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

111th Congress, 2009–2010. Text as of Aug 25, 2010 (Passed Congress/Enrolled Bill).

Status & Summary | PDF | Source: GPO

One Hundred Eleventh Congress of the United States of America

2d Session

S. 2968

IN THE SENATE OF THE UNITED STATES

AN ACT

To make certain technical and conforming amendments to the Lanham Act.

1.

Short title

This Act may be cited as the Trademark Technical and Conforming Amendment Act of 2010..

2.

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).

3.

Technical and conforming amendments

(a)

Certificates of registration

Section 7 of the Trademark Act of 1946 (15 U.S.C. 1057) is amended—

(1)

by inserting United States before Patent and Trademark Office each place that term appears;

(2)

in subsection (b), by striking registrant’s each place that appears and inserting owner’s;

(3)

in subsection (e)—

(A)

by striking registrant each place that term appears and inserting owner; and

(B)

in the third sentence, by striking or, if said certificate is lost or destroyed, upon a certified copy thereof; and

(4)

by amending subsection (g) to read as follows:

(g)

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.

.

(b)

Incontestability of right To use mark under certain conditions

Section 15 of the Trademark Act of 1946 (15 U.S.C. 1065) is amended—

(1)

by striking right of the registrant and inserting right of the owner;

(2)

by amending paragraph (1) to read as follows:

(1)

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

(3)

in paragraph (2), by inserting United States before Patent and Trademark Office.

(c)

Appeal to courts

Section 21 of the Trademark Act of 1946 (15 U.S.C. 1071) is amended—

(1)

by inserting United States before Patent and Trademark Office each place that term appears;

(2)

in subsection (a)(1), by inserting or section 71 after section 8; and

(3)

in subsection (b)(4), by striking If there be and inserting If there are.

(d)

Conforming requirements for affidavits

(1)

Duration, affidavits and fees

Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is amended to read as follows:

8.

Duration, affidavits and fees

(a)

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:

(1)

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).

(2)

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.

(3)

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.

(b)

Requirements for affidavit

The affidavit referred to in subsection (a) shall—

(1)
(A)

state that the mark is in use in commerce;

(B)

set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;

(C)

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

(D)

be accompanied by the fee prescribed by the Director; or

(2)
(A)

set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;

(B)

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

(C)

be accompanied by the fee prescribed by the Director.

(c)

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.

(d)

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).

(e)

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.

(f)

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.

.

(2)

Affidavits and fees

Section 71 of the Trademark Act of 1946 (15 U.S.C. 1141k) is amended to read as follows:

71.

Duration, affidavits and fees

(a)

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:

(1)

Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.

(2)

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.

(3)

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.

(b)

Requirements for affidavit

The affidavit referred to in subsection (a) shall—

(1)
(A)

state that the mark is in use in commerce;

(B)

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;

(C)

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

(D)

be accompanied by the fee prescribed by the Director; or

(2)
(A)

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;

(B)

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

(C)

be accompanied by the fee prescribed by the Director.

(c)

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.

(d)

Notice of requirement

Special notice of the requirement for such affidavit shall be attached to each certificate of extension of protection.

(e)

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.

(f)

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.

.

4.

Study and report

(a)

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—

(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.

(b)

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.

Speaker of the House of Representatives

Vice President of the United States and President of the Senate