S. 2968 (111th): Trademark Technical and Conforming Amendment Act of 2010

Introduced:
Jan 28, 2010 (111th Congress, 2009–2010)
Sponsor:
Sen. Patrick Leahy [D-VT]
Status:
Signed by the President
Slip Law:
This bill became Pub.L. 111-146.

The bill’s title was written by the bill’s sponsor. S. stands for Senate bill.

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Status

This bill was enacted after being signed by the President on March 17, 2010.

Progress
Introduced Jan 28, 2010
Passed Senate Jan 28, 2010
Passed House Mar 03, 2010
Signed by the President Mar 17, 2010
Cosponsors
1 cosponsors (1R) (show)
Committees

House Judiciary

The committee chair determines whether a bill will move past the committee stage.

Full Title

A bill to make certain technical and conforming amendments to the Lanham Act.

Summary

No summaries available.

Text

Read Bill Text »

Last updated Jan 01, 2010.
5 pages

Primary Source

View on THOMAS (The Library of Congress)

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Citation

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GovTrack’s Bill Summary

We don’t have a summary available yet.

Library of Congress Summary

The summary below was written by the Congressional Research Service, which is a nonpartisan division of the Library of Congress.

3/17/2010. Amends the Act commonly known as the Lanham Act to replace references to "registrant" with references to "owner" in provisions: (1) making a certificate of registration prima facie evidence of the validity, registration, ownership, and exclusive rights to use a mark; and (2) relating to a registrant's surrender, cancellation, or amendment of registration. Requires, in the event of a surrender, cancellation, or amendment, that an appropriate entry be made on the records of the United States Patent and Trademark Office (USPTO) and on the certificate of registration. (Current law allows, when the certificate is lost or destroyed, such an entry to be made on a certified copy of the certificate.) Requires, when the USPTO makes a material mistake in a registration, that a certificate stating the fact and nature of the mistake be attached to each printed copy of the registration. (Current law requires that the certificate stating the mistake be attached to each printed copy of the registration certificate.) Replaces references to "registrant" with references to "owner" in provisions relating to the incontestability of the right to use a mark under certain conditions. Allows the holder of an international registration to appeal to the U.S. Court of Appeals for the Federal Circuit if the holder is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board. Modifies requirements regarding the duration of registrations and related affidavits and fees. Requires a study and report to Congress on: (1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of federal government services to protect trademarks and prevent counterfeiting.

House Republican Conference Summary

The summary below was written by the House Republican Conference, which is the caucus of Republicans in the House of Representatives.

This summary can be found at http://www.gop.gov/bill/111/2/s2968.

Background

The United States is a signatory to the Madrid Protocol, an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Protocol. 

This means an American trademark owner pays the U.S. Patent and Trademark Office in Alexandria, Virginia, a nominal fee to expedite the necessary paperwork overseas.  This process makes it easier and cheaper for U.S. trademark owners to acquire protection for their intellectual property in other countries.   

The main purpose of S. 2968 is to bring provisions for maintaining extensions of protection under Madrid in conformity with provisions for maintaining registrations.  Maintenance filings with PTO by the trademark owner are necessary to perpetuate protection of the trademark.  

The bill was developed in concert with the U.S. Patent and Trademark Office and relevant trade associations that represent the interests of trademark holders.  There is no known opposition to the bill.

Summary

The legislation makes technical but important revisions to the Madrid Protocol Implementation Act of 2002.  It is identical to H.R. 4515 (Conyers, D-MI), with the exception of a study provision involving trademark litigation and small businesses.

S. 2968 makes the following technical changes:

  • Substitutes the word "owner" for "registrant" throughout the Lanham (Trademark) Act;
  • Prescribes time frames and other requirements for filing affidavits of use or "excusable" non-use of a mark;
  • Codifies Trademark Office practice by requiring a trademark owner to file an affidavit stating that their mark has been in continuous use for five years;
  • Substitutes "Director" for "Commissioner" when referencing the head of the U.S. Patent and Trademark Office;
  • Ensures that registrations issued as extensions of protection under the Madrid Protocol are referenced in certain appellate proceedings before the U.S. Court of Appeals for the Federal Circuit;
  • Conforms provisions for maintaining extension of protection under the Madrid Protocol with provisions for maintaining registrations; and
  • Authorizes the Department of Commerce and the Intellectual Property Enforcement Coordinator to evaluate and report on treatment of smaller businesses involved in trademark litigation.  

The bill authorizes the PTO Director to permit applicants to correct good-faith and harmless errors. 

S. 2968 also includes a study provision that directs the Intellectual Property Enforcement Coordinator and the Department of Commerce to evaluate and report on treatment of smaller businesses involved in trademark litigation.

Cost

CBO has not scored S. 2968.

House Democratic Caucus Summary

The House Democratic Caucus does not provide summaries of bills.

So, yes, we display the House Republican Conference’s summaries when available even if we do not have a Democratic summary available. That’s because we feel it is better to give you as much information as possible, even if we cannot provide every viewpoint.

We’ll be looking for a source of summaries from the other side in the meanwhile.

The bill contains the following citations to other parts of U.S. law:

United States Code

The United States Code is the compilation of permanent laws enacted by Congress. Temporary and other non-permanent laws do not appear in the United States Code. (About half of the United States Code is the law itself, called positive law. The other half is merely a compilation of the laws but has no legal significance.)