[Congressional Bills 108th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2494 Introduced in House (IH)]
108th CONGRESS
1st Session
H. R. 2494
To improve and promote compliance with international intellectual
property obligations relating to the Republic of Cuba, and for other
purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
June 17, 2003
Mr. Rangel (for himself, Mr. Flake, Mr. Delahunt, Mr. Houghton, Mr.
Pomeroy, and Mr. Matsui) introduced the following bill; which was
referred to the Committee on International Relations, and in addition
to the Committee on the Judiciary, for a period to be subsequently
determined by the Speaker, in each case for consideration of such
provisions as fall within the jurisdiction of the committee concerned
_______________________________________________________________________
A BILL
To improve and promote compliance with international intellectual
property obligations relating to the Republic of Cuba, and for other
purposes.
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 ``United States-Cuba Trademark
Protection Act of 2003''.
SEC. 2. FINDINGS AND PURPOSE.
(a) Findings.--Congress makes the following findings:
(1) Trademarks and trade names are vital assets of the many
United States companies that engage in international trade.
(2) Worldwide sales of branded products of United States
companies contribute in important ways to the livelihood of
American workers and the well-being and continued healthy
growth of numerous United States businesses. These sales
depend, in turn, on the security of the United States
trademarks and trade names protected by reciprocal treaties and
agreements for the protection of intellectual property.
(3) Among such treaties and agreements are the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
of the World Trade Organization, the Inter-American Convention
for Trademark and Commercial Protection, and the Madrid
Protocol.
(4) The United States should ensure that the trademark and
trade names of United States companies continue to be protected
abroad by working to ensure that countries comply with
intellectual property rights treaties and agreements. At the
same time, the United States should adhere to its obligations
under such treaties and agreements.
(5) Hundreds of United States companies have registered
their trademarks in Cuba in order to ensure the exclusive right
to use those trademarks when the United States trade embargo on
that country is lifted. Indeed, following the enactment of the
Trade Sanctions Reform and Export Enhancement Act of 2000, many
United States companies are already exporting branded food
products to Cuba.
(6) The United States District Court for the Southern
District of New York ruled that section 211 of the Department
of Commerce and Related Agencies Appropriations Act, 1999
abrogates, with respect to Cuba, the Inter-American Convention
on Trademarks and Commercial Protection, and the court's ruling
was affirmed by the United States Court of Appeals for the
Second Circuit.
(7) Cuba's international remedy under customary
international law, as codified by Article 60 of the 1969 Vienna
Convention on Treaties, for a breach by the United States of
the Inter-American Convention, is to suspend or revoke the
protections Cuba currently affords United States trademarks and
trade names.
(8) In order to preserve the rights of United States
nationals holding trademarks in Cuba, the United States must
repeal section 211 of the Department of Commerce and Related
Agencies Appropriations Act, 1999, and should take the
necessary steps to promote the long-term protection of
trademarks, trade names, and domain names held by United States
nationals in that country.
(9) The recent actions by the Government of Cuba to
prosecute and imprison unfairly critics of the government are
unacceptable and should be met with strong condemnation.
(10) Promoting greater respect for the rule of law in Cuba,
including through the provisions of this Act, will it is hoped
diminish the likelihood for actions taken in the future that
undermine operation of the rule of law or disregard fundamental
fairness in administrative and juridical proceedings.
(b) Purpose.--The purpose of this Act is to promote global
intellectual property rights protections by ensuring that the United
States and the Republic of Cuba continue to comply with their
obligations under international trademark agreements and
understandings.
SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS AND UNDERSTANDINGS.
(a) Consultations With Cuba.--The President shall direct the
Secretary of State to initiate consultations with the Republic of Cuba
not later than December 31, 2003, in order to obtain assurances that
the Republic of Cuba will--
(1) continue to adhere to--
(A) the Paris Convention for the Protection of
Industrial Property;
(B) the Inter-American Convention for Trademark and
Commercial Protection; and
(C) the Madrid Agreement Concerning the
International Registration of Marks and Protocol
Relating to the Madrid Agreement Concerning the
International Registration of Marks;
(2) implement the Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks adopted by the
General Assembly of the World Intellectual Property
Organization (Pub 833 E) in September 1999; and
(3) commit that the manager of the Country-Code Top-Level
Domain (ccTLD) will subscribe to the Uniform Dispute Resolution
Procedure (UDRP) approved by the Internet Corporation for
Assigned Names and Numbers (ICANN) and provide to United States
nationals nondiscriminatory access to such procedures.
(b) Consultation With Secretary of Commerce.--The Secretary of
State shall initiate and conduct the consultations under subsection (a)
in consultation with the Secretary of Commerce.
(c) Reports to Congress.--The Secretary of State and the Secretary
of Commerce shall submit to the Congress a report on the progress and
results of the consultations under subsection (a) not later than 6
months after the date of the enactment of this Act and not later than
every 6 months thereafter.
(d) Repeal of Prohibition on Transactions or Payments With Respect
to Certain United States Intellectual Property.--
(1) Repeal.--Section 211 of the Department of Commerce and
Related Agencies Appropriations Act, 1999 (as contained in
section 101(b) of division A of Public Law 105-277; 112 Stat.
2681-88) is repealed.
(2) Regulations.--The Secretary of the Treasury shall issue
such regulations as are necessary to carry out the repeal made
by paragraph (1), including removing any prohibition on
transactions or payments to which subsection (a)(1) of section
211 of the Department of Commerce and Related Agencies
Appropriations Act, 1999 applied.
SEC. 4. REGISTRY OF U.S. TRADEMARKS AND WELL-KNOWN MARKS IN CUBA.
(a) Registry of U.S. Trademarks.--Not later than December 31, 2003,
the Director of the Patent and Trademark Office shall establish a
registry of trademarks each of which is owned by a United States
national and was registered in, or submitted for registration to, the
Republic of Cuba on or after January 1, 1959.
(b) Registry of well-known marks.--
(1) Establishment.--Not later than December 31, 2003, the
Director of the Patent and Trademark Office shall establish a
registry of trademarks each of which is owned by a United
States national and met the requirements for a well-known mark
in the Republic of Cuba under Article 6bis of the Paris
Convention for the Protection of Industrial Property as of
December 31, 1958, and the Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks adopted by the
General Assembly of the World Intellectual Property Association
(Pub 833 E) in September 1999.
(2) Requirements for inclusion on registry.--The Director
of the Patent and Trademark Office shall require any applicant
seeking to register a well-known mark on the registry
established under paragraph (1) to supply documentation to
establish that the mark met the requirements set forth in
paragraph (1).
(c) Accessibility.--The Director of the Patent and Trademark Office
shall ensure that each registry established under subsections (a) and
(b)--
(1) is accessible to the public through the Internet;
(2) allows trademark examiners and applicants seeking to
register trademarks on the registry to send and receive
communications electronically;
(3) allows the United States Patent and Trademark Office to
process, maintain, and search electronically the contents and
history of each application to register a trademark, and
trademark registration, included in the registry; and
(4) allows the public to access and search electronically
the contents and history of each such application and trademark
registration.
SEC. 5. AMENDMENTS TO CUBAN ASSET CONTROL REGULATIONS.
The Secretary of the Treasury shall amend the Cuban Assets Control
Regulations (part 515 of title 31, Code of Federal Regulations) so
that--
(1) the following transactions by any person who is not a
designated national are authorized:
(A) the filing and renewal of a blocked foreign
domain name, the transfer or receipt of a blocked
foreign domain name, and the filing and prosecution of
proceedings to determine rights to a blocked foreign
domain name and the prosecution of defenses to such
proceedings; and
(B) the filing and renewal of a blocked foreign
trade name, the transfer or receipt of a blocked
foreign trade name, and the filing and prosecution of
proceedings related to a blocked foreign trade name and
the prosecution of defenses to such proceedings;
(2)(A) the transfer or receipt of any trademark, trade
name, or domain name subject to United States law in which a
designated national has an interest is authorized; and
(B) the filing and prosecution of opposition and
infringement proceedings related to any trademark or trade name
in which a designated national has an interest, the filing and
prosecution of proceedings to determine rights to any domain
name in which a designated national has an interest, and the
prosecution of defenses to such proceedings, are authorized;
and
(3) the payment of fees to the government of any foreign
country, either directly or through an attorney or
representative, is authorized for research of registries,
directories, and government records with respect to blocked
foreign trademarks, blocked foreign trade names, or blocked
foreign domain names, and the protection and enforcement
thereof.
SEC. 6. CONFORMING AMENDMENTS.
(a) International Conventions.--Section 44 of the Trademark Act of
1946 (15 U.S.C. 1126) is amended by adding at the end the following:
``(j)(1) Any designated national shall be entitled to the benefits
of this Act to the extent necessary to give effect to any provision of
any convention or treaty relating to trade or commercial names, or
relating to the repression of unfair competition, to which the United
States and the Republic of Cuba are parties, or to any reciprocal
rights relating to trade or commercial names or the repression of
unfair competition, that are extended by the Republic of Cuba to
nationals of the United States by law. The absence of commercial
activities within the United States shall not constitute a lack of
standing or any other reason for the dismissal of any action brought by
any such designated national pursuant to this subsection.
``(2) No other provision of this section shall be construed to
limit the applicability of paragraph (1).
``(3) As used in this subsection, the term `designated national'
has the meaning given that term in subpart C of part 515 of title 31,
Code of Federal Regulations, as in effect on April 28, 2003, and
includes any national of a foreign country that is a successor-in-
interest to that designated national.''.
(b) Civil Actions.--Section 43(a) of the Trademark Act of 1946 (15
U.S.C. 1125(a)) is amended by adding at the end the following:
``(4)(A) For purposes of this subsection, any person who is engaged
in the bona fide production, distribution, marketing, or sale of
spirits outside the United States and who lawfully uses a mark or
geographical indication in connection with such spirits shall be
considered to be or likely to be damaged by a mark or geographical
indication--
``(i) which, when used on or in connection with other
spirits, identifies a place other than origin of such other
spirits; and
``(ii) of which the first use in commerce on or in
connection with such other spirits was made on or after one
year after the date on which the WTO Agreement (as defined in
section 2(9) of the Uruguay Round Agreements Act) entered into
force with respect to the United States.
The preceding sentence shall also apply to any person in any proceeding
under section 13 or 14 of this Act.
``(B) As used in this paragraph, the term `spirits' means any
article provided for in heading 2207 or 2208 of the Harmonized Tariff
Schedule of the United States.''.
SEC. 7. AUTHORITY OF COURTS.
United States courts shall have the authority to recognize,
enforce, or otherwise validate any assertion by a designated national
of rights in any mark or trade name based on common law rights or
registration or under subsection (b) or (e) of section 44 of the
Trademark Act of 1946. In this subsection, the term ``designated
national'' includes any national of a foreign country that is a
successor-in-interest to that designated national.
SEC. 8. DEFINITIONS.
In this Act:
(1) Blocked foreign domain name.--The term ``blocked
foreign domain name'' means a domain name in which a designated
national has an interest, including any domain name issued by a
designated national.
(2) Blocked foreign trade name.--The term ``blocked foreign
trade name'' means any trade name in which a designated
national has an interest, including any such trade name issued
by a designated national.
(3) Blocked foreign trademark.--The term ``blocked foreign
trademark'' has the meaning given that term in section
515.528(c) of title 31, Code of Federal Regulations, as in
effect on April 28, 2003.
(4) Designated national.--The term ``designated national''
has the meaning given that term in subpart C of part 515 of
title 31, Code of Federal Regulations, as in effect on April
28, 2003.
(5) Director of the patent and trademark office.--The term
``Director of the Patent and Trademark Office'' means the Under
Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
(6) Domain name; mark; trademark.--The terms ``domain
name'', ``mark'', and ``trademark'' have the meanings given
those terms in section 45 of the Trademark Act of 1946.
(7) Interest.--The term ``interest'' has the meaning given
that term in section 515.312 of title 31, Code of Federal
Regulations, as in effect on April 28, 2003.
(8) Trademark act of 1946.--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 (15 U.S.C. 1051
et seq.).
(9) Trade name.--The term ``trade name'' means a trade name
or commercial name as those terms are defined in section 45 of
the Trademark Act of 1946.
(10) United states national.--The term ``United States
national'' means--
(A) any United States citizen; or
(B) any other legal entity which is organized under
the laws of the United States, or of any State, the
District of Columbia, or any commonwealth, territory,
or possession of the United States, and which has its
principal place of business in the United States.
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