S. 2968: Trademark Technical and Conforming Amendment Act of 2010

S. 2968

Trademark Technical and Conforming Amendment Act of 2010

Sponsor
Sen. Patrick J. Leahy

Date
March 4, 2010 (111th Congress, 2nd Session)

Staff Contact
Sarah Makin

Floor Situation

The House is scheduled to consider S. 2968, the Trademark Technical and Conforming Amendment Act of 2010, on Wednesday, March 3, 2010, under a suspension of the rules, requiring a two-thirds majority for passage.  The legislation was introduced January 28, 2010 and passed, without amendment, by the Senate under unanimous consent on the same day.

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.

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.

Cost

CBO has not scored S. 2968.