Summary: H.R.4156 — 100th Congress (1987-1988)All Information (Except Text)

There is one summary for H.R.4156. Bill summaries are authored by CRS.

Shown Here:
Introduced in House (03/15/1988)

Trademark Law Revision Act of 1988 - Amends the Lanham Act to permit a person who has a bona fide intention to use a trademark in commerce to apply to register the trademark. (Current law provides only for registration of a trademark already in use in commerce.) Requires that such trademark actually be used in commerce before it becomes a registered trademark.

States that an application on an intent-to-use basis constitutes constructive use of the mark which must be resolved either through ultimate registration or other disposition before a later application for the same mark may be registered.

Permits concurrent registrations by consent regardless of filing dates. Modifies the time period within which proof of a mark's distinctiveness may be offered.

Eliminates the separate register for service marks. Eliminates the separate register for collective and certification marks, permitting the use of the former to indicate that their owners perform the connected service or sell the goods associated with such marks.

States that when the first use of a mark is made by a related company (a licensee), then that use will inure to the benefit of the applicant or registrant.

Halves the terms of registration and renewal to ten years each. Requires the deletion of marks where in the sixth year of registration their registrant does not file the required affidavit of use. Prohibits the assignment of an intent-to-use application prior to registration unless such application is assigned to the applicant's successor in business.

States that a security interest in a mark is obtained only by filing in the Patent and Trademark Office and includes both the mark and the goodwill accompanying the mark.

Provides for the examination of applications for registration submitted on the basis of intent-to-use. Sets forth procedures for such applications.

Modifies conditions under which a mark becomes subject to cancellation because it has become a generic name.

Grants the Trademark Trial and Appeal Board the authority to limit or modify the goods or services identified in a registration or application to avoid the likelihood of confusion and to determine trademark ownership rights when they are at variance with the register. Limits when final judgments may be entered in intent-to-use cases to the time such mark is registered.

Eliminates the one year use requirement for applying to register a mark on the supplemental register and states that the use of such register does not constitute an admission that the mark has not acquired secondary meaning.

Requires a registrant to prove the likelihood of confusion even when the right to use the mark in question is incontestable.

Modifies available remedies. States that injunctive relief is not available in intent-to-use cases.

Provides for a cause of action to protect trademarks against disparagement and tarnishment and for relief of a registrant claiming dilution of a famous mark registered on the principal register.

Requires applicants for registration of marks in the U.S. based on foreign registration to state a bona fide intention to use such mark in commerce.

Modifies definitions under such Act to reflect the creation of the intent-to-use system. Excludes use in commercials and promotion from the definition of use in commerce.