I
111th CONGRESS
2d Session
H. R. 4515
IN THE HOUSE OF REPRESENTATIVES
January 26, 2010
Mr. Conyers (for himself and Mr. Smith of Texas) introduced the following bill; which was referred to the Committee on the Judiciary
A BILL
To make certain technical and conforming amendments to the Lanham Act.
Short title
This Act may be cited as the
Trademark Technical and Conforming
Amendment Act of 2010.
.
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.).
Technical and conforming amendments
Certificates of registration
Section 7 of the Trademark Act of 1946 (15 U.S.C. 1057) is amended—
by inserting
United States
before Patent and Trademark Office
each place that term appears;
in subsection (b),
by striking registrant’s
each place that appears and inserting
owner’s
;
in subsection (e)—
by striking
registrant
each place that term appears and inserting
owner
; and
in the third
sentence, by striking or, if said certificate is lost or destroyed, upon
a certified copy thereof
; and
by amending subsection (g) to read as follows:
Correction of Patent and Trademark Office mistake
Whenever 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 have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
.
Incontestability of right To use mark under certain conditions
Section 15 of the Trademark Act of 1946 (15 U.S.C. 1065) is amended—
by striking
right of the registrant
and inserting right of the
owner
;
by amending paragraph (1) to read as follows:
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
in paragraph (2),
by inserting United States
before Patent and Trademark
Office
.
Appeal to courts
Section 21 of the Trademark Act of 1946 (15 U.S.C. 1071) is amended—
by inserting
United States
before Patent and Trademark Office
each place that term appears;
in subsection
(a)(1), by inserting or section 71
after section
8
; and
in subsection
(b)(4), by striking If there be
and inserting If there
are
.
Conforming requirements for affidavits
Duration, affidavits and fees
Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is amended to read as follows:
Duration, affidavits and fees
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:
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).
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.
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.
Requirements for affidavit
The affidavit referred to in subsection (a) shall—
state that the mark is in use in commerce;
set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;
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
be accompanied by the fee prescribed by the Director; or
set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;
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
be accompanied by the fee prescribed by the Director.
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.
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).
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.
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.
.
Affidavits and fees
Section 71 of the Trademark Act of 1946 (15 U.S.C. 1141k) is amended to read as follows:
Duration, affidavits and fees
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:
Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.
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.
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.
Requirements for affidavit
The affidavit referred to in subsection (a) shall—
state that the mark is in use in commerce;
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;
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
be accompanied by the fee prescribed by the Director; or
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;
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
be accompanied by the fee prescribed by the Director.
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.
Notice of requirement
Special notice of the requirement for such affidavit shall be attached to each certificate of extension of protection.
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.
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.
.
Study and report
In general
Not later than 1 year after the date of enactment of this Act, the Secretary of Commerce, in consultation with 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—
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
the best use of Federal Government services to protect trademarks and prevent counterfeiting.
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.