Text: S.2968 — 111th Congress (2009-2010)All Information (Except Text)

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Public Law No: 111-146 (03/17/2010)

 
[111th Congress Public Law 146]
[From the U.S. Government Printing Office]



[[Page 65]]

        TRADEMARK TECHNICAL AND CONFORMING AMENDMENT ACT OF 2010

[[Page 124 STAT. 66]]

Public Law 111-146
111th Congress

                                 An Act


 
   To make certain technical and conforming amendments to the Lanham 
               Act. <<NOTE: Mar. 17, 2010 -  [S. 2968]>> 

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled, <<NOTE: Trademark 
Technical and Conforming Amendment Act of 2010.>> 
SECTION 1. <<NOTE: 15 USC 1051 note.>> 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 <<NOTE: Certification.>> 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

[[Page 124 STAT. 67]]

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

[[Page 124 STAT. 68]]

            ``(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.

[[Page 124 STAT. 69]]

            ``(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

[[Page 124 STAT. 70]]

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.

    Approved March 17, 2010.

LEGISLATIVE HISTORY--S. 2968:
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CONGRESSIONAL RECORD, Vol. 156 (2010):
            Jan. 28, considered and passed Senate.
            Mar. 3, considered and passed House.

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