Trademark Law Treaty Implementation Act

PUBLIC LAW 105–330—OCT. 30, 1998

TRADEMARK LAW TREATY IMPLEMENTATION

112 STAT. 3064

PUBLIC LAW 105–330—OCT. 30, 1998

Public Law 105–330
105th Congress
An Act
Oct. 30, 1998
[S. 2193]

To implement the provisions of the Trademark Law Treaty.

Be it enacted by the Senate and House of Representatives of
the United States of America in Congress assembled,
Trademark Law
Treaty
Implementation
Act.

TITLE I—TRADEMARK LAW TREATY
IMPLEMENTATION

15 USC 1051
note.

SEC. 101. SHORT TITLE.

15 USC 1058
note.

SEC. 102. REFERENCE TO THE TRADEMARK ACT OF 1946.

This title may be cited as the ‘‘Trademark Law Treaty
Implementation Act’’.
For purposes of this title, 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.), shall be referred to as the ‘‘Trademark Act of 1946’’.
SEC. 103. APPLICATION FOR REGISTRATION; VERIFICATION.

(a) APPLICATION FOR USE OF TRADEMARK.—Section 1(a) of the
Trademark Act of 1946 (15 U.S.C. 1051(a)) is amended to read
as follows:
‘‘SECTION 1. (a)(1) The owner of a trademark used in commerce
may request registration of its trademark on the principal register
hereby established by paying the prescribed fee and filing in the
Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Commissioner,
and such number of specimens or facsimiles of the mark as used
as may be required by the Commissioner.
‘‘(2) The application shall include specification of the applicant’s
domicile and citizenship, the date of the applicant’s first use of
the mark, the date of the applicant’s first use of the mark in
commerce, the goods in connection with which the mark is used,
and a drawing of the mark.
‘‘(3) The statement shall be verified by the applicant and specify
that—
‘‘(A) the person making the verification believes that he
or she, or the juristic person in whose behalf he or she makes
the verification, to be the owner of the mark sought to be
registered;
‘‘(B) to the best of the verifier’s knowledge and belief,
the facts recited in the application are accurate;

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112 STAT. 3065

‘‘(C) the mark is in use in commerce; and
‘‘(D) to the best of the verifier’s knowledge and belief,
no other person has the right to use such mark in commerce
either in the identical form thereof or in such near resemblance
thereto as to be likely, when used on or in connection with
the goods of such other person, to cause confusion, or to cause
mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall—
‘‘(i) state exceptions to the claim of exclusive use; and
‘‘(ii) shall specify, to the extent of the verifier’s
knowledge—
‘‘(I) any concurrent use by others;
‘‘(II) the goods on or in connection with which
and the areas in which each concurrent use exists;
‘‘(III) the periods of each use; and
‘‘(IV) the goods and area for which the applicant
desires registration.
‘‘(4) The applicant shall comply with such rules or regulations
as may be prescribed by the Commissioner. The Commissioner
shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.’’.
(b) APPLICATION FOR BONA FIDE INTENTION TO USE TRADEMARK.—Subsection (b) of section 1 of the Trademark Act of 1946
(15 U.S.C. 1051(b)) is amended to read as follows:
‘‘(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on
the principal register hereby established by paying the prescribed
fee and filing in the Patent and Trademark Office an application
and a verified statement, in such form as may be prescribed by
the Commissioner.
‘‘(2) The application shall include specification of the applicant’s
domicile and citizenship, the goods in connection with which the
applicant has a bona fide intention to use the mark, and a drawing
of the mark.
‘‘(3) The statement shall be verified by the applicant and
specify—
‘‘(A) that the person making the verification believes that
he or she, or the juristic person in whose behalf he or she
makes the verification, to be entitled to use the mark in commerce;
‘‘(B) the applicant’s bona fide intention to use the mark
in commerce;
‘‘(C) that, to the best of the verifier’s knowledge and belief,
the facts recited in the application are accurate; and
‘‘(D) that, to the best of the verifier’s knowledge and belief,
no other person has the right to use such mark in commerce
either in the identical form thereof or in such near resemblance
thereto as to be likely, when used on or in connection with
the goods of such other person, to cause confusion, or to cause
mistake, or to deceive.
Except for applications filed pursuant to section 44, no mark shall
be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
‘‘(4) The applicant shall comply with such rules or regulations
as may be prescribed by the Commissioner. The Commissioner

Regulations.

Regulations.

112 STAT. 3066

PUBLIC LAW 105–330—OCT. 30, 1998

shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.’’.
(c) CONSEQUENCE OF DELAYS.—Paragraph (4) of section 1(d)
of the Trademark Act of 1946 (15 U.S.C. 1051(d)(4)) is amended
to read as follows:
‘‘(4) The failure to timely file a verified statement of use under
paragraph (1) or an extension request under paragraph (2) shall
result in abandonment of the application, unless it can be shown
to the satisfaction of the Commissioner that the delay in responding
was unintentional, in which case the time for filing may be
extended, but for a period not to exceed the period specified in
paragraphs (1) and (2) for filing a statement of use.’’.
SEC. 104. REVIVAL OF ABANDONED APPLICATION.

Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 1062(b))
is amended in the last sentence by striking ‘‘unavoidable’’ and
by inserting ‘‘unintentional’’.
SEC. 105. DURATION OF REGISTRATION; CANCELLATION; AFFIDAVIT
OF CONTINUED USE; NOTICE OF COMMISSIONER’S ACTION.

Section 8 of the Trademark Act of 1946 (15 U.S.C. 1058) is
amended to read as follows:
‘‘DURATION
‘‘SEC. 8. (a) Each registration shall remain in force for 10
years, except that the registration of any mark shall be canceled
by the Commissioner for failure to comply with the provisions
of subsection (b) of this section, upon the expiration of the following
time periods, as applicable:
‘‘(1) For registrations issued pursuant to the provisions
of this Act, at the end of 6 years following the date of registration.
‘‘(2) For registrations published under the provisions of
section 12(c), at the end of 6 years following the date of publication under such section.
‘‘(3) For all registrations, at the end of each successive
10-year period following the date of registration.
‘‘(b) During the 1-year period immediately preceding the end
of the applicable time period set forth in subsection (a), the owner
of the registration shall pay the prescribed fee and file in the
Patent and Trademark Office—
‘‘(1) an affidavit setting forth those goods or services recited
in the registration on or in connection with which the mark
is in use in commerce and such number of specimens or facsimiles showing current use of the mark as may be required
by the Commissioner; or
‘‘(2) an affidavit setting forth those goods or services recited
in the registration on or in connection with which the mark
is not in use in commerce and showing that any such nonuse
is due to special circumstances which excuse such nonuse and
is not due to any intention to abandon the mark.
‘‘(c)(1) The owner of the registration may make the submissions
required under this section within a grace period of 6 months
after the end of the applicable time period set forth in subsection
(a). Such submission is required to be accompanied by a surcharge
prescribed by the Commissioner.

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112 STAT. 3067

‘‘(2) If any submission filed under this section is deficient,
the deficiency may be corrected after the statutory time period
and within the time prescribed after notification of the deficiency.
Such submission is required to be accompanied by a surcharge
prescribed by the Commissioner.
‘‘(d) Special notice of the requirement for affidavits under this
section shall be attached to each certificate of registration and
notice of publication under section 12(c).
‘‘(e) The Commissioner shall notify any owner who files 1 of
the affidavits required by this section of the Commissioner’s acceptance or refusal thereof and, in the case of a refusal, the reasons
therefor.
‘‘(f) If the registrant is not domiciled in the United States,
the registrant shall designate by a written document filed in the
Patent and Trademark Office the name and address of some 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. 106. RENEWAL OF REGISTRATION.

Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is
amended to read as follows:
‘‘RENEWAL

OF REGISTRATION

‘‘SEC. 9. (a) Subject to the provisions of section 8, each registration may be renewed for periods of 10 years at the end of each
successive 10-year period following the date of registration upon
payment of the prescribed fee and the filing of a written application,
in such form as may be prescribed by the Commissioner. Such
application may be made at any time within 1 year before the
end of each successive 10-year period for which the registration
was issued or renewed, or it may be made within a grace period
of 6 months after the end of each successive 10-year period, upon
payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency may be
corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.
‘‘(b) If the Commissioner refuses to renew the registration,
the Commissioner shall notify the registrant of the Commissioner’s
refusal and the reasons therefor.
‘‘(c) If the registrant is not domiciled in the United States,
the registrant shall designate by a written document filed in the
Patent and Trademark Office the name and address of some 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.’’.

112 STAT. 3068

PUBLIC LAW 105–330—OCT. 30, 1998

SEC. 107. RECORDING ASSIGNMENT OF MARK.

Section 10 of the Trademark Act of 1946 (15 U.S.C. 1060)
is amended to read as follows:
‘‘ASSIGNMENT
‘‘SEC. 10. (a) A registered mark or a mark for which an application to register has been filed shall be assignable with the good
will of the business in which the mark is used, or with that
part of the good will of the business connected with the use of
and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall
be assignable prior to the filing of an amendment under section
1(c) to bring the application into conformity with section 1(a) or
the filing of the verified statement of use under section 1(d), except
for an assignment to a successor to the business of the applicant,
or portion thereof, to which the mark pertains, if that business
is ongoing and existing. In any assignment authorized by this
section, it shall not be necessary to include the good will of the
business connected with the use of and symbolized by any other
mark used in the business or by the name or style under which
the business is conducted. Assignments shall be by instruments
in writing duly executed. Acknowledgment shall be prima facie
evidence of the execution of an assignment, and when the prescribed
information reporting the assignment is recorded in the Patent
and Trademark Office, the record shall be prima facie evidence
of execution. An assignment shall be void against any subsequent
purchaser for valuable consideration without notice, unless the
prescribed information reporting the assignment is recorded in the
Patent and Trademark Office within 3 months after the date of
the subsequent purchase or prior to the subsequent purchase. The
Patent and Trademark Office shall maintain a record of information
on assignments, in such form as may be prescribed by the Commissioner.
‘‘(b) An assignee not domiciled in the United States shall designate by a written document filed in the Patent and Trademark
Office the name and address of some 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. 108. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REGISTRATION.

Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126)
is amended—
(1) in subsection (d)—
(A) by striking ‘‘23, or 44(e) of this Act’’ and inserting
‘‘or 23 of this Act or under subsection (e) of this section’’;
and
(B) in paragraphs (3) and (4) by striking ‘‘this subsection (d)’’ and inserting ‘‘this subsection’’; and
(2) in subsection (e), by striking the second sentence and
inserting the following: ‘‘Such applicant shall submit, within
such time period as may be prescribed by the Commissioner,

PUBLIC LAW 105–330—OCT. 30, 1998

112 STAT. 3069

a certification or a certified copy of the registration in the
country of origin of the applicant.’’.
SEC. 109. TRANSITION PROVISIONS.

Applicability.

(a) REGISTRATIONS IN 20-YEAR TERM.—The provisions of section
8 of the Trademark Act of 1946, as amended by section 105 of
this Act, shall apply to a registration for trademark issued or
renewed for a 20-year term, if the expiration date of the registration
is on or after the effective date of this Act.
(b) APPLICATIONS FOR REGISTRATION.—This title and the
amendments made by this title shall apply to any application for
registration of a trademark pending on, or filed on or after, the
effective date of this Act.
(c) AFFIDAVITS.—The provisions of section 8 of the Trademark
Act of 1946, as amended by section 105 of this Act, shall apply
to the filing of an affidavit if the sixth or tenth anniversary of
the registration, or the sixth anniversary of publication of the
registration under section 12(c) of the Trademark Act of 1946,
for which the affidavit is filed is on or after the effective date
of this Act.
(d) RENEWAL APPLICATIONS.—The amendment made by section
106 shall apply to the filing of an application for renewal of a
registration if the expiration date of the registration for which
the renewal application is filed is on or after the effective date
of this Act.

15 USC 1058
note.

SEC. 110. EFFECTIVE DATE.

15 USC 1051
note.

This title and the amendments made by this title shall take
effect—
(1) on the date that is 1 year after the date of the enactment
of this Act, or
(2) upon the entry into force of the Trademark Law Treaty
with respect to the United States,
whichever occurs first.

TITLE II—TECHNICAL CORRECTIONS
SEC. 201. TECHNICAL CORRECTIONS TO TRADEMARK ACT OF 1946.

(a) IN GENERAL.—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.) (commonly referred to as the Trademark Act of 1946), is
amended as follows:
(1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended—
(A) by inserting ‘‘and,’’ after ‘‘specifying the date of
the applicant’s first use of the mark in commerce’’; and
(B) by striking ‘‘and, the mode or manner in which
the mark is used on or in connection with such goods
or services’’.
(2) Section 2 (15 U.S.C. 1052) is amended—
(A) in subsection (e)—
(i) in paragraph (3) by striking ‘‘or’’ after ‘‘them,’’;
and
(ii) by inserting before the period at the end the
following: ‘‘, or (5) comprises any matter that, as a
whole, is functional’’; and

15 USC 1051
note.

15 USC 1058
note.

15 USC 1059
note.

112 STAT. 3070

PUBLIC LAW 105–330—OCT. 30, 1998
(B) in subsection (f), by striking ‘‘paragraphs (a), (b),
(c), (d), and (e)(3)’’ and inserting ‘‘subsections (a), (b), (c),
(d), (e)(3), and (e)(5)’’.
(3) Section 7(a) (15 U.S.C. 1057(a)) is amended in the
first sentence by striking the second period at the end.
(4) Section 14(3) (15 U.S.C. 1064(3)) is amended by inserting ‘‘or is functional,’’ before ‘‘or has been abandoned’’.
(5) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking
‘‘or device’’ and inserting ‘‘, device, any matter that as a whole
is not functional,’’.
(6) Section 26 (15 U.S.C. 1094) is amended by striking
‘‘7(c),,’’ and inserting ‘‘, 7(c),’’.
(7) Section 31 (15 U.S.C. 1113) is amended—
(A) by striking—

‘‘§ 31. Fees’’;
and

15 USC 1052,
1124.
Applicability.
15 USC 1051
note.

(B) by striking ‘‘(a)’’ and inserting ‘‘SEC. 31. (a)’’.
(8) Section 32(1) (15 U.S.C. 1114(1)) is amended by striking
‘‘As used in this subsection’’ and inserting ‘‘As used in this
paragraph’’.
(9) Section 33(b) (15 U.S.C. 1115(b)) is amended—
(A) by redesignating paragraph (8) as paragraph (9);
and
(B) by inserting after paragraph (7) the following:
‘‘(8) That the mark is functional; or’’.
(10) Section 39(a) (15 U.S.C. 1121(a)) is amended by striking ‘‘circuit courts’’ and inserting ‘‘courts’’.
(11) Section 42 (15 U.S.C. 1124) is amended by striking
‘‘the any domestic’’ and inserting ‘‘any domestic’’.
(12) The Act is amended by striking ‘‘trade-mark’’ each
place it appears in the text and the title and inserting ‘‘trademark’’.
(b) EFFECTIVE DATE.—The amendments made by this section
shall take effect on the date of enactment of this Act, and shall
apply only to any civil action filed or proceeding before the United
States Patent and Trademark Office commenced on or after such
date relating to the registration of a mark.

TITLE III—MISCELLANEOUS
PROVISIONS
SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTISING OR PROMOTIONAL PURPOSES.

Section 14 of 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. 1064) (commonly
referred to as the Trademark Act of 1946) is amended by adding
at the end the following: ‘‘Nothing in paragraph (5) shall be deemed
to prohibit the registrant from using its certification mark in
advertising or promoting recognition of the certification program
or of the goods or services meeting the certification standards
of the registrant. Such uses of the certification mark shall not
be grounds for cancellation under paragraph (5), so long as the
registrant does not itself produce, manufacture, or sell any of the

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112 STAT. 3071

certified goods or services to which its identical certification mark
is applied.’’.
SEC. 302. OFFICIAL INSIGNIA OF NATIVE INDIAN TRIBES.

(a) IN GENERAL.—The Commissioner of Patents and Trademarks shall study the issues surrounding the protection of the
official insignia of federally and State recognized Native American
tribes. The study shall address at least the following issues:
(1) The impact on Native American tribes, trademark owners, the Patent and Trademark Office, any other interested
party, or the international legal obligations of the United
States, of any change in law or policy with respect to—
(A) the prohibition of the Federal registration of trademarks identical to the official insignia of Native American
tribes;
(B) the prohibition of any new use of the official insignia of Native American tribes; and
(C) appropriate defenses, including fair use, to any
claims of infringement.
(2) The means for establishing and maintaining a listing
of the official insignia of federally or State recognized Native
American tribes.
(3) An acceptable definition of the term ‘‘official insignia’’
with respect to a federally or State recognized Native American
tribe.
(4) The administrative feasibility, including the cost, of
changing the current law or policy to—
(A) prohibit the registration, or prohibit any new uses
of the official insignia of State or federally recognized
Native American tribes; or
(B) otherwise give additional protection to the official
insignia of federally and State recognized Native American
tribes.
(5) A determination of whether such protection should be
offered prospectively or retrospectively and the impact of such
protection.
(6) Any statutory changes that would be necessary in order
to provide such protection.
(7) Any other factors which may be relevant.
(b) COMMENT AND REPORT.—
(1) COMMENT.—Not later than 60 days after the date of
enactment of this Act, the Commissioner shall initiate a request
for public comment on the issues identified and studied by
the Commissioner under subsection (a) and invite comment
on any additional issues that are not included in such request.
During the course of the public comment period, the Commissioner shall use any appropriate additional measures, including
field hearings, to obtain as wide a range of views as possible
from Native American tribes, trademark owners, and other
interested parties.

Deadlines.

112 STAT. 3072

PUBLIC LAW 105–330—OCT. 30, 1998
(2) REPORT.—Not later than September 30, 1999, the
Commissioner of Patents and Trademarks shall complete the
study under this section and submit a report including the
findings and conclusions of the study to the chairman of the
Committee on the Judiciary of the Senate and the chairman
of the Committee on the Judiciary of the House of Representatives.

Approved October 30, 1998.

LEGISLATIVE HISTORY—S. 2193 (H.R. 1661):
HOUSE REPORTS: No. 105–194 accompanying H.R. 1661 (Comm. on the Judiciary).
CONGRESSIONAL RECORD, Vol. 144 (1998):
Sept. 17, considered and passed Senate.
Oct. 9, considered and passed House.

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