[House Report 107-19]
[From the U.S. Government Publishing Office]
107th Congress Report
HOUSE OF REPRESENTATIVES
1st Session 107-19
======================================================================
MADRID PROTOCOL IMPLEMENTATION ACT
_______
March 13, 2001.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Sensenbrenner, from the Committee on the Judiciary, submitted the
following
R E P O R T
[To accompany H.R. 741]
[Including cost estimate of the Congressional Budget Office]
The Committee on the Judiciary, to whom was referred the
bill (H.R. 741) to amend the Trademark Act of 1946 to provide
for the registration and protection of trademarks used in
commerce, in order to carry out provisions of certain
international conventions, and for other purposes, having
considered the same, report favorably thereon without amendment
and recommend that the bill do pass.
CONTENTS
Page
Purpose and Summary.............................................. 1
Background and Need for the Legislation.......................... 2
Hearings......................................................... 3
Committee Consideration.......................................... 3
Vote of the Committee............................................ 3
Committee Oversight Findings..................................... 3
Performance Goals and Objectives................................. 4
New Budget Authority and Tax Expenditures........................ 4
Congressional Budget Cost Estimate............................... 4
Constitutional Authority Statement............................... 5
Section-by-Section Analysis and Discussion....................... 5
Changes in Existing Law Made by the Bill, as Reported............ 6
Markup Transcript................................................ 13
Purpose and Summary
The purpose of H.R. 741 is to implement the Madrid Protocol
Agreement (``Protocol'') which provides for an international
registration system for trademarks.
Background and Need for the Legislation
Trademark protection under Federal law provides for the
legal protection of particular words or symbols that have been
used on particular goods or services. Trademark protection
generally entitles the owner of a trademark to protection
against similar or confusing trademarks.
Trademarks constitute a significant part of the value of a
product and figure largely in the advertising of the product. A
very recognizable mark reflects the popularity of a product and
often is prominently featured in a company's advertising. The
protection of the mark is therefore of paramount importance to
the affected company. Understandably, an individual or company
using another company's mark could significantly diminish the
market share of a particular product or compromise the goodwill
derived from ownership of the mark.
Since products are marketed and sold on an international
scale, protection in countries other than the United States
improves the competitiveness of American businesses. Each
country has its own laws determining the level of protection
for trademarks and the type of marks that can be registered for
particular products. American citizens seeking protection for
their trademarks outside the United States are currently
required to register individually in each country in which
protection is sought.
As with many intellectual property rights, there are
international agreements relating to the registration and
protection of trademarks. Since 1891, the Madrid Agreement
Concerning the International Registration of Marks (``Madrid
Agreement'') has provided an international registration system
operated under the auspices of the International Bureau of the
World Intellectual Property Organizaiton (WIPO). The United
States has never been a signatory to the Madrid Agreement.
On June 27, 1989, at a Diplomatic Conference in Madrid,
Spain, the parties to the Madrid Agreement signed the Madrid
Protocol. The United States was an observer and advisor to
these talks but not a participant in the negotiations since
only signatories could amend the Madrid Agreement through the
Protocol. Subsequent talks, at which the United States has
participated as an observer, have been devoted to developing
regulations for the implementation of the Protocol for those
countries and entities which have and will become signatories
to it. Practically speaking, the resulting Protocol amendments
``updated'' the Madrid Agreement, in many respects by
conforming its contents to existing provisions in U.S. law.
H.R. 741 represents implementing legislation for the
Protocol. It is identical to measures introduced in the
previous four Congresses. While the Senate has yet to ratify
the Protocol, House passage of H.R. 741 will send a signal to
the international community, U.S. businesses, and trademark
owners that Congress is serious about our nation becoming part
of a low-cost, efficient system to promote the international
registration of marks. U.S. membership in the Protocol would
assist American businesses in protecting their proprietary
names and brand-name goods while saving money, time, and
effort. This is especially critical to small businesses which
may otherwise lack the resources to acquire world-wide
protection for their trademarks.
The Protocol took effect in April 1996, and currently binds
49 countries, but not the United States. Without U.S.
participation, however, the Protocol may never achieve its
purpose of providing a one-stop, inexpensive ``shop'' for
trademark applicants who, by filing one application in their
country and in their language, can receive protection from each
member country of the Protocol.
There is no opposition to H.R. 741, nor to the substantive
portions of the treaty; but one extant issue must be addressed
before the Protocol is ratified and H.R. 741 is enacted. During
the 106th Congress, the House passed H.R. 769 under suspension
of the rules without opposition. Unfortunately, Senate
ratification of the Protocol and passage of the implementing
language were derailed as result of a private dispute over a
mark (``Havana Club'') between a rum distiller (Bacardi) and a
French concern (Pernod) which formed a joint venture with the
Cuban government. Efforts to insert language in the
implementing bill (or a report accompanying the Protocol)
clarifying that the treaty could not be interpreted to honor
the expropriation of a mark registered to a third party were
unsuccessful. As a result, the Senate neither ratified the
Protocol nor acted on the implementing language of H.R. 769.
The interested parties, with the assistance of the trademark
community, continue to negotiate this point in the 107th
Congress. It is expected that, once a compromise on the matter
is reached, the Senate will shortly ratify the Protocol and
pass the implementing language.
Hearings
H.R. 741 was referred to the Committee on the Judiciary on
February 27, 2001. In light of thorough consideration of the
bill in previous Congresses, and given the noncontroversial
contents of H.R. 741, the Committee elected not to conduct any
hearings on the matter.
Committee Consideration
The Committee on the Judiciary, a reporting quorum being
present, ordered H.R. 741 reported on March 8, 2001, by voice
vote, with no objection heard.
Vote of the Committee
There were no recorded votes during Committee consideration
of H.R. 741.
Committee Oversight Findings
In compliance with clause 3(c)(1) of the rule XIII of the
Rules of the House of Representatives, the Committee reports
that the findings and recommendations of the Committee, based
on oversight activities under clause 2(b)(1) of rule X of the
Rules of the House of Representatives, are incorporated in the
descriptive portions of this report.
Performance Goals and Objectives
H.R. 741 does not authorize funding; therefore, clause 3(c)
of rule XIII of the Rules of the House of Representatives is
inapplicable.
New Budget Authority and Tax Expenditures
Clause 3(c)(2) of House Rule XIII is inapplicable because
this legislation does not provide new budgetary authority or
increased tax expenditures.
Congressional Budget Cost Estimate
In compliance with clause 3(c)(3) of rule XIII of the Rules
of the House of Representatives, the Committee sets forth, with
regard to the bill H.R. 741, the following estimate and
comparison prepared by the Director of the Congressional Budget
Office under section 402 of the Congressional Budget Act of
1974.
U.S. Congress,
Congressional Budget Office,
Washington, DC, March 13, 2001.
Hon. F. James Sensenbrenner, Jr.,
Chairman, Committee on the Judiciary, House of Representatives,
Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for H.R. 741, the Madrid
Protocol Implementation Act.
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contact is Ken Johnson.
Sincerely,
Dan L. Crippen, Director.
Enclosure.
H.R. 741--Madrid Protocol Implementation Act
H.R. 741 would amend the Trademark Act of 1946 in order to
facilitate the implementation of the Madrid Protocol, an
international agreement that provides for the possibility of
obtaining trademark protection in several jurisdictions through
a single registration. The bill outlines the administrative
procedures that would be followed by companies applying for
international protection of trademarks.
CBO estimates that enacting this bill would have no
significant effect on the Federal budget. Because the bill
would not affect direct spending or receipts, pay-as-you-go
procedures would not apply. Section 4 of the Unfunded Mandates
Reform Act excludes from the application of that act any
legislative provisions that are necessary for the ratification
or implementation of international treaty obligations. CBO has
determined that H.R. 741 would fit within that exclusion
because it would implement the Madrid Protocol, an
international agreement requiring ratification by the Senate.
H.R. 741 would become effective at the same time as the
Madrid Protocol, which the Senate has not yet ratified.
Assuming the Madrid Protocol enters into force in 2001, CBO
estimates that, subject to the availability of appropriated
funds, the United States Patent and Trademark Office (PTO)
would incur net costs of less than $500,000 during the 2001-
2002 period to establish a computer database.
United States participation in the Madrid Protocol also
could cause an increase in the number of trademark applications
received by the PTO. The PTO's costs for processing such
applications are fully funded by filing fees paid by the
applicants. Those fees are collected and spent under authority
provided in annual appropriation acts. Because the income from
fees offsets the costs of processing applications, CBO
estimates that an increase in the number of trademark
applications would have no net budgetary impact.
The CBO staff contact for this estimate is Ken Johnson, who
can be reached at 226-2860. The estimate was approved by Robert
A. Sunshine, Assistant Director for Budget Analysis.
Constitutional Authority Statement
Pursuant to rule XIII, clause 3(d)(1) of the Rules of the
House of Representatives, the Committee finds the authority for
this legislation in Article I, section 8, clause 8, of the
Constitution.
Section-by-Section Analysis and Discussion
Section 1. Short Title. This section provides a short
title: the ``Madrid Protocol Implementation Act.''
Section 2. Amendments to the Trademark Act of 1946. This
section amends the ``Trademark Act of 1946'' by adding a new
title XII which contains the following provisions:
The owner of a registration granted by the Patent and
Trademark Office (PTO) or the owner of a pending application
before the PTO may file an international application for
trademark protection at the PTO.
After receipt of the appropriate fee and inspection of the
application, the PTO Commissioner is charged with the duty of
transmitting the application to the WIPO International Bureau.
The Commissioner is also obliged to notify the
International Bureau whenever the international application has
been ``. . . restricted, abandoned, canceled, or has expired .
. .'' within a specified time period.
The holder of an international registration may request an
extension of its registration by filing with the PTO or the
International Bureau.
The holder of an international registration is entitled to
the benefits of extension in the United States to the extent
necessary to give effect to any provision of the Protocol;
however, an extension of an international registration shall
not apply to the United States if the PTO is the office of
origin with respect to that mark.
The holder of an international registration with an
extension of protection in the United States may claim a date
of priority based on certain conditions.
If the PTO Commissioner believes that an applicant is
entitled to an extension of protection, he or she publishes the
mark in the ``Official Gazette of the Patent and Trademark
Office.'' This serves notice to third parties who oppose the
extension. Unless an official protest conducted pursuant to
existing law is successful, the request for extension may not
be refused. If the request for extension is denied, however,
the Commissioner notifies the International Bureau of such
action and sets forth the reason(s) why. The Commissioner must
also apprise the International Bureau of other relevant
information pertaining to requests for extension within
designated time periods.
If an extension for protection is granted, the Commissioner
issues a certificate attesting to such action, and publishes
notice of the certificate in the ``Gazette.'' Holders of
extension certificates thereafter enjoy protection equal to
that of other owners of registration listed on the Principal
Register of the PTO.
If the International Bureau notifies the PTO of a
cancellation of some or all of the goods and services listed in
the international registration, the Commissioner must cancel an
extension of protection with respect to the same goods and
services as of the date on which the international registration
was cancelled. Similarly, if the International Bureau does not
renew an international registration, the corresponding
extension of protection in the United States shall cease to be
valid. Finally, the holder of an international registration
canceled in whole or in part by the International Bureau may
file an application for the registration of the same mark for
any of the goods and services to which the cancellation applies
that were covered by an extension of protection to the United
States based on that international registration.
The holder of an extension of protection must, within
designated time periods and under certain conditions, file an
affidavit setting forth the relevant goods or services covered
and any explanation as to why their nonuse in commerce is
related to ``special circumstances,'' along with a filing fee.
The right to an extension of protection may be assigned to
a third party so long as that individual is a national of, or
is domiciled in, or has a ``bonafide'' business located in a
country that is a member of the Protocol; or has such a
business in a country that is a member of an intergovernmental
organization (like the EC) belonging to the Protocol.
An extension of protection conveys the same rights as an
existing registration for the same mark if the extension and
existing registration are owned by the same person, and
extension of protection and the existing registration cover the
same goods or services, and the certificate of extension is
issued after the date of the existing registration.
Section 3. Effective Date. This section states that the
effective date of the act shall commence on the date on which
the Madrid Protocol takes effect in the United States.
Changes in Existing Law Made by the Bill, as Reported
In compliance with clause 3(e) of rule XIII of the Rules of
the House of Representatives, changes in existing law made by
the bill, as reported, are shown as follows (new matter is
printed in italic, existing law in which no change is proposed
is shown in roman):
TRADEMARK ACT OF 1946
* * * * * * *
TITLE XII--THE MADRID PROTOCOL
SEC. 60. DEFINITIONS.
For purposes of this title:
(1) Madrid protocol.--The term ``Madrid Protocol''
means the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks,
adopted at Madrid, Spain, on June 27, 1989.
(2) Basic application.--The term ``basic
application'' means the application for the
registration of a mark that has been filed with an
Office of a Contracting Party and that constitutes the
basis for an application for the international
registration of that mark.
(3) Basic registration.--The term ``basic
registration'' means the registration of a mark that
has been granted by an Office of a Contracting Party
and that constitutes the basis for an application for
the international registration of that mark.
(4) Contracting party.--The term ``Contracting
Party'' means any country or inter-governmental
organization that is a party to the Madrid Protocol.
(5) Date of recordal.--The term ``date of
recordal'' means the date on which a request for
extension of protection that is filed after an
international registration is granted is recorded on
the International Register.
(6) Declaration of bona fide intention to use the
mark in commerce.--The term ``declaration of bona fide
intention to use the mark in commerce'' means a
declaration that is signed by the applicant for, or
holder of, an international registration who is seeking
extension of protection of a mark to the United States
and that contains a statement that--
(A) the applicant or holder has a bona fide
intention to use the mark in commerce;
(B) the person making the declaration
believes himself or herself, or the firm,
corporation, or association in whose behalf he
or she makes the declaration, to be entitled to
use the mark in commerce; and
(C) no other person, firm, corporation, or
association, to the best of his or her
knowledge and belief, has the right to use such
mark in commerce either in the identical form
of the mark or in such near resemblance to the
mark as to be likely, when used on or in
connection with the goods of such other person,
firm, corporation, or association, to cause
confusion, or to cause mistake, or to deceive.
(7) Extension of protection.--The term ``extension
of protection'' means the protection resulting from an
international registration that extends to a
Contracting Party at the request of the holder of the
international registration, in accordance with the
Madrid Protocol.
(8) Holder of an international registration.--A
``holder'' of an international registration is the
natural or juristic person in whose name the
international registration is recorded on the
International Register.
(9) International application.--The term
``international application'' means an application for
international registration that is filed under the
Madrid Protocol.
(10) International bureau.--The term
``International Bureau'' means the International Bureau
of the World Intellectual Property Organization.
(11) International register.--The term
``International Register'' means the official
collection of such data concerning international
registrations maintained by the International Bureau
that the Madrid Protocol or its implementing
regulations require or permit to be recorded,
regardless of the medium which contains such data.
(12) International registration.--The term
``international registration'' means the registration
of a mark granted under the Madrid Protocol.
(13) International registration date.--The term
``international registration date'' means the date
assigned to the international registration by the
International Bureau.
(14) Notification of refusal.--The term
``notification of refusal'' means the notice sent by an
Office of a Contracting Party to the International
Bureau declaring that an extension of protection cannot
be granted.
(15) Office of a contracting party.--The term
``Office of a Contracting Party'' means--
(A) the office, or governmental entity, of
a Contracting Party that is responsible for the
registration of marks; or
(B) the common office, or governmental
entity, of more than 1 Contracting Party that
is responsible for the registration of marks
and is so recognized by the International
Bureau.
(16) Office of origin.--The term ``office of
origin'' means the Office of a Contracting Party with
which a basic application was filed or by which a basic
registration was granted.
(17) Opposition period.--The term ``opposition
period'' means the time allowed for filing an
opposition in the Patent and Trademark Office,
including any extension of time granted under section
13.
SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES APPLICATIONS
OR REGISTRATIONS.
The owner of a basic application pending before the Patent
and Trademark Office, or the owner of a basic registration
granted by the Patent and Trademark Office, who--
(1) is a national of the United States;
(2) is domiciled in the United States; or
(3) has a real and effective industrial or
commercial establishment in the United States,
may file an international application by submitting to the
Patent and Trademark Office a written application in such form,
together with such fees, as may be prescribed by the Director.
SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
Upon the filing of an application for international
registration and payment of the prescribed fees, the Director
shall examine the international application for the purpose of
certifying that the information contained in the international
application corresponds to the information contained in the
basic application or basic registration at the time of the
certification. Upon examination and certification of the
international application, the Director shall transmit the
international application to the International Bureau.
SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A
BASIC APPLICATION OR BASIC REGISTRATION.
With respect to an international application transmitted to
the International Bureau under section 62, the Director shall
notify the International Bureau whenever the basic application
or basic registration which is the basis for the international
application has been restricted, abandoned, or canceled, or has
expired, with respect to some or all of the goods and services
listed in the international registration--
(1) within 5 years after the international
registration date; or
(2) more than 5 years after the international
registration date if the restriction, abandonment, or
cancellation of the basic application or basic
registration resulted from an action that began before
the end of that 5-year period.
SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO
INTERNATIONAL REGISTRATION.
The holder of an international registration that is based
upon a basic application filed with the Patent and Trademark
Office or a basic registration granted by the Patent and
Trademark Office may request an extension of protection of its
international registration by filing such a request--
(1) directly with the International Bureau; or
(2) with the Patent and Trademark Office for
transmittal to the International Bureau, if the request
is in such form, and contains such transmittal fee, as
may be prescribed by the Director.
SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO
THE UNITED STATES UNDER THE MADRID PROTOCOL.
(a) In General.--Subject to the provisions of section 68,
the holder of an international registration shall be entitled
to the benefits of extension of protection of that
international registration to the United States to the extent
necessary to give effect to any provision of the Madrid
Protocol.
(b) If United States Is Office of Origin.--An extension of
protection resulting from an international registration of a
mark shall not apply to the United States if the Patent and
Trademark Office is the office of origin with respect to that
mark.
SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN
INTERNATIONAL REGISTRATION TO THE UNITED STATES.
(a) Requirement for Request for Extension of Protection.--A
request for extension of protection of an international
registration to the United States that the International Bureau
transmits to the Patent and Trademark Office shall be deemed to
be properly filed in the United States if such request, when
received by the International Bureau, has attached to it a
declaration of bona fide intention to use the mark in commerce
that is verified by the applicant for, or holder of, the
international registration.
(b) Effect of Proper Filing.--Unless extension of
protection is refused under section 68, the proper filing of
the request for extension of protection under subsection (a)
shall constitute constructive use of the mark, conferring the
same rights as those specified in section 7(c), as of the
earliest of the following:
(1) The international registration date, if the
request for extension of protection was filed in the
international application.
(2) The date of recordal of the request for
extension of protection, if the request for extension
of protection was made after the international
registration date.
(3) The date of priority claimed pursuant to
section 67.
SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO
THE UNITED STATES.
The holder of an international registration with an
extension of protection to the United States shall be entitled
to claim a date of priority based on the right of priority
within the meaning of Article 4 of the Paris Convention for the
Protection of Industrial Property if--
(1) the international registration contained a
claim of such priority; and
(2)(A) the international application contained a
request for extension of protection to the United
States; or
(B) the date of recordal of the request for
extension of protection to the United States is not
later than 6 months after the date of the first regular
national filing (within the meaning of Article 4(A)(3)
of the Paris Convention for the Protection of
Industrial Property) or a subsequent application
(within the meaning of Article 4(C)(4) of the Paris
Convention).
SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF
PROTECTION; NOTIFICATION OF REFUSAL.
(a) Examination and Opposition.--(1) A request for
extension of protection described in section 66(a) shall be
examined as an application for registration on the Principal
Register under this Act, and if on such examination it appears
that the applicant is entitled to extension of protection under
this title, the Director shall cause the mark to be published
in the Official Gazette of the Patent and Trademark Office.
(2) Subject to the provisions of subsection (c), a request
for extension of protection under this title shall be subject
to opposition under section 13. Unless successfully opposed,
the request for extension of protection shall not be refused.
(3) Extension of protection shall not be refused under this
section on the ground that the mark has not been used in
commerce.
(4) Extension of protection shall be refused under this
section to any mark not registrable on the Principal Register.
(b) Notification of Refusal.--If, a request for extension
of protection is refused under subsection (a), the Director
shall declare in a notification of refusal (as provided in
subsection (c)) that the extension of protection cannot be
granted, together with a statement of all grounds on which the
refusal was based.
(c) Notice to International Bureau.--(1) Within 18 months
after the date on which the International Bureau transmits to
the Patent and Trademark Office a notification of a request for
extension of protection, the Director shall transmit to the
International Bureau any of the following that applies to such
request:
(A) A notification of refusal based on an
examination of the request for extension of protection.
(B) A notification of refusal based on the filing
of an opposition to the request.
(C) A notification of the possibility that an
opposition to the request may be filed after the end of
that 18-month period.
(2) If the Director has sent a notification of the
possibility of opposition under paragraph (1)(C), the Director
shall, if applicable, transmit to the International Bureau a
notification of refusal on the basis of the opposition,
together with a statement of all the grounds for the
opposition, within 7 months after the beginning of the
opposition period or within 1 month after the end of the
opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension
of protection is transmitted under paragraph (1) or (2), no
grounds for refusal of such request other than those set forth
in such notification may be transmitted to the International
Bureau by the Director after the expiration of the time periods
set forth in paragraph (1) or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is
not sent to the International Bureau within the time period set
forth in such paragraph, with respect to a request for
extension of protection, the request for extension of
protection shall not be refused and the Director shall issue a
certificate of extension of protection pursuant to the request.
(d) Designation of Agent for Service of Process.--In
responding to a notification of refusal with respect to a mark,
the holder of the international registration of the mark shall
designate, by a written document filed in the Patent and
Trademark Office, the name and address of a person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be
served upon the person so designated by leaving with that
person, or mailing to that person, a copy thereof at the
address specified in the last designation so filed. If the
person so designated cannot be found at the address given in
the last designation, such notice or process may be served upon
the Director.
SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
(a) Issuance of Extension of Protection.--Unless a request
for extension of protection is refused under section 68, the
Director shall issue a certificate of extension of protection
pursuant to the request and shall cause notice of such
certificate of extension of protection to be published in the
Official Gazette of the Patent and Trademark Office.
(b) Effect of Extension of Protection.--From the date on
which a certificate of extension of protection is issued under
subsection (a)--
(1) such extension of protection shall have the
same effect and validity as a registration on the
Principal Register; and
(2) the holder of the international registration
shall have the same rights and remedies as the owner of
a registration on the Principal Register.
SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE UNITED STATES ON
THE UNDERLYING INTERNATIONAL REGISTRATION.
(a) Effect of Cancellation of International Registration.--
If the International Bureau notifies the Patent and Trademark
Office of the cancellation of an international registration
with respect to some or all of the goods and services listed in
the international registration, the Director shall cancel any
extension of protection to the United States with respect to
such goods and services as of the date on which the
international registration was canceled.
(b) Effect of Failure To Renew International
Registration.--If the International Bureau does not renew an
international registration, the corresponding extension of
protection to the United States shall cease to be valid as of
the date of the expiration of the international registration.
(c) Transformation of an Extension of Protection Into a
United States Application.--The holder of an international
registration canceled in whole or in part by the International
Bureau at the request of the office of origin, under Article
6(4) of the Madrid Protocol, may file an application, under
section 1 or 44 of this Act, for the registration of the same
mark for any of the goods and services to which the
cancellation applies that were covered by an extension of
protection to the United States based on that international
registration. Such an application shall be treated as if it had
been filed on the international registration date or the date
of recordal of the request for extension of protection with the
International Bureau, whichever date applies, and, if the
extension of protection enjoyed priority under section 67 of
this title, shall enjoy the same priority. Such an application
shall be entitled to the benefits conferred by this subsection
only if the application is filed not later than 3 months after
the date on which the international registration was canceled,
in whole or in part, and only if the application complies with
all the requirements of this Act which apply to any application
filed pursuant to section 1 or 44.
SEC. 71. AFFIDAVITS AND FEES.
(a) Required Affidavits and Fees.--An extension of
protection for which a certificate of extension of protection
has been issued under section 69 shall remain in force for the
term of the international registration upon which it is based,
except that the extension of protection of any mark shall be
canceled by the Director--
(1) at the end of the 6-year period beginning on
the date on which the certificate of extension of
protection was issued by the Director, unless within
the 1-year period preceding the expiration of that 6-
year period the holder of the international
registration files in the Patent and Trademark Office
an affidavit under subsection (b) together with a fee
prescribed by the Director; and
(2) at the end of the 10-year period beginning on
the date on which the certificate of extension of
protection was issued by the Director, and at the end
of each 10-year period thereafter, unless--
(A) within the 6-month period preceding the
expiration of such 10-year period the holder of
the international registration files in the
Patent and Trademark Office an affidavit under
subsection (b) together with a fee prescribed
by the Director; or
(B) within 3 months after the expiration of
such 10-year period, the holder of the
international registration files in the Patent
and Trademark Office an affidavit under
subsection (b) together with the fee described
in subparagraph (A) and an additional fee
prescribed by the Director.
(b) Contents of Affidavit.--The affidavit referred to in
subsection (a) shall set forth those goods or services recited
in the extension of protection on or in connection with which
the mark is in use in commerce and the holder of the
international registration shall attach to the affidavit a
specimen or facsimile showing the current use of the mark in
commerce, or shall set forth that any nonuse is due to special
circumstances which excuse such nonuse and is not due to any
intention to abandon the mark. Special notice of the
requirement for such affidavit shall be attached to each
certificate of extension of protection.
SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.
An extension of protection may be assigned, together with
the goodwill associated with the mark, only to a person who is
a national of, is domiciled in, or has a bona fide and
effective industrial or commercial establishment either in a
country that is a Contracting Party or in a country that is a
member of an intergovernmental organization that is a
Contracting Party.
SEC. 73. INCONTESTABILITY.
The period of continuous use prescribed under section 15
for a mark covered by an extension of protection issued under
this title may begin no earlier than the date on which the
Director issues the certificate of the extension of protection
under section 69, except as provided in section 74.
SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
An extension of protection shall convey the same rights as
an existing registration for the same mark, if--
(1) the extension of protection and the existing
registration are owned by the same person;
(2) the goods and services listed in the existing
registration are also listed in the extension of
protection; and
(3) the certificate of extension of protection is
issued after the date of the existing registration.
Markup Transcript
BUSINESS MEETING
THURSDAY, MARCH 8, 2001
House of Representatives,
Committee on the Judiciary,
Washington, DC.
The committee met, pursuant to notice, at 10 a.m., in Room
2141, Rayburn House Office Building, Hon. F. James
Sensenbrenner (chairman of the committee) presiding.
Pursuant to notice, I call up the bill H.R. 741, amending
the Trademark Act of 1946 to provide for the registration and
protection of trademarks used in commerce in order to carry out
the provisions of certain international conventions, for
purposes of markup and move its favorable recommendation to the
House.
[H.R. 741 follows:]
Chairman Sensenbrenner. Without objection, the bill will be
considered as read and open for amendment at any time. I yield
myself 5 minutes.
This legislation has been introduced in each of the past
four Congresses. The last term our committee reported this
measure favorably by voice vote, and it passed the full House
under suspension of the rules. Later in the term, the other
body began its deliberations over the merits of the Madrid
Protocol, which is an international trademark treaty that will
enable American trademark holders to register their marks to
the U.S. PTO and those countries which are already signatories
to the treaty. The process will be expeditious and far less
expensive than the current practice, which involves the
appointment of translators and attorneys in each individual
country in which an American trademark holder seeks protection.
This legislation before us simply implements our public law
to conform with the terms of the protocol. I note that two
companies, Bacardi and Pernod, are in the process of attempting
to settle a dispute over the rights to a mark which each wishes
to market. At least one of these companies believe that the
implementing language should be amended to reflect its position
on the matter. It is my understanding that talks between the
two companies are fluid and ongoing and that a resolution to
this problem may be forthcoming in the future.
I, therefore, wish to move the bill unamended to the floor
and allow the talks to continue. Once a compromise is reached,
I am confident that the Senate will shortly ratify the protocol
and pass the implementing language. I would point out that
yesterday and the day before I met with representatives of both
Bacardi and Pernod. I think it is fair to say that both of them
are in agreement with this process of passing the bill before
us unamended and that when they reach an agreement, should an
amendment to this legislation be necessary, it will be added in
the Senate after the Senate ratifies the Madrid Protocol.
I now recognize the gentleman from North Carolina for his
explanation of the contents.
Mr. Coble. I move to strike the last word.
Chairman Sensenbrenner. The gentleman is recognized for 5
minutes.
Mr. Coble. Mr. Chairman, you have very accurately portrayed
this issue. I will not consume my full 5 minutes.
The implementing legislation for the Madrid Protocol has
been introduced in the past four Congresses, as you pointed
out. Passage of the bill is important because it will send a
signal to the international community that United States'
businesses and trademark owners, that the Congress is serious
about our nation becoming part of a low-cost, efficient system
for the international registration of trademarks.
The World Intellectual Property Organization, WIPO,
administers the protocol which, in turn, operates the
international system for the registration of trademarks. This
system would assist our businesses in protecting their
proprietary names and brand-name goods, while at the same time
saving cost, time and effort. This is especially important to
our small businesses, which may only be able to afford--which
may not be able to afford worldwide protection for their marks
through a low-cost international registration system.
Unfortunately, and as you alluded in your opening remarks,
Mr. Chairman, Senate ratification of the protocol and passage
of the implementing language was derailed last term as a result
of a private dispute over a mark between Bacardi, the rum
distiller, and Pernod, a French concern, which formed a joint
venture with the Cuban Government. Although negotiations to
develop an acceptable compromise failed, as you just pointed
out, this is ongoing, and I think we will redouble our efforts
to resolve the problem during this present term.
Mr. Chairman and colleagues, it is important to move this
legislation forward as a way of encouraging all parties
involved in the Bacardi dispute to intensify their
negotiations. House consideration of the protocol will also
assure American trademark holders that the United States stands
ready to benefit imminently from its ratification.
This concludes my remarks, Mr. Chairman, and I yield back
the balance of my time.
Chairman Sensenbrenner. Anybody else wish to speak?
The gentlewoman from California?
Ms. Waters. Mr. Chairman, I move to strike the last word.
Chairman Sensenbrenner. The gentlewoman is recognized for 5
minutes.
Ms. Waters. I raise a question, while I must admit I'm not
familiar with this protocol, and it appears to be just as Mr.
Coble and you have described it, in making sure that we have a
process by which we can register and protect our trademarks.
I'd like to know if this is the protocol that establishes
the trademarks that are considered in World Trade Organization
decisions, and I would raise that question and yield to Mr.
Coble.
Mr. Coble. Would the gentlelady repeat her question. I was
not listening to you, Ms. Waters.
Ms. Waters. Yes. What I'm trying to find out is, is this,
the Madrid Protocol, the protocol that registers the trademarks
that are recognized in WTO disputes? Is this what they depend
on to determine whether or not an intellectual property has
been registered properly, is it on file?
Mr. Coble. It is my belief that the answer to that question
is no.
Ms. Waters. Well, on my own time, let me just say I raise
that because, as you know, some of us try and watch what is
going on with the WTO, and I have been very concerned about
intellectual property protections of certain companies. And at
this time, I'm very concerned about what is happening with the
pharmaceutical companies, 39 of them in our country, relative
to a court case that just opened in South Africa. And the basis
of my concern----
Chairman Sensenbrenner. Will the gentlewoman yield?
Ms. Waters. Yes.
Chairman Sensenbrenner. I think I can answer at least a
part of her question, so let me try.
I am aware that there are some very serious public health
tragedies, which are heart-wrenching, and legal disputes with
several of our overseas trading partners. However, as you know,
changing our law here will not affect the legal system of those
nations, and specifically Brazil, India and South Africa.
However, I am pleased by news reports, including one I read
this morning, about companies rising to the occasion and
providing humanitarian relief at great expense of their own and
providing life-saving drugs in the Third World at a fraction of
their cost.
Currently, there is a legal process underway in the other
nations, and there is about to be a trial in South Africa which
has been delayed until next month. May I suggest we wait and
watch the outcome of that trial before we take any action which
may be premature.
Furthermore, my staff is willing, able and ready to meet
your staff regarding any possible options, if any, that the
subcommittee has in this area of international law. I would
point out to the gentlewoman from California that I've been
concerned about this issue and have been following it as well.
And I have noticed that the American drug companies have been
rising to the occasion, generally. However, it is the European
pharmaceutical companies that are adopting what, in my opinion,
is a very shortsighted stonewalling of to issue.
So I think that we can proceed with this piece of
legislation. If more needs to be done following the outcome of
the trial in South Africa, I would certainly be willing to sit
down with you and figure out what we can do, if anything, in
response to whatever decision comes out.
Mr. Berman. Would the gentlelady yield further?
Ms. Waters. Yes.
Mr. Berman. Your initial question was the relationship of
this to WTO. This is a separate international protocol. It's
simply a way to have an international system for simplifying
and streamlining procedures just for the registration of
trademarks. It has no impact at all on patent law and does not,
as I understand it, from my great expertise in trademark law,
it has no relationship to--in other words, there's nothing
about this that is directly related to WTO.
Ms. Waters. I think it is.
Mr. Berman. You think it is?
Ms. Waters. Uh-huh.
Mr. Berman. Well, notwithstanding my expertise, I'll look
into this more.
Ms. Waters. Mr. Chairman, if I may, I appreciate your
concern and your obvious interest in this issue. I do believe
that, while it does not have anything directly to do with the
WTO, if the WTO is to recognize trademarks, they have to
perhaps make a determination about whether or not it is
legitimate, legally filed or correctly done, all of that. I
suspect that this registration establishes that criteria.
Mr. Scott. Will the gentlelady yield?
Ms. Waters. Yes.
Chairman Sensenbrenner. The gentlewoman's time has expired,
and I think we better go vote and come right back.
Mr. Conyers. Mr. Chairman, may I speak out of order for 1
minute?
Chairman Sensenbrenner. The gentleman from Michigan?
Mr. Conyers. Thank you. I wanted to report to the full
committee that the chairman and myself went before the House
Administration Committee yesterday and supported a number of
changes that I think were helpful and beneficial. Particularly,
we were able to get an additional staff allocation and new
space for the minority as a result of our negotiations. And I
didn't think it was secret, and I thought I'd make it public
that the comity that began the Judiciary Committee with the
Sensenbrenner chairmanship still continues, and I wanted to
thank you publicly.
Chairman Sensenbrenner. Well, I thank the gentleman from
Michigan. He was asked what it took to do this, and he said a
new chairman. So now that my usefulness has ended, we'll
adjourn the committee, and please come back.
[Laughter.]
[Recess.]
Chairman Sensenbrenner. The committee will be in order.
When the committee recessed, we were considering the bill
H.R. 741. Are there any amendments or motions to strike the
last word?
The gentleman from Virginia was seeking recognition.
Mr. Scott. No, Mr. Chairman.
Chairman Sensenbrenner. If there are no amendments----
Mr. Watt. Mr. Chairman?
Chairman Sensenbrenner. The gentleman from North Carolina?
Mr. Watt. Thank you, Mr. Chairman.
Chairman Sensenbrenner. The gentleman is recognized for 5
minutes.
Mr. Watt. I'll be brief. I don't think it will take 5
minutes, but I do think this is the appropriate time to express
a generalized concern, although I certainly have no objections
to this bill moving forward. I worked with the prior chairman
of the full committee and with the chairman of the subcommittee
and traveled with them, in fact, to some jurisdictions to try
to--some other nations to try to get our patent and copyright
protections expanded and try to get a uniform system that
protects the proprietary and origination interests of companies
and individuals in this country.
The generalized concern, however, that I want to express
has to do with this kind of general kicking things up to some
higher level that basically is convenient for this committee,
but makes it possible for us--and makes it impossible for us to
really have any involvement in the issues that we are supposed
to be involved in trying to resolve. And that's bad enough when
we're kicking it up to--we're just rushing legislation through
and hoping that the Senate and some Conference Committee
consisting of our peers will resolve the issue, but as I
understand it in this one, we're waiting on a resolution to
come from the Bacardi people and----
Chairman Sensenbrenner. Will the gentleman yield?
Mr. Watt. Yes, sir, I'd be happy to yield.
Chairman Sensenbrenner. Ordinarily, I would agree with the
gentleman from North Carolina. However, what we're dealing with
here is the process of ratification of a treaty, which the
House is not involved under the Constitution. This is either
the fourth or the fifth Congress, where the Madrid Protocol
Implementation bill has been introduced, and because some
Senators have placed holds on the treaty, they've also placed
holds on the implementation bill, and I think that the two of
them go together.
If the House were involved in whether the treaty is amended
or there would be understandings or reservations imposed during
the ratification process, I'd hold this bill here. But since
we're not involved, that's why, in consultation with the
gentleman from Michigan, we put this bill on the list of
noncontroversial bills because, frankly, in the ratification
process, which is where this issue will be resolved
constitutionally, we don't have a dog in that fight.
I thank the gentleman for yielding.
Mr. Watt. I thank the gentleman for his comments. And it's
for that very reason that I really have no strong objections,
and I'm raising a generalized concern here because I think, in
the interests of moving things along in the process, we don't
want to overlook the jurisdiction and prerogatives of this
committee. And I think we're going to get to a bill this
morning, where I think really should have gone to the--through
the subcommittee process, rather than being jumped to the full
committee. So I'm kind of laying the groundwork for a more
generalized concern because expediency is one thing, but there
are some prerogatives of the committee and responsibilities of
the committee that I think are important too.
Having said that, I agree with the gentleman. I don't have
any objection to this particular bill moving forward in the
process, but I hope we're not going to make this a practice of
just punting things that we really ought to be analyzing more
thoroughly, just in the interests of expediency.
I will yield back the balance of my time.
Chairman Sensenbrenner. The question occurs on the motion
to report the bill H.R. 741 favorably.
Those in favor will signify by saying aye.
Opposed, no.
The ayes have it. The motion to report favorably is
adopted.
Without objection, the chairman is authorized to move to go
to conference, pursuant to House rules. Without objection, the
staff is directed to make any technical and conforming changes,
and all members will be given 2 days, as provided by House
rules, in which to submit additional dissenting supplemental or
minority views.