[House Report 106-81]
[From the U.S. Government Publishing Office]
106th Congress Report
HOUSE OF REPRESENTATIVES
1st Session 106-81
_______________________________________________________________________
MADRID PROTOCOL IMPLEMENTATION ACT
_______________________________________________________________________
April 12, 1999.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Coble, from the Committee on the Judiciary, submitted the following
R E P O R T
[To accompany H.R. 769]
[Including cost estimate of the Congressional Budget Office]
The Committee on the Judiciary, to whom was referred the bill
(H.R. 769) 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......................................................... 4
Committee Consideration.......................................... 4
Vote of the Committee............................................ 4
Committee Oversight Findings..................................... 4
Committee on Government Reform and Oversight Findings............ 4
New Budget Authority and Tax Expenditures........................ 4
Congressional Budget Office Cost Estimate........................ 4
Constitutional Authority Statement............................... 6
Section-by-Section Analysis and Discussion....................... 6
Changes in Existing Law.......................................... 7
Purpose and Summary
The purpose of H.R. 769 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 business. 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 Organization (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 Protocolfor 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.
House Resolution 769 represents implementing legislation
for the Protocol. It is identical to measures introduced in
both the 103rd and 104th Congresses. While the Administration
has still not forwarded the treaty to the Senate for
ratification, thereby allowing the United States to become a
member of the Protocol, the introduction of H.R. 769 sends 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
16 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. 769, nor to the substantive
portions of the treaty. The State Department is trying to
resolve differences between the Administration and the European
Union (EU) regarding the voting rights of intergovernmental
members of the Protocol in the Assembly established by the
agreement. Pursuant to the Protocol, the EU receives a separate
vote in addition to the votes of its member states. While it
may be argued that the existence of a supranational European
trademark issued by the Office for Harmonization in the
Internal Market (``European Trademark Office'') justifies the
additional vote, the State Department opposes this proviso as a
contravention of the democratic concept of one vote per
country. State Department officials also believe this voting
structure may establish a precedent for deviation from the one
vote-one state principle in future international agreements.
These differences must be settled before the Secretary of State
will recommend to the President that the Administration sign
the Protocol and present a ratification package to the Senate.
In furtherance of this end, the Secretary of State
transmitted an April 1997 ``demarche,'' or diplomatic
representation, to European Commission (EC) officials in
Brussels, Belgium, requesting that the organization assent to a
compromise position on the Protocol voting rights structure
mentioned above. In effect, the Secretary wants the EC (the
government bureaucracy of the EU) to endorse substitute
language on the matter that is identical to that set forth in
Article 15.3(b) of the WIPO Copyright Treaty negotiated last
December in Geneva, Switzerland. Briefly, Article 15.3(b) would
permit an ``intergovernmental organization,'' such as the EU,
to participate in place of its member states with a number of
votes equal to the number of states which are parties to the
Protocol. Moreover, an intergovernmental organization could not
vote if one of its member states chose to participate, and vice
versa. In other words, the EU could functiononly a proxy for
its members.
While the focal point of the demarche is the voting rights
structure of the Protocol, the Secretary of State also
mentioned the following topics in the document:
(1) The adoption of Article 18 WIPO Copyright
language governing ``competency'' among the EU and its
member states. This would ensure that every contracting
party to the Protocol (including intergovernmental
organization like the EU) would assume all of the
obligations under the Protocol in addition to enjoying
all of its benefits
(2) Affirmation of Article 14 of the Protocol
governing the admission of ``acceptable''
intergovernmental organizations.
(3) ``Bloc,'' or en masse, voting. The State
Department in concerned that the EU could cast bloc
votes on behalf of its members, a practice that could
``jeopardize'' the value of single votes and
potentially compromise U.S. interests. The demarche
cites the need to explore the matter informally.
Hearings
In light of thorough consideration of the bill in previous
Congresses, and given the noncontroversial contents of H.R.
769, the Subcommittee on Courts and Intellectual Property
elected not to conduct any hearings on the matter.
Committee Consideration
On March 11, 1999, the Subcommittee on Courts and
Intellectual Property, a reporting quorum being present,
ordered H.R. 769 reported by voice vote, with no objection
heard, to the Committee on the Judiciary for further
consideration.
Subsequently, the Committee on the Judiciary, a reporting
quorum being present, ordered H.R. 769 reported on March 24,
1999, also by voice vote, with no objection heard.
Vote of the Committee
There were no recorded votes during committee consideration
of H.R. 769.
Committee Oversight Findings
In compliance with clause 2(l)(3)(A) of rule XI 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.
Committee on Government Reform and Oversight Findings
No findings or recommendations of the Committee on
Government Reform and Oversight were received as referred to in
clause 2(l)(3)(D) of rule XI of the Rules of the House of
Representatives.
New Budget Authority and Tax Expenditures
Clause 2(l)(3)(B) of the House Rule XI is inapplicable
because this legislation does not provide new budgetary
authority or increased tax expenditures.
Congressional Budget Office Cost Estimate
In compliance with clause 2(l)(C)(3) of rule XI of the
Rules of the House of Representatives, the Committee sets
forth, with respect to the bill, H.R. 769, the following
estimate and comparison prepared by the Director of the
Congressional Budget Office under section 403 of the
Congressional Budget Act of 1974:
U.S. Congress,
Congressional Budget Office,
Washington, DC, April 1, 1999.
Hon. Henry J. Hyde,
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. 769, 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 Mark Hadley.
Sincerely,
Barry A. Anderson,
(For Dan L. Crippen, Director).
Enclosure.
H.R. 769--Madrid Protocol Implementation Act
H.R. 769 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 by a
single registration. The bill specifies 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 Reform
Mandates 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. 769 would fit within that exclusion
because it would implement that Madrid Protocol, an
international agreement requiring ratification by the Senate.
H.R. 769 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 2000, CBO
estimates that the United States Patent and Trademark Office
(PTO) would incur net costs of less than $500,000 in 2000 to
establish a computer database, subject to the availability of
appropriated funds.
United States participation in the Madrid Protocol would
likely result in an increase in the number of trademark
applications received by the PTO. The PTO's costs for
processing trademark applications are fully funded by filing
fees paid by the applicants. Such fees are collected and spent
under authority provided in annual appropriation acts. Because
income from fee offsets the costs of processing applications, a
change in the number of trademark applications would have no
net budgetary impact.
The CBO staff contact for this estimate is Mark Hadley. The
estimate was approved by Robert A. Sunshine, Deputy Assistant
Director for Budget Analysis.
Constitutional Authority
Pursuant to rule XI, clause 2(l)(4) 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
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
withindesignated 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 and existing law in which no change is
proposed is shown in roman):
ACT OF JULY 5, 1946
(Commonly Referred to as the Trademark Act of 1946)
AN ACT To provide for the registration and protection of trade-marks
used in commerce, to carry out the provisions of certain international
conventions, and for other purposes.
* * * * * * *
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 Patentand 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
Commissioner.
SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
Upon the filing of an application for international
registration and payment of the prescribed fees, the
Commissioner 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 Commissioner 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 Commissioner
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 Commissioner.
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 Commissioner 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 Commissioner
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 Commissioner 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 Commissioner has sent a notification of the
possibility of opposition under paragraph (1)(C), the
Commissioner 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 Commissioner 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 Commissioner 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 Commissioner.
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
Commissioner 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 Commissioner 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 samepriority. 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 Commissioner--
(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 Commissioner, 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 Commissioner; 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 Commissioner, 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 Commissioner; 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 Commissioner.
(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
Commissioner 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.