[Pages S349-S351]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

TRADEMARK TECHNICAL AND CONFORMING AMENDMENT ACT OF 2010

Mr. REID. I ask unanimous consent that the Senate now proceed to the
consideration of S. 2968.
The PRESIDING OFFICER. The clerk will report the bill by title.
The legislative clerk read as follows:

A bill (S. 2968) to make certain technical and conforming
amendments to the Lanham Act.

There being no objection, the Senate proceeded to consider the bill.
Mr. LEAHY. Mr. President, legislation will facilitate trademark
owners' maintenance of protection for their brands. I appreciate the
Senate acting swiftly to pass this bill. Trademark protection is
critical both for businesses that have invested in creating a reliable
product, and for consumers who trust a ``brand name'' product to be
safe and of high quality.
Last Congress, I authored legislation to provide our law enforcement
community with the tools, resources, and intragovernmental coordination
necessary to combat intellectual property theft. Theft of intellectual
property harms our businesses, weakens our economy, and costs jobs. I
am proud that the legislation, the Prioritizing Resources and
Organization of Intellectual Property, or PRO-IP, Act, was cosponsored
by a bipartisan group of 21 Senators, and was signed into law.
The Senate Judiciary Committee has held numerous hearings in recent
years on the importance of intellectual property protection. In 2004,
Burton Snowboards, a successful Vermont business, testified before the
Judiciary Committee about how small businesses were being harmed by the
rise in intellectual property theft. I am pleased that this
administration is taking intellectual property protection seriously,
and that it recognizes that effective enforcement of our intellectual
property laws is an important component of our economic recovery.
The legislation we are introducing today is focused on the process
for maintaining trademark protection. It is a targeted bill that will
improve the efficiency of the trademark maintenance system.
Inefficiencies cost businesses money, which can lead to higher prices
for consumers and can cost workers their jobs. When Congress has an
opportunity to take waste out of a government process, it should do so
on a bipartisan basis. That is what we are doing today. This bill will
harmonize the system for submitting maintenance filings to the United
States Patent and Trademark Office, USPTO. Maintenance filings are
required for continuing the protection of a trademark. Our legislation
will also permit the Director of the USPTO to permit applicants to
correct good faith and harmless errors and will make several technical
amendments within our trademark laws.
This legislation also requires a study of how the current system can
better protect small businesses from abuses of the trademark system by
larger corporations. Congress provides strong enforcement tools to
intellectual property owners, as we should, to deter infringing
activity and to remove counterfeit products from the market. I have
become concerned, however, that large corporations are at times abusing
the substantial rights Congress has granted them in their intellectual
property to the detriment of small businesses. In fact, we saw a high-
profile case like this in Vermont last year involving a spurious claim
against Rock Art Brewery in Morrisville. When a corporation exaggerates
the scope of its rights far beyond a reasonable interpretation in an
attempt to bully a small business out of the market, that is wrong.
This legislation therefore directs the Secretary of Commerce, in
coordination with the Intellectual Property Enforcement Coordinator, to
consider options for protecting small businesses from such harassing
litigation, while ensuring that legitimate trademark infringement
actions are handled efficiently and expeditiously by the courts.
This is commonsense legislation, and I thank all Senators for
supporting it.
Mr. REID. I ask unanimous consent the bill be read three times and
passed,

[[Page S350]]

the motion to reconsider be laid on the table with no intervening
action or debate, and any statements relating to this matter be printed
in the Record.
The PRESIDING OFFICER. Without objection, it is so ordered.
The bill (S. 2968) was ordered to be engrossed for a third reading,
was read the third time, and passed, as follows:

S. 2968

Be it enacted by the Senate and House of Representatives of
the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

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

SEC. 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).

SEC. 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:

``SEC. 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:

``SEC. 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

[[Page S351]]

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.''.

SEC. 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.

____________________