face simplified and straightforward trademark
registration procedures in foreign countries.
This bill is one of a series I have supported which protect American
trademark holders in a world of rapidly changing technology and
international competition. Earlier this year I introduced S. 1727,
legislation authorizing the National Research Council of the National
Academy of Sciences to conduct a comprehensive study of the effects of
adding new generic Top Level Domains on trademark and other
intellectual property rights owners. Moreover, I supported the Federal
Trademark Dilution Act of 1995, which was enacted into law last
Congress. This legislation provides intellectual property rights
holders with the power to enjoin another person's commercial use of
famous marks that would cause dilution of the mark's distinctive
quality. Together, these measures represent efforts to refine American
trademark law to ensure that it promotes American interests.
Today more than ever before, trademarks are among the most valuable
assets of business. One of the major obstacles in securing
international trademark protection is the difficulty and cost involved
in obtaining and maintaining a registration in each and every country.
Countries around the world have a number of varying requirements for
filing trademark applications, many of which are non-substantive and
very confusing. Because of these difficulties, many U.S. businesses,
especially smaller businesses,

[[Page S6580]]

are forced to concentrate their efforts on registering their trademarks
only in certain major countries while pirates freely register their
marks in other countries.
The Trademark Law Treaty will eliminate many of the arduous
registration requirements of foreign countries by enacting a list of
maximum requirements for trademark procedures. Eliminating needless
formalities will be an enormous step in the direction of a rational
trademark system which will benefit American business, especially
smaller businesses, to expand into the international market more
freely. Fortunately, the Trademark Law Treaty has already been signed
by thirty-five countries, has already been ratified by ten countries
including Japan and the United Kingdom, and has already been reported
favorably to the full Senate by the Senate Foreign Affairs Committee.
As the United States is already in accordance with most of the
Trademark Law Treaty requirements, the TLT Act would impose only minor
changes to U.S. trademark law. The Patent and Trademark Office, the
International Trademark Association and the American Intellectual
Property Law Association have indicated their support for the TLT Act.
I hope the Senate will consider and pass this bill expeditiously.

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