S6564 CONGRESSIONAL RECORD — SENATE June 18, 1998 or products that will protect children from Human Services to study potential fraud and S. 2190. A bill to authorize qualified organi- the harms of the Internet and permit users abuse under the Medicare program with re- zations to provide technical assistance and to block out offensive materials and services spect to such services; and capacity building services to microenterprise without compromising the beneficial aspects Whereas, the Department of Health and development organizations and programs and of the Internet; and Human Services study calls for an examina- to disadvantaged entrepreneurs using funds Whereas, The technology currently exists tion of critical aspects of the Medicare pro- from the Community Development Financial to more readily control these problems by gram as it pertains to venipuncture services, Institutions Fund, and for other purposes; to the use of designated top-level domain site along with the cost to beneficiaries if pay- the Committee on Banking, Housing, and for web sites that contain pornographic and ment under the Medicare program is prohib- Urban Affairs. adult-oriented materials and services which ited for such home health services; and By Mr. LEAHY: if employed will expedite and facilitate the Whereas, the Department is also directed S. 2191. A bill to amend the Trademark Act development of clean Internet materials and under the legislation to determine the costs of 1946 to provide for the registration and services by the lawful classification of web to states through the potentially increased protection of trademarks used in commerce, sites; and use of personal care services and nursing in order to carry out provisions of certain Whereas, In October of this year, the home placements as a result of Medicare not international conventions, and for other pur- United States Department of Commerce covering venipuncture procedures; and poses; to the Committee on the Judiciary. plans to set up a private not-for-profit cor- Whereas, such services are vitally impor- By Mr. HATCH: poration whose directors will create five new tant in the diagnosis and treatment of many S. 2192. A bill to make certain technical top-level domains that will register web sites catastrophic illnesses, which if left unde- corrections to the Trademark Act of 1946; to by subject type; and tected will result in increased future Medi- the Committee on the Judiciary. Whereas, A federal requirement that an care expenditures; and By Mr. HATCH (for himself and Mr. adult-oriented domain site be created and Whereas, as citizens of this country con- LEAHY): that all adult-oriented web sites be reg- tinue to be unreasonably burdened by spi- S. 2193. A bill to implement the provisions istered to such domain would greatly aid raling medical costs, the availability of ade- of the Trademark Law Treaty; to the Com- Internet users, parents and teachers in quate medical care is critical to their well- mittee on the Judiciary. shielding America’s youth from the harms of being; and it is incumbent upon the members f pornography and adult-oriented materials of this Legislative Body to express our un- and services that are available and prolifer- flagging support for this significant legisla- SUBMISSION OF CONCURRENT AND ating on the Internet; and tion; now, therefore, be it SENATE RESOLUTIONS Whereas, The states are somewhat limited Resolved by the House of Representatives of The following concurrent resolutions in the regulation they can provide in this the One-hundredth General Assembly of the area because of the federal Commerce and Senate resolutions were read, and State of Tennessee, the Senate Concurring, referred (or acted upon), as indicated: Clause; and That this General Assembly hereby memori- Whereas, Congress and the Executive alizes the U.S. Congress to act expeditiously By Mr. LEVIN (for himself and Mr. Branch are the appropriate governmental to enact the Medicare Venipuncture Fairness ABRAHAM): branches to provide leadership in this area Act. Be it S. Res. 251. A resolution to congratulate and may lawfully act to resolve quickly this Further Resolved, That this General Assem- the Detroit Red Wings on winning the 1998 issue in a responsible manner that comports bly memorializes each member of the U.S. National Hockey League Stanley Cup Cham- with the ideals of the First Amendment; Congress from Tennessee to utilize the full pionship and proving themselves to be one of now, therefore, be it measure of his or her influence to effect the the best teams in NHL history; considered Resolved by the Senate of the One-hundredth enactment of the Medicare Venipuncture and agreed to. General Assembly of the State of Tennessee, the Fairness Act. Be it f House of Representatives Concurring, That this Further Resolved, That the Chief Clerk of Body hereby urges the United States Con- the House of Representatives is directed to STATEMENTS ON INTRODUCED gress to establish and maintain a uniform re- transmit a certified copy of this resolution BILLS AND JOINT RESOLUTIONS source locator system that contains a top- to the Honorable Bill Clinton, President of By Mr. NICKLES: level domain for all Internet web sites pro- the United States; the President and the S. 2187. A bill to amend the Federal viding pornographic or adult-oriented mate- Secretary of the U.S. Senate; the Speaker rials or services so as to facilitate and assist Power Act to ensure that no State may and the Clerk of the U.S. House of Rep- establish, maintain, or enforce on be- Internet users, services providers and soft- resentatives; and to each member of the Ten- ware developers to manage the problem of nessee delegation to the U.S. Congress. half of any electric utility an exclusive uncontrolled access to obscenity, child por- right to sell electric energy or other- f nography and other adult-oriented materials wise unduly discriminate against any and services via Internet. Be it INTRODUCTION OF BILLS AND consumer who seeks to purchase elec- Further Resolved, That this Body respect- JOINT RESOLUTIONS tric energy in interstate commerce fully urges the President and Vice President of the United States and the Secretary of the The following bills and joint resolu- from any supplier; to the Committee Department of Commerce to use their offices tions were introduced, read the first on Energy and Natural Resources. and considerable influence to bring about the and second time by unanimous con- THE ELECTRIC CONSUMER CHOICE ACT aims of this resolution by the means of exec- sent, and referred as indicated: Mr. NICKLES. Mr. President, I rise utive order or department regulation, or the By Mr. NICKLES: today to introduce the Electric Con- promotion of federal regulation, as they S. 2187. A bill to amend the Federal Power sumer Choice Act. For the last two deem appropriate. Be it Act to ensure that no State may establish, Further Resolved, That the Clerk of the years hearings and workshops have maintain, or enforce on behalf of any elec- Senate deliver enrolled copies of this resolu- been held in both the House and Senate tric utility an exclusive right to sell electric tion to each member of the Tennessee dele- examining the issue of restructuring energy or otherwise unduly discriminate gation, to the United States Senate and the the electric industry. Many bills have against any consumer who seeks to purchase United States House of Representatives, to electric energy in interstate commerce from been introduced on this issue by both the Chairman of the United States Senate any supplier; to the Committee on Energy Congressmen and Senators, some com- Commerce, Science and Transportation Com- and Natural Resources. prehensive and some dealing with more mittee and the United States House Com- By Mr. MURKOWSKI (for himself, Mr. discreet issues such as repeal of the merce Committee, and to the President and INOUYE, Mr. AKAKA, and Mr. STE- Vice President of the United States and the Public Utility Holding Company VENS): Secretary of the United States Department (PUHCA) or repeal of the Public Utility S. 2188. A bill to amend section 203(b) of Regulatory Policies Act of 1978 of Commerce. the National Housing Act relating to the cal- (PURPA). The bill that I am intro- POM–486. A joint resolution adopted culation of downpayments; to the Committee on Banking, Housing, and Urban Affairs. ducing today cuts to the heart of the by the Legislature of the State of Ten- By Mr. WYDEN (for himself and Mr. issue: do we or don’t we support allow- nessee; to the Committee on Finance. BURNS): ing consumers to choose their electric HOUSE JOINT RESOLUTION NO. 525 S. 2189. A bill to amend the Federal Water supplier? Do we or don’t we support a Whereas, House Resolution No. 2912 of the Pollution Control Act to authorize the use of national competitive market in elec- 105th U.S. Congress was introduced in 1997 to State revolving loan funds for construction tricity? I believe the answer to these reinstate payments under Medicare for home of water conservation and quality improve- questions is a resounding ‘‘yes’’! This ments; to the Committee on Environment health services relating to venipuncture for Congress believes competition is good, the express purpose of obtaining blood sam- and Public Works. ples; and By Mr. KENNEDY (for himself, Mr. that free markets work and that every Whereas, the legislation also requires the DOMENICI, Mr. KERRY, and Mr. BINGA- American will benefit from a competi- Secretary of the Department of Health and MAN): tive electric industry.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00058 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6565 The Electric Consumer Choice Act is As I stated earlier, this bill is in- SEC. 3. DECLARATION OF PURPOSE. intended to begin the process of achiev- tended to provide every consumer a The purpose of this Act is to ensure that ing a national, competitive electricity choice when it comes to electricity nothing in the Federal Power Act or any market. It will establish consumer suppliers. It is intended to establish other federal law exempts or protects from Article I, Section 8, Clause 3 of the Constitu- choice of electric suppliers as a goal that this Congress supports national tion of the United States exclusive rights to this Congress firmly supports. It competition when it comes to the gen- sell electric energy or any other State ac- achieves this in a simple, straight-for- eration of electricity. It is intended to tions which unduly discriminate against any ward method. First, it eliminates elec- be the beginning, not the end of the consumer who seeks to purchase electric en- tric monopolies by prohibiting the process. There are many other issues ergy in interstate commerce from any sup- granting of exclusive rights to sell to that need to be addressed at the federal plier. electric utilities. Second, it prohibits level to facilitate a national market SEC. 4. SCOPE OF STATE AUTHORITY UNDER THE undue discrimination against con- for electricity. Some of these issues in- FEDERAL POWER ACT. sumers purchasing electricity in inter- Section 201 of the Federal Power Act (16 clude repeal of PURPA and PUHCA, U.S.C. § 824) is amended by adding at the end state commerce. Third, it provides for taxation differences between various the following: access to local distribution facilities electric providers, clarification of ju- ‘‘(h) Notwithstanding any other provision and finally, it allows a state to impose risdiction over transmission, ensuring of this section, nothing in this Part or any reciprocity requirements on out-of- reliability, providing for inclusion of other federal law shall be construed to au- state utilities. The bill also makes it Power Marketing Administrations and thorize a State to— clear that nothing in this act expands the Tennessee Valley Authority in a ‘‘(1) establish, maintain, or enforce on be- half of any electric utility an exclusive right the authority of the Federal Energy national market, and other issues that Regulatory Commission (FERC) or lim- to sell electric energy; or, can only be addressed at the Federal ‘‘(2) otherwise unduly discriminate against its the authority of a state to continue level. These issues need to be addressed any consumer who seeks to purchase electric to regulate retail sales and distribution and should be addressed. But while energy in interstate commerce from any sup- of electric energy in a manner con- these issues are being debated we plier.’’. sistent with the Commerce Clause of should ensure that progress towards SEC. 5. ACCESS TO TRANSMISSION AND LOCAL the United States Constitution. customer choice proceeds. DISTRIBUTION FACILITIES. The premise of this bill is that all at- I am proud to say that my state of No supplier of electric energy, who would tributes of today’s electric energy mar- Oklahoma has been in the forefront of otherwise have a right of access to a trans- mission or local distribution facility because ket—generation, transmission, dis- opening up it’s electricity markets to tribution and both wholesale and retail such facility is an essential facility for the competition. Seventeen other states conduct of interstate commerce in electric sales—are either in or affect interstate have also moved to open their markets. energy, shall be denied access to such facil- commerce. Therefore, any State regu- It is my hope that the Electric Con- ity or precluded from engaging in the retail lation of these attributes that unduly sumer Choice Act will facilitate this sale of electric energy on the grounds that discriminates against the interstate process nationally. To that end, I am such denial or preclusion is authorized or re- market for electric power violates the introducing this bill today. quired by State action establishing, main- Commerce Clause unless such State ac- Mr. President, I ask unanimous con- taining, or enforcing an exclusive right to tion is protected by an act of Congress. sent that the Electric Consumer Choice sell, transmit, or locally distribute electric energy. The Supreme Court has interpreted Act be printed in the RECORD. Part II of the Federal Power Act (FPA) SEC. 6. STATE AUTHORITY TO IMPOSE RECI- There being no objection, the bill was PROCITY REQUIREMENTS. as protecting State regulation of gen- ordered to be printed in the RECORD, as Part II of the Federal Power Act (16 U.S.C. eration, local distribution, intrastate follows: § 824) is amended by adding at the end the transmission and retail sales that un- S. 2187 following: duly discriminates against the inter- Be it enacted by the Senate and House of Rep- ‘‘SEC. 215. STATE AUTHORITY TO IMPOSE RECI- state market for electric power. The resentatives of the United States of America in PROCITY REQUIREMENTS. Court has reasoned that Congress, in Congress assembled, ‘‘A State or state commission may pro- the FPA, determined that the federal SEC. 1. SHORT TITLE. hibit an electric utility from selling electric government needed only to regulate This Act may be cited as the ‘‘Electric energy to an ultimate consumer in such Consumer Choice Act’’. State if such electric utility or any of its af- wholesale sales and interstate trans- filiates owns or controls transmission or SEC. 2. FINDINGS. mission in order to adequately protect local distribution facilities and is not itself The Congress finds that— interstate commerce in electric en- providing unbundled local distribution serv- ergy. Thus, all other aspects of the (a) the opportunity for all consumers to purchase electric energy in interstate com- ice in a State in which such electric utility electric energy market were reserved merce from any supplier is essential to a dy- owns or operates a facility used for the gen- to the States and protected from chal- namic, fully integrated and competitive na- eration of electric energy.’’. lenges under the Commerce Clause. tional market for electric energy. SEC. 7. SAVINGS CLAUSE. The Electric Consumer Choice Act (b) the establishment, maintenance or en- Nothing in this Act shall be construed to— amends the FPA to eliminate the pro- forcement of exclusive rights to sell electric (a) authorize the Federal Energy Regu- tection provided for State regulation energy and other State action which unduly latory Commission to regulate retail sales or local distribution of electric energy or other- that establishes, maintains, or enforces discriminates against any consumer who seeks to purchase electric energy in inter- wise expand the jurisdiction of the Commis- an exclusive right to sell electric en- state commerce from any supplier constitute sion, or, ergy or that unduly discriminates an unwarranted and unacceptable discrimi- (b) limit the authority of a State to regu- against any consumer who seeks to nation against and burden on interstate late retail sales and local distribution of purchase electric energy in interstate commerce; electric energy in a manner consistent with commerce. (c) in today’s technologically driven mar- Article I, Section 8, Clause 3 of the Constitu- This bill provides consumers and ketplace there is no justification for the dis- tion of the United States. electric energy suppliers with the crimination against and burden imposed on SEC. 8. EFFECTIVE DATES. means to achieve retail choice in all interstate commerce by exclusive rights to Section 5 and the amendment made by sec- sell electric energy or other State action States by January 1, 2002. It does not tion 4 of this Act take effect on January 1, which unduly discriminates against any con- 2002. The amendment made by section 6 of impose a federal statutory mandate on sumer who seeks to purchase electric energy this Act takes effect on the date of enact- the States. It does not preempt the in interstate commerce from any supplier; ment of this Act. States’ traditional jurisdiction to regu- and, late the aspects of the electric power (d) the electric energy transmission and By Mr. MURKOWSKI (for him- market in the reserved realm—genera- local distribution facilities of the nation’s self, Mr. INOUYE, Mr. AKAKA, tion, local distribution, intrastate federally-owned, investor-owned and self-reg- and Mr. STEVENS): transmission, or retail sales—it merely ulated utilities are essential facilities for the S. 2188. A bill to amend section 203(b) conduct of a competitive interstate retail limits the scope of what the States can market in electric energy in which all con- of the National Housing Act relating to do in that realm. It does not expand or sumers have the opportunity to purchase the calculation of downpayments; to extend FERC jurisdiction into the as- electric energy in interstate commerce from the Committee on Banking, Housing, pects of traditional State authority. any supplier. and Urban Affairs.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00059 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6566 CONGRESSIONAL RECORD — SENATE June 18, 1998 FAMILY HOME OWNERS MORTGAGE EQUITY ACT Home buyers under the pilot program tracted from the total costs of the sale of the Mr. MURKOWSKI. Mr. President, agree. Vicki Case of Palmer, Alaska is home (the value of the home plus closing today I, and my fellow Senator from a single parent and a mortgage lender costs). For homes that are valued at $50,000 to $125,000 the downpayment will equal 97.65 the State of Alaska, Senator STEVENS, who earned too much to qualify for any percent of the value of the home subtracted and my good friends and colleagues of the low-income mortgage programs. from the total cost of the sale of home. And from the State of Hawaii, Senator She would have been unable to pur- for homes that are valued over $125,000, the INOUYE and Senator AKAKA, are intro- chase her home had it not been for an downpayment will be 97.15 percent of the ducing a very important measure—one FHA loan with the reduced down pay- home subtracted from the total cost of the that would unlock and open the door to ment. sale of the home. many first-time home buyers. In fact, but for the pilot program, ap- For example: If a home sells for $98,000 and its closing costs are $2,000, the total acquisi- As we are all aware, it is often the proximately 70 percent of the FHA loan downpayment that is the largest im- tion cost of the home is 100,000. To calculate applications processed in Vicki Case’s a downpayment, 97.65 percent of the cost of pediment to home ownership for first- office would be rejected. simply be- the 98,000 home (which equals $85.697) is sub- time home buyers. The Federal Hous- cause the buyer could not afford the tracted from the total cost of the home—the ing Administration (FHA) began a pilot downpayment. Mr. President, thanks sales price plus its closing costs. Therefore, program two years ago to help families to this pilot program, more and more the downpayment would be $4,303 ($100,000 ¥ overcome that impediment by lowering deserving Alaskans are becoming home 95,697). the downpayment necessary for an owners. By Mr. WYDEN (for himself and FHA home mortgage. Mr. President, our legislation has the Mr. President, I am pleased to say Mr. BURNS): support of the Mortgage Bankers Asso- S. 2189. A bill to amend the Federal that the pilot program, which is lo- ciation of America, the National Asso- cated in Alaska and Hawaii, has re- Water Pollution Control Act to author- ciation of Realtors, the National Asso- ize the use of State revolving loan ported great success. ciation of Home Builders and the U.S. This pilot program is effective be- funds for construction of water con- Department of Housing and Urban De- cause it accomplishes two feats: (1) it servation and quality improvements; velopment. They believe, as I do, that lowers the FHA downpayment, making to the Committee on Environment and it more affordable; and (2) it makes the borrowers in all states should benefit Public Works. from the simplification of the FHA FHA downpayment calculation easier WATER CONSERVATION AND QUALITY and more understandable for all parties downpayment calculation. INCENTIVES ACT to the transaction. The pilot program, I firmly believe that helping Amer- ∑ Mr. WYDEN. Mr. President, twenty- commonly called the ‘‘97 percent Loan- ican families realize their dream of five years after enactment of the Clean to-Value Program,’’ requires—on aver- home ownership is vital to the Nation Water Act, we still have not achieved age—only a minimum cash investment as a whole. Our bill, by creating a the law’s original goal that all our na- of three percent for home buyers. lower FHA downpayment, does much tion’s lakes, rivers and streams would Our bill amends section 203(b) of the to assist families in owning their first be safe for fishing and swimming. National Housing Act by changing the home—thereby making the American After 25 years, it’s time for the next current multi-part formula to a single dream of home ownership a reality. generation of strategies to solve our re- calculation formula. The simplified Mr. President, for details on how the maining water quality problems. We formula creates a lower, more afford- new calculation works in comparison need to give States new tools to over- able downpayment while simulta- to the current calculation, I ask unani- come the new water quality challenges neously simplifying the current, cum- mous consent to submit into the they are now facing. bersome loan calculation formula. Our RECORD a downpayment calculation The money that has been invested in bill would extend this lower and sim- comparison sheet. And I ask that my controlling water pollution from fac- plified downpayment rate to perspec- colleagues join Senator STEVENS, Sen- tories and upgrading sewage treatment tive home buyers across the country. ator INOUYE, Senator AKAKA, and me in plants has gone a long way to control- Mr. President, the pilot program is a supporting this important legislation. ling these urban pollution sources. In win-win situation: affordable homes There being no objection, the item most cases, the remaining water qual- are made available to responsible buy- was ordered to be printed in the ity problems are no longer caused by ers without any increase in mortgage RECORD, as follows: pollution spewing out of factory pipes. default rates. Here’s what mortgage FHA DOWNPAYMENT COMPARISON SHEET—THE Instead, they are caused by runoff from lenders have reported: CURRENT MORTGAGE CALCULATION VERSUS a myriad of sources ranging from farm THE ALASKA/HAWAII PILOT PROGRAM There is no indication of increase in risk. fields to city streets and parking lots. The loans we have made to date have been to A. The current FHA mortgage calculation In my home State of Oregon, more borrowers with excellent credit records and requires numerous steps. They are as fol- than half of our streams don’t fully stable employment, but not enough dispos- lows: meet water quality standards. And the able income to accumulate the cash nec- Step 1: Determine the acquisition cost by largest problems are contamination essary for a high downpayment.—Richard E. adding closing costs to sales price [many times the closing costs must be estimated; if from runoff and meeting the standards Dolman, Manager, Seattle Mortgage, An- for water temperature. chorage Branch. they are and the estimate changes during Is the 97% program working? The answer is processing, then the calculations must be In many cases, conventional ap- a resounding YES! . . . In this current day, it redone.] proaches will not solve these problems. takes two incomes to meet basic needs. To Step 2: Apply the loan formulation to ac- But we can achieve water temperature come up with a large downpayment is in- quisition cost: (a) 97% of the $25,000, (b) 95% standards and obtain other water qual- creasingly difficult, especially for those just of the amount between $25,001 and $125,000, ity benefits by enhancing stream flows starting out. The 3% program is a good start and (c) 90% of the amount in excess of and improving runoff controls. . . . I do no believe that lowering the down- $125,000. A major problem for many streams in payment increased our risk. . .— Nancy A. Step 3: Determine the maximum LTV by Oregon and in many other areas of the multiplying the appraised value [minus clos- Karriowski, Alaska Home Mortgage, Inc., Western United States is that water Anchorage, Alaska. ing costs] by 97.75%. If the property is valued We have experienced nothing but positive at $50,000 or less, then multiply by 98.75%. supplies are fully appropriated or over- benefits from the FHA Pilot Program Loan Step 4: To determine the maximum FHA appropriated. There is currently no Calculation in Alaska and Hawaii.—Roger mortgage amount, take the lower amount extra water to spare for increased Aldrich, President, City Mortgage, Corpora- from steps 2 and 3. The difference between stream flows. tion, Anchorage, Alaska. the mortgage amount and the acquisition We can’t create a new water to fill We support the new loan calculation, as cost is the downpayment. the gap. But we can make more water this has provided a step toward the goal of The simplified calculation currently uti- available for this use through increased homeownership for everyone . . . We do not lized for FHA projects in Alaska and Hawaii feel that there is a greater risk with the bor- is basic, common sense: water conservation and more efficient rower putting 3 percent down rather than The downpayment is based on a percent of use of existing water supplies. using the calculation under the standard home’s sale price. If a home is valued at The key to achieving this would be to program . . .—Lorna Gleason, Vice Presi- $50,000 or less, the downpayment will equal create incentives to reduce wasteful dent, National Bank of Alaska. 98.75 percent of the value of the home, sub- water use.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00060 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6567 In the Western United States, irri- ator WYDEN and I have collaborated on from the Community Development Fi- gated agriculture is the single largest to bring some sense of additional con- nancial Institutions Fund, and for user of water. Studies indicate that servation of water resources to the other purposes; to the Committee on substantial quantities of water di- many irrigation districts in the nation. Banking, Housing, and Urban Affairs. verted for irrigation do not make it to In the west, irrigators are by far the THE PROGRAM FOR INVESTMENT IN MICRO- the fields, with a significant portion largest water users. These are folks ENTREPRENEURS (PRIME) ACT OF 1998 lost to evaporation or leakage from ir- who need the water because of the var- Mr. KENNEDY. Mr. President, it is a rigation canals. ious crops that they have on the privilege to join Senator DOMENICI, In Oregon and other States that rec- ground in the states out west. Unfortu- Senator KERRY, and Senator BINGAMAN ognize rights to conserved water for nately a large portion of the water that in introducing the ‘‘The Program for those who conserve it, irrigators and is used in irrigation is by nature dis- Investment in Micro-Entrepreneurs’’ other water users could gain rights to placed due to seepage within the canals Act—the PRIME Act. This legislation use conserved water while also increas- and ditches in which the water flows. will encourage investment in micro-en- ing the amount of water available for Although the water is not lost, since it trepreneurs by supporting the kinds of other uses by implementing conserva- seeps into the soil and assists in the education and training needed to help tion and efficiency measures to reduce overall soil moisture, it is not imme- build new small businesses. water loss. diately available to the irrigator. How- Today, the nation’s entrepreneurial The Federal government can play a ever, it is water which could be more spirit is thriving, fueled by the extraor- role in helping meet our nation’s effectively used to provide additional dinary economic growth and prosperity changing water needs. In many West- water to the producer. we currently enjoy. But new entre- ern States, water supply problems can In most irrigation districts, preneurs still face challenges that be addressed by providing financial in- irrigators pay for water that is re- limit their ability to turn innovative centives to help water users implement leased to them, and any displacement ideas into successful businesses and cost effective water conservation and of this water does not help that pro- create new jobs. They deserve assist- efficiency measures consistent with ducer on the bottom line. At a time ance in learning the basics to take State water law. when prices are low and markets are their ideas to the next level—starting And, we can improve water quality questionable, it is important that we their own firms. throughout the nation by giving great- give tools to the producer to make sure The ‘‘PRIME’’ Act is designed to help er flexibility to States to use Clean that they have every opportunity to small entrepreneurs bridge the gap be- Water Act funds to control polluted stay in business. tween worthwhile ideas and successful runoff, if that’s where the money is A key underlying feature of the legis- businesses. It will offer $105 million needed most. lation, is that the water saved under over the next five years to build busi- Today, I am pleased to be joined by the proposal in this bill will not only ness skills in key areas such as record- my colleague, Senator BURNS, in intro- assist the producer in water and cost keeping, planning, management, mar- ducing legislation to authorize the savings, but also will assist the future keting and computer technology. Clean Water State Revolving Fund pro- of water in the many rivers and The Clinton Administration strongly gram to provide loans to water users to streams in the west. At a time when supports these initiatives. The Treas- fund conservation measures or runoff the federal government seems to be ury Department’s Community Develop- controls. States would be authorized, taking steps to reduce state involve- ment Financial Institutions Fund has but not required, to use their SRF ment in water rights this is extremely become a lead agency for micro-enter- funds for these purposes. Participation important. prise activities across the country, and by water users, farmers, ranchers and The proposal put forth in this bill, First Lady Hillary Rodham Clinton is other eligible loan recipients would will authorize the Clean Water State one of their strongest advocates. also be entirely voluntary. Revolving Fund to provide loans to ir- The PRIME Act will enhance all of The conservation program would be rigation districts to construct pipelines these efforts. It will provide grants for structured to allow participating users and develop additional conservation micro-enterprise organizations across to receive a share of the water saved measures. The states would have an op- the country to assist disadvantaged through conservation or more efficient tion in this measure, they would not and low-income entrepreneurs and pro- use, which they could use in accord- have to involve their funds in this mat- vide them with essential training and ance with State law. This type of ap- ter, but would allow them to do so if education. proach would create a win/win situa- they so elected. In addition, those dis- It will encourage the development of tion with more water available for both tricts who did so elect to involve them- new micro-enterprise organizations, the conservers and for instream flows. selves would be able to add to their and expand existing ones to reach more And, by using the SRF program, the supply of water the difference between micro-entrepreneurs. Federal seed money would be repaid what they were using prior to the plan It will sponsor research on the most over time and gradually become avail- and what they were able to save. innovative and successful ways of en- able to fund conservation or other This bill creates a win/win situation couraging these new businesses and en- measures to solve water quality prob- both for water users and for the mul- abling them to succeed. lems in other areas. tiple users of water in our states, par- Under the Act, grants will be avail- My proposal has the support of the ticularly Oregon and Montana. We able each year to organizations that Farm Bureau, Oregon water users, the have an opportunity here to do some- work with entrepreneurs. Local groups Environmental Defense Fund and the thing useful and worthwhile for the will leverage these funds with private Oregon Water Trust. irrigators and the fishing, boating and and local resources to increase the im- I urge my colleagues to support giv- those who use instream water. I would pact of the federal seed money. ing States greater flexibility to use like to thank Senator WYDEN for his Massachusetts and New Mexico are their Clean Water funds for water con- work on this measure and I am pleased leaders in this effort. The business servation or runoff control when the to work with him today on this issue of community and local banks have made State decides that is the best way to great importance.∑ a significant investment in creating solve water quality problems and the loan capital for micro-entrepreneurs to water users voluntarily agree to par- By Mr. KENNEDY (for himself, start their businesses. ticipate.∑ Mr. DOMENICI, Mr. KERRY, and By investing in micro-entrepreneurs, ∑ Mr. BURNS. Mr. President, I am Mr. BINGAMAN): we will be harnessing the spirit and pleased today to join with my col- S. 2190. A bill to authorize qualified ideas of large numbers of Americans league from Oregon, Senator WYDEN, to organizations to provide technical as- and creating new opportunities for self- introduce the Water Conservation and sistance and capacity building services sufficiency. We will be encouraging Quality Incentives Act, a bill to revise to microenterprise development orga- new small businesses that will the state revolving fund in the Clean nizations and programs and to dis- strengthen the local economy in com- Water Act. This is language that Sen- advantaged entrepreneurs using funds munities across the country. And that

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00061 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6568 CONGRESSIONAL RECORD — SENATE June 18, 1998 result in turn will help to keep our na- management skills, and assistance for the ceived by a qualified organization under this tional economy strong as well. I look purpose of accessing financial services; and subtitle may be used for administrative ex- forward to working closely with our ‘‘(13) the term ‘very low-income person’ penses in connection with the making of sub- means having an income, adjusted for family grants under paragraph (1). colleagues in the Senate and the House size, of not more than 150 percent of the pov- to enact this important measure. ‘‘(d) DIVERSITY.—In making grants under erty line (as defined in section 673(2) of the this subtitle, the Administrator shall ensure I ask unanimous consent that the Community Services Block Grant Act (42 that grant recipients include both large and text of the legislation be printed in the U.S.C. 9902(2), including any revision re- small microenterprise organizations, serving RECORD. quired by that section). urban, rural, and Indian tribal communities There being no objection, the bill was ‘‘SEC. 173. ESTABLISHMENT OF PROGRAM. and racially and ethnically diverse popu- ordered to be printed in the RECORD, as ‘‘The Administrator shall establish a mi- lations. croenterprise technical assistance and capac- follows: ‘‘SEC. 177. MATCHING REQUIREMENTS. ity building grant program to provide assist- S. 2190 ance from the Fund in the form of grants to ‘‘(a) IN GENERAL.—Financial assistance Be it enacted by the Senate and House of Rep- qualified organizations in accordance with under this subtitle shall be matched with resentatives of the United States of America in this subtitle. funds from sources other than the Federal Congress assembled, ‘‘SEC. 174. USES OF ASSISTANCE. Government on the basis of not less than 50 SECTION 1. PROVISION OF TECHNICAL ASSIST- ‘‘A qualified organization shall use grants percent of each dollar provided by the Fund. ANCE TO MICROENTERPRISES. made under this subtitle— ‘‘(b) SOURCES OF MATCHING FUNDS.—Fees, Title I of the Riegle Community Develop- ‘‘(1) to provide training and technical as- grants, gifts, funds from loan sources, and ment and Regulatory Improvement Act of sistance to disadvantaged entrepreneurs; in-kind resources of a grant recipient from 1994 (12 U.S.C. 4701 et seq.) is amended by ‘‘(2) to provide training and capacity build- public or private sources may be used to adding at the end the following new subtitle: ing services to microenterprise development comply with the matching requirement in ‘‘Subtitle C—Microenterprise Technical organizations and programs and groups of subsection (a). Assistance and Capacity Building Program such organizations to assist such organiza- ‘‘(c) EXCEPTION.— ‘‘SEC. 171. SHORT TITLE. tions and programs in developing microen- ‘‘(1) IN GENERAL.—In the case of an appli- ‘‘This subtitle may be cited as the ‘Pro- terprise training and services; cant for assistance under this subtitle with gram for Investment in Microentrepreneurs ‘‘(3) to aid in researching and developing severe constraints on available sources of Act of 1998’, also referred to as the ‘PRIME the best practices in the field of microenter- matching funds, the Administrator may re- Act’. prise and technical assistance programs for duce or eliminate the matching require- disadvantaged entrepreneurs; and ments of subsection (a). ‘‘SEC. 172. DEFINITIONS. ‘‘(4) for such other activities as the Admin- ‘‘(2) LIMITATION.—Not more than 10 percent ‘‘For purposes of this subtitle— istrator determines are consistent with the of the total funds made available from the ‘‘(1) the term ‘Administrator’ has the same purposes of this subtitle. Fund in any fiscal year to carry out this sub- meaning as in section 103; ‘‘SEC. 175. QUALIFIED ORGANIZATIONS. title may be excepted from the matching re- ‘‘(2) the term ‘capacity building services’ ‘‘For purposes of eligibility for assistance quirements of subsection (a), as authorized means services provided to an organization under this subtitle, a qualified organization by paragraph (1) of this subsection. that is, or is in the process of becoming a mi- shall be— ‘‘SEC. 178. APPLICATIONS FOR ASSISTANCE. croenterprise development organization or ‘‘(1) a nonprofit microenterprise develop- ‘‘An application for assistance under this program, for the purpose of enhancing its ment organization or program (or a group or subtitle shall be submitted in such form and ability to provide training and services to collaborative thereof) that has a dem- in accordance with such procedures as the disadvantaged entrepreneurs; onstrated record of delivering microenter- Fund shall establish. ‘‘(3) the term ‘collaborative’ means 2 or prise services to disadvantaged entre- more nonprofit entities that agree to act preneurs; ‘‘SEC. 179. RECORDKEEPING. jointly as a qualified organization under this ‘‘(2) an intermediary; ‘‘The requirements of section 115 shall subtitle; ‘‘(3) a microenterprise development organi- apply to a qualified organization receiving ‘‘(4) the term ‘disadvantaged entrepreneur’ zation or program that is accountable to a assistance from the Fund under this subtitle means a microentrepreneur that is— local community, working in conjunction as if it were a community development fi- ‘‘(A) a low-income person; with a State or local government or Indian nancial institution receiving assistance from ‘‘(B) a very low-income person; or tribe; or the Fund under subtitle A. ‘‘(C) an entrepreneur that lacks adequate ‘‘(4) an Indian tribe acting on its own, if ‘‘SEC. 180. AUTHORIZATION. access to capital or other resources essential the Indian tribe can certify that no private for business success, or is economically dis- ‘‘In addition to funds otherwise authorized organization or program referred to in this to be appropriated to the Fund to carry out advantaged, as determined by the Adminis- paragraph exists within its jurisdiction. trator; this title, there are authorized to be appro- ‘‘SEC. 176. ALLOCATION OF ASSISTANCE; SUB- ‘‘(5) the term ‘Fund’ has the same meaning priated to the Fund to carry out this sub- GRANTS. title— as in section 103; ‘‘(a) ALLOCATION OF ASSISTANCE.— ‘‘(6) the term ‘Indian tribe’ has the same ‘‘(1) $15,000,000 for fiscal year 1999; ‘‘(1) IN GENERAL.—The Administrator shall ‘‘(2) $25,000,000 for fiscal year 2000; meaning as in section 103; allocate assistance from the Fund under this ‘‘(7) the term ‘intermediary’ means a pri- ‘‘(3) $30,000,000 for fiscal year 2001; and subtitle to ensure that— ‘‘(4) $35,000,000 for fiscal year 2002. vate, nonprofit entity that seeks to serve mi- ‘‘(A) activities described in section 174(1) croenterprise development organizations and are funded using not less than 75 percent of ‘‘SEC. 181. IMPLEMENTATION. programs as authorized under section 175; amounts made available for such assistance; ‘‘The Administrator shall, by regulation, ‘‘(8) the term ‘low-income person’ has the and establish such requirements as may be nec- same meaning as in section 103; ‘‘(B) activities described in section 174(2) essary to carry out this subtitle.’’. ‘‘(9) the term ‘microentrepreneur’ means are funded using not less than 15 percent of SEC. 2. ADMINISTRATIVE EXPENSES. the owner or developer of a microenterprise; amounts made available for such assistance. Section 121(a)(2)(A) of the Riegle Commu- ‘‘(10) the term ‘microenterprise’ means a ‘‘(2) LIMIT ON INDIVIDUAL ASSISTANCE.—No sole proprietorship, partnership, or corpora- nity Development and Regulatory Improve- single organization or entity may receive ment Act of 1994 (12 U.S.C. 4718(a)(2)(A)) is tion that— more than 10 percent of the total funds ap- ‘‘(A) has fewer than 5 employees; and amended— propriated under this subtitle in a single fis- (1) by striking ‘‘$5,550,000’’ and inserting ‘‘(B) generally lacks access to conventional cal year. loans, equity, or other banking services; ‘‘$6,100,000’’; and ‘‘(b) TARGETED ASSISTANCE.—The Adminis- (2) in the first sentence, by inserting before ‘‘(11) the term ‘microenterprise develop- trator shall ensure that not less than 50 per- ment organization or program’ means a non- the period ‘‘, including costs and expenses as- cent of the grants made under this subtitle sociated with carrying out subtitle C’’. profit entity, or a program administered by are used to benefit very low-income persons, such an entity, including community devel- including those residing on Indian reserva- SEC. 3. CONFORMING AMENDMENTS. opment corporations or other nonprofit de- tions. Section 104(d) of the Riegle Community velopment organizations and social service ‘‘(c) SUBGRANTS AUTHORIZED.— Development and Regulatory Improvement organizations, that provides services to dis- ‘‘(1) IN GENERAL.—A qualified organization Act of 1994 (12 U.S.C. 4703(d)) is amended— advantaged entrepreneurs or prospective en- receiving assistance under this subtitle may (1) in paragraph (2)— trepreneurs; provide grants using that assistance to (A) by striking ‘‘15’’ and inserting ‘‘17’’; ‘‘(12) the term ‘training and technical as- qualified small and emerging microenter- (B) in subparagraph (G)— sistance’ means services and support pro- prise organizations and programs, subject to (i) by striking ‘‘9’’ and inserting ‘‘11’’; vided to disadvantaged entrepreneurs or pro- such rules and regulations as the Adminis- (ii) by redesignating clauses (iv) and (v) as spective entrepreneurs, such as assistance trator determines to be appropriate. clauses (v) and (vi), respectively; and for the purpose of enhancing business plan- ‘‘(2) LIMIT ON ADMINISTRATIVE EXPENSES.— (iii) by inserting after clause (iii) the fol- ning, marketing, management, financial Not more than 7.5 percent of assistance re- lowing:

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00062 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6569 ‘‘(iv) 2 individuals who have expertise in There are many success stories we in non-violent and constructive ways microenterprises and microenterprise devel- can all point to about the business that and give back to the community in opment;’’; and began with an idea and eventually grew which they live. Mr. Bellinger was re- (2) in paragraph (4), in the first sentence, into a major global corporation. It all cently selected by New Mexico News- by inserting before the period ‘‘and subtitle C’’. began with the basic tenacity of a busi- paper as one of the top ten people in Mr. DOMENICI. Mr. President, it is a nessman, woman, or family. We have Santa Fe making a real difference in pleasure to join with Senator KENNEDY no way of knowing how many more their community. in support of the PRIME Act, ‘‘Pro- such success stories will be told in the In Taos, the Taos County Economic gram for Investment in Micro-Entre- future. It is guaranteed, however, that Development Corporation providing preneurs Act of 1998.’’ there are thousands of such extraor- funding for the Taos Food Center, a Starting one’s own business is a part dinary entrepreneurs willing to provide commercial kitchen that acts as an in- of the American dream. There are the ideas and hard labor to make it cubator for small-scale food producers thousands of creative and hardworking happen, and with a little help, they and farmers in the region. men and women who believe they have will be successful. Previously, these individuals could a solid idea for building a new business. Again, I am pleased to join Senator not afford to rent space, buy commer- The realities of beginning a business KENNEDY in cosponsoring the PRIME cial and office equipment, or market are that it takes more than luck, hard Act. Whatever we can do to assist who their products. With the assistance of labor, and dedication to make it work. want to be self-reliant, successful en- microenterprise funds, the Taos Food There are often overwhelming obsta- trepreneurs, with a piece of the Amer- Center provides the space and the cles for would-be small and micro en- ican dream, is an investment well equipment and provides on-site tech- trepreneurs, due in part of the com- worth taking. nical and business assistance. This al- plexity of local, state and federal laws, Mr. BINGAMAN. Mr. President, I rise lows individuals to rent the facility by the necessity of understanding the in- today to offer my very enthusiastic the hour, and convert their crops into tricacies of marketing, feasibility stud- support for the micro-enterprise bill marketable products. ies, and bookkeeping practices, as well being introduced by Senator KENNEDY. Other microenterprise organizations as finding a source for capital. Entre- Programs of this type provide tech- in New Mexico—the Rio Grande Com- preneurs usually need basic assistance nical support and funding to thousands munity Development Corporation, La to bring their idea to a viable business of potentially productive Americans Jicarita Enterprise Community, enterprise. They need training, tech- who are struggling to make ends meet WESST Corp., and so on—have had nical assistance, and mentoring. and are looking for a way out of their similarly stellar results. They play es- Under this bill grants will be avail- current precarious economic situation. sential roles in their communities, and able through the Community Develop- I have visited microenterprise busi- they should be commended for their ef- ment Financial Institutions Fund, nesses in my state and know they forts. matched at least 50 percent in non-fed- work. These individuals possess energy, In April, I organized a roundtable dis- eral funds, to help experienced non- ingenuity, desire, and vision but cur- cussion of all the microenterprise orga- profit organizations provide the assist- rently lack access to three important nizations operating in New Mexico. ance these new businesses so urgently ingredients that will allow them to be This was the first time representatives require. Fifty percent of these grants successful in their entrepreneurial ef- from these organizations met in the will be awarded to applicants serving forts: business management training, same location to discuss their respec- low-income clients, and those serving knowledge of the market, and afford- tive philosophies, objectives, and strat- equally both urban and rural areas. able capital. This bill will provide all egies concerning microenterprise, and From so many case studies and his- three ingredients, and will do so in it was very beneficial to all of us. The tories of successful businesses, we areas of the country that need eco- dialogue with the organizations that know that enthusiastic entrepreneurs nomic assistance. began that day has continued to the can sustain and build their businesses Microenterprise is not charity and it present, and has only reinforced by when these organizations are available does not foster dependence. Instead, it commitment to these programs. The to provide critical training and profes- encourages individuals to use their spe- simple fact is: the work, and they work sional, technical assistance. cific strengths and creativity to sup- well. I have had the pleasure of visiting port themselves and their community. The bill we are introducing today countless new micro-level businesses in It is a market-based approach to eco- would accomplish several important my State of New Mexico, a great ma- nomic empowerment and self-reliance tasks: jority of whom received assistance that has proven to be successful both First, it will provide training, tech- from the very competent WEEST Corp here and overseas, and it deserves to be nical assistance, and start-up funds to organization, now located in five dif- expanded. It offers an alternative to potential entrepreneurs who are cur- ferent sites throughout our State. This poverty and provides the means by rently disadvantaged but eager to organization not only provides key which individuals and communities can change their economic condition; technical assistance and training and be saved from cycles of isolation, vio- Second, it will provide training and access to low interest revolving loans, lence, and despair. capacity building services to microen- but it also provides mentoring and in- In New Mexico, I have seen the tan- terprise development organizations, an formation about sound business prac- gible results of microenterprise pro- activity that will lead directly to the tices to ensure their creative ideas be- grams. One organization we have expansion of microenterprise funding come viable business entities. interacted with, ACCION, provided and an increased number of clients Micro and small businesses are an ab- funds for Michael and Jamie Ford to being served; solutely critical component of our na- begin a very successful business selling Third, it will identify best practices tional economic growth. The Small flies for fly-fishing in their community in microenterprise technical and lend- Business Administration, for example, and over the Internet. They were re- ing services, an activity that will fur- lends excellent support to entre- cently named the Small Business Ad- ther enhance efforts to provide funds to preneurs. At the small time, the ministration’s Welfare-to-Work Entre- individuals in an efficient and effective PRIME Act will establish a com- preneur of the Year in New Mexico. An- manner; plimentary program by enabling inter- other organization, the New Mexico Finally, it will ensure that microen- mediary organizations to serve a more Business Resource Center, rec- terprise lending occurs in all areas that micro-level entrepreneurs who need ommended that funds be provided require assistance—meaning both rural specialized and hands-on assistance. through New Mexico Community De- and urban communities. This is a good investment for the fu- velopment Loan Fund to Kevin Let me conclude by thanking my col- ture, and will be returned many fold by Bellinger, who created a unique art and league from Massachusetts and his the creation of businesses that can con- dance program for disadvantaged staff for their work on this bill. I have tribute to the growth of the family, youths called Harambe. Here, low-in- been pleased to work with Senator local, and national economies. come individuals are taught to interact KENNEDY on the development of the

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00063 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6570 CONGRESSIONAL RECORD — SENATE June 18, 1998 components contained within the bill, American trademark law to ensure S. 2191 in particular those related to rural that it serves to promote American in- Be it enacted by the Senate and House of Rep- communities and Indian reservations. I terests. resentatives of the United States of America in believe that this bill will have a pro- Congress assembled, Currently, in order for American SECTION 1. SHORT TITLE. found effect on the ability of low-in- companies to protect their trademarks come individuals to establish busi- This Act may be cited as the ‘‘Madrid Pro- abroad, they must register their trade- tocol Implementation Act’’. nesses, develop new products and serv- marks in each and every country in ices, and create new jobs. All of these SEC. 2. PROVISIONS TO IMPLEMENT THE PRO- which protection is sought. Registering TOCOL RELATING TO THE MADRID activities can only help individuals and in multiple countries is a time-con- AGREEMENT CONCERNING THE communities in the United States in a INTERNATIONAL REGISTRATION OF suming, complicated and expensive positive way. MARKS. process—a process which places a dis- The Act entitled ‘‘An Act to provide for By Mr. LEAHY: proportionate burden on smaller Amer- the registration and protection of trade- S. 2191. A bill to amend the Trade- ican companies seeking international marks used in commerce, to carry out the mark Act of 1946 to provide for the reg- trademark protection. This legislation provisions of certain international conven- istration and protection of trademarks will ease the registration burden by en- tions, and for other purposes’’, approved July abling American businesses to obtain 5, 1946, as amended (15 U.S.C. 1051 and fol- used in commerce, in order to carry lowing) (commonly referred to as the out provisions of certain international trademark protection in all signatory ‘‘Trademark Act of 1946’’) is amended by add- conventions, and for other purposes; to countries with a single trademark ap- ing after section 51 the following new title: the Committee on the Judiciary. plication filed with the Patent and ‘‘TITLE XII—THE MADRID PROTOCOL MADRID PROTOCOL IMPLEMENTATION ACT Trademark Office. ‘‘SEC. 60. DEFINITIONS. Mr. LEAHY. Mr. President, I am Since 1891, the Madrid Agreement ‘‘For purposes of this title: pleased to introduce legislation that Concerning the International Registra- ‘‘(1) MADRID PROTOCOL.—The term ‘Madrid will implement the Protocol Relating tion of Marks (Agreement) has pro- Protocol’ means the Protocol Relating to the to the Madrid Agreement Concerning vided an international trademark reg- Madrid Agreement Concerning the Inter- the International Registration of national Registration of Marks, adopted at istration system. However, prior to Madrid, Spain, on June 27, 1989. Marks (Protocol). This bill is part of adoption of the Protocol, the U.S. de- my ongoing effort to refine American ‘‘(2) BASIC APPLICATION.—The term ‘basic clined to join the Agreement because it application’ means the application for the intellectual property law to ensure contained terms deemed inimical to registration of a mark that has been filed that it serves to advance and protect American intellectual property inter- with an Office of a Contracting Party and American interests and does not serve ests. In 1989, the terms of the Agree- that constitutes the basis for an application to encumber small companies seeking ment were modified by the Protocol, for the international registration of that to expand into international markets. which corrected the objectionable mark. Specifically, this legislation will con- ‘‘(3) BASIC REGISTRATION.—The term ‘basic terms of the Agreement and made registration’ means the registration of a form American trademark application American participation a possibility. procedures to the terms of the Protocol mark that has been granted by an Office of For example, under the Protocol, appli- a Contracting Party and that constitutes the in anticipation of the U.S.’s eventual cations for international trademark ex- basis for an application for the international ratification of the treaty, thereby help- tension can be completed in English; registration of that mark. ing American businesses to create a formerly, applications were required to ‘‘(4) CONTRACTING PARTY.—The term ‘Con- ‘‘one stop’’ international trademark be completed in French. It should be tracting Party’ means any country or inter- registration process. This bill is one of noted that the Protocol will not re- governmental organization that is a party to the Madrid Protocol. many measures I have introduced and quire substantive changes to American ‘‘(5) DATE OF RECORDAL.—The term ‘date of supported over the past few years to trademark law, hence the imple- ensure that American trademark hold- recordal’ means the date on which a request menting legislation I introduce today for extension of protection that is filed after ers receive strong protection in today’s is identical to the legislation that an international registration is granted is world of changing technology and com- passed the House on May 5, 1998 and recorded on the International Register. plex international markets. only would make those technical ‘‘(6) DECLARATION OF BONA FIDE INTENTION In addition to this legislation, I have changes to American law necessary to TO USE THE MARK IN COMMERCE.—The term introduced the Trademark Law Treaty bring the U.S. into conformity with the ‘declaration of bona fide intention to use the mark in commerce’ means a declaration that Implementing and Registration Sim- Protocol. plification Act, which will bring U.S. is signed by the applicant for, or holder of, trademark law into conformance with To date, the Administration has re- an international registration who is seeking the Trademark Law Treaty. The Trade- sisted accession to the treaty because extension of protection of a mark to the mark Law Treaty will simplify trade- of voting rights disputes with the Eu- United States and that contains a statement ropean Union, which has sought to re- that— mark registration requirements around ‘‘(A) the applicant or holder has a bona fide the world by establishing a list of max- tain an additional vote for itself as an intention to use the mark in commerce, imum requirements which Treaty intergovernmental entity, in addition ‘‘(B) the person making the declaration be- member countries can impose on trade- to the votes of its member states. I lieves himself or herself, or the firm, cor- mark applicants. All American busi- support the Administration’s efforts to poration, or association in whose behalf he nesses, and particularly small Amer- negotiate a treaty based upon the equi- or she makes the declaration, to be entitled ican businesses, will benefit as a result. table and democratic principle of one- to use the mark in commerce, and Earlier this year, I introduced legis- state, one-vote. However, in anticipa- ‘‘(C) no other person, firm, corporation, or lation authorizing the National Re- tion of the eventual resolution of this association, to the best of his or her knowl- search Council of the National Acad- edge and belief, has the right to use such dispute, the Senate has the oppor- mark in commerce either in the identical emy of Sciences to conduct a com- tunity to act now to make the tech- form of the mark or in such near resem- prehensive study of the effects of add- nical changes to American trademark blance to the mark as to be likely, when ing new generic Top Level Domains on law so that once this voting dispute is used on or in connection with the goods of trademark and other intellectual prop- satisfactorily resolved and the U.S. ac- such other person, firm, corporation, or asso- erty rights. cedes to the Protocol, ‘‘one-stop’’ ciation, to cause confusion, or to cause mis- Moreover, I supported the Federal international trademark registration take, or to deceive. Trademark Dilution Act of 1995, which can become an immediate reality for ‘‘(7) EXTENSION OF PROTECTION.—The term ‘extension of protection’ means the protec- was passed last Congress, to provide in- all American trademark applicants. tellectual property rights holders with tion resulting from an international reg- Mr. President, I ask unanimous con- istration that extends to a Contracting the power to enjoin another person’s Party at the request of the holder of the commercial use of famous marks that sent that the text of the bill be printed in the RECORD. international registration, in accordance would cause dilution of the mark’s dis- with the Madrid Protocol. tinctive quality. There being no objection, the bill was ‘‘(8) HOLDER OF AN INTERNATIONAL REG- Together, these measures represent ordered to be printed in the RECORD, as ISTRATION.—A ‘holder’ of an international major steps in our efforts to refine follows: registration is the natural or juristic person

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00064 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6571 in whose name the international registration ‘‘SEC. 63. RESTRICTION, ABANDONMENT, CAN- ‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR is recorded on the International Register. CELLATION, OR EXPIRATION OF A EXTENSION OF PROTECTION TO THE ‘‘(9) INTERNATIONAL APPLICATION.—The BASIC APPLICATION OR BASIC REG- UNITED STATES. term ‘international application’ means an ISTRATION. ‘‘The holder of an international registra- ‘‘With respect to an international applica- application for international registration tion with an extension of protection to the tion transmitted to the International Bureau that is filed under the Madrid Protocol. United States shall be entitled to claim a under section 62, the Commissioner shall no- ‘‘(10) INTERNATIONAL BUREAU.—The term date of priority based on the right of priority tify the International Bureau whenever the ‘International Bureau’ means the Inter- within the meaning of Article 4 of the Paris basic application or basic registration which national Bureau of the World Intellectual Convention for the Protection of Industrial is the basis for the international application Property Organization. Property if— has been restricted, abandoned, or canceled, ‘‘(11) INTERNATIONAL REGISTER.—The term ‘‘(1) the international registration con- or has expired, with respect to some or all of ‘International Register’ means the official tained a claim of such priority; and the goods and services listed in the inter- ‘‘(2)(A) the international application con- collection of such data concerning inter- national registration— national registrations maintained by the tained a request for extension of protection ‘‘(1) within 5 years after the international to the United States, or International Bureau that the Madrid Pro- registration date; or tocol or its implementing regulations re- ‘‘(B) the date of recordal of the request for ‘‘(2) more than 5 years after the inter- extension of protection to the United States quire or permit to be recorded, regardless of national registration date if the restriction, the medium which contains such data. is not later than 6 months after the date of abandonment, or cancellation of the basic the first regular national filing (within the ‘‘(12) INTERNATIONAL REGISTRATION.—The application or basic registration resulted term ‘international registration’ means the meaning of Article 4(A)(3) of the Paris Con- from an action that began before the end of vention for the Protection of Industrial registration of a mark granted under the Ma- that 5-year period. drid Protocol. Property) or a subsequent application (with- ‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTEC- ‘‘(13) INTERNATIONAL REGISTRATION DATE.— in the meaning of Article 4(C)(4) of the Paris TION SUBSEQUENT TO INTER- Convention). The term ‘international registration date’ NATIONAL REGISTRATION. means the date assigned to the international ‘‘The holder of an international registra- ‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO registration by the International Bureau. REQUEST FOR EXTENSION OF PRO- tion that is based upon a basic application TECTION; NOTIFICATION OF RE- ‘‘(14) NOTIFICATION OF REFUSAL.—The term filed with the Patent and Trademark Office FUSAL. ‘notification of refusal’ means the notice or a basic registration granted by the Patent ‘‘(a) EXAMINATION AND OPPOSITION.—(1) A sent by an Office of a Contracting Party to and Trademark Office may request an exten- request for extension of protection described the International Bureau declaring that an sion of protection of its international reg- in section 66(a) shall be examined as an ap- extension of protection cannot be granted. istration by filing such a request— plication for registration on the Principal ‘‘(15) OFFICE OF A CONTRACTING PARTY.—The ‘‘(1) directly with the International Bu- Register under this Act, and if on such exam- term ‘Office of a Contracting Party’ means— reau, or ination it appears that the applicant is enti- ‘‘(A) the office, or governmental entity, of ‘‘(2) with the Patent and Trademark Office tled to extension of protection under this a Contracting Party that is responsible for for transmittal to the International Bureau, title, the Commissioner shall cause the mark the registration of marks, or if the request is in such form, and contains to be published in the Official Gazette of the ‘‘(B) the common office, or governmental such transmittal fee, as may be prescribed Patent and Trademark Office. entity, of more than 1 Contracting Party by the Commissioner. ‘‘(2) Subject to the provisions of subsection that is responsible for the registration of ‘‘SEC. 65. EXTENSION OF PROTECTION OF AN (c), a request for extension of protection marks and is so recognized by the Inter- INTERNATIONAL REGISTRATION TO under this title shall be subject to opposition national Bureau. THE UNITED STATES UNDER THE under section 13. Unless successfully op- ‘‘(16) OFFICE OF ORIGIN.—The term ‘office of MADRID PROTOCOL. posed, the request for extension of protection origin’ means the Office of a Contracting ‘‘(a) IN GENERAL.—Subject to the provi- shall not be refused. Party with which a basic application was sions of section 68, the holder of an inter- ‘‘(3) Extension of protection shall not be filed or by which a basic registration was national registration shall be entitled to the refused under this section on the ground that granted. benefits of extension of protection of that the mark has not been used in commerce. ‘‘(17) OPPOSITION PERIOD.—The term ‘oppo- international registration to the United States to the extent necessary to give effect ‘‘(4) Extension of protection shall be re- sition period’ means the time allowed for fil- fused under this section to any mark not ing an opposition in the Patent and Trade- to any provision of the Madrid Protocol. ‘‘(b) IF UNITED STATES IS OFFICE OF ORI- registrable on the Principal Register. mark Office, including any extension of time ‘‘(b) NOTIFICATION OF REFUSAL.—If, a re- granted under section 13. GIN.—An extension of protection resulting from an international registration of a mark quest for extension of protection is refused ‘‘SEC. 61. INTERNATIONAL APPLICATIONS BASED shall not apply to the United States if the under subsection (a), the Commissioner shall ON UNITED STATES APPLICATIONS Patent and Trademark Office is the office of declare in a notification of refusal (as pro- OR REGISTRATIONS. origin with respect to that mark. vided in subsection (c)) that the extension of protection cannot be granted, together with ‘‘The owner of a basic application pending ‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EX- a statement of all grounds on which the re- before the Patent and Trademark Office, or TENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO fusal was based. the owner of a basic registration granted by THE UNITED STATES. ‘‘(c) NOTICE TO INTERNATIONAL BUREAU.—(1) the Patent and Trademark Office, who— ‘‘(a) REQUIREMENT FOR REQUEST FOR EXTEN- Within 18 months after the date on which the ‘‘(1) is a national of the United States, SION OF PROTECTION.—A request for extension International Bureau transmits to the Pat- ‘‘(2) is domiciled in the United States, or of protection of an international registration ent and Trademark Office a notification of a ‘‘(3) has a real and effective industrial or to the United States that the International request for extension of protection, the Com- commercial establishment in the United Bureau transmits to the Patent and Trade- missioner shall transmit to the Inter- States, mark Office shall be deemed to be properly national Bureau any of the following that may file an international application by sub- filed in the United States if such request, applies to such request: when received by the International Bureau, ‘‘(A) A notification of refusal based on an mitting to the Patent and Trademark Office has attached to it a declaration of bona fide examination of the request for extension of a written application in such form, together intention to use the mark in commerce that protection. with such fees, as may be prescribed by the is verified by the applicant for, or holder of, ‘‘(B) A notification of refusal based on the Commissioner. the international registration. filing of an opposition to the request. ‘‘(b) EFFECT OF PROPER FILING.—Unless ex- ‘‘SEC. 62. CERTIFICATION OF THE INTER- ‘‘(C) A notification of the possibility that NATIONAL APPLICATION. tension of protection is refused under section an opposition to the request may be filed 68, the proper filing of the request for exten- after the end of that 18-month period. ‘‘Upon the filing of an application for sion of protection under subsection (a) shall ‘‘(2) If the Commissioner has sent a notifi- international registration and payment of constitute constructive use of the mark, con- cation of the possibility of opposition under the prescribed fees, the Commissioner shall ferring the same rights as those specified in paragraph (1)(C), the Commissioner shall, if examine the international application for section 7(c), as of the earliest of the fol- applicable, transmit to the International Bu- the purpose of certifying that the informa- lowing: reau a notification of refusal on the basis of tion contained in the international applica- ‘‘(1) The international registration date, if the opposition, together with a statement of tion corresponds to the information con- the request for extension of protection was all the grounds for the opposition, within 7 filed in the international application. months after the beginning of the opposition tained in the basic application or basic reg- ‘‘(2) The date of recordal of the request for period or within 1 month after the end of the istration at the time of the certification. extension of protection, if the request for ex- opposition period, whichever is earlier. Upon examination and certification of the tension of protection was made after the ‘‘(3) If a notification of refusal of a request international application, the Commissioner international registration date. for extension of protection is transmitted shall transmit the international application ‘‘(3) The date of priority claimed pursuant under paragraph (1) or (2), no grounds for re- to the International Bureau. to section 67. fusal of such request other than those set

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00065 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6572 CONGRESSIONAL RECORD — SENATE June 18, 1998 forth in such notification may be trans- that international registration. Such an ap- ‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTEC- mitted to the International Bureau by the plication shall be treated as if it had been TION. Commissioner after the expiration of the filed on the international registration date ‘‘An extension of protection shall convey time periods set forth in paragraph (1) or (2), or the date of recordal of the request for ex- the same rights as an existing registration as the case may be. tension of protection with the International for the same mark, if— ‘‘(4) If a notification specified in paragraph Bureau, whichever date applies, and, if the ‘‘(1) the extension of protection and the ex- (1) or (2) is not sent to the International Bu- extension of protection enjoyed priority isting registration are owned by the same reau within the time period set forth in such under section 67 of this title, shall enjoy the person; paragraph, with respect to a request for ex- same priority. Such an application shall be ‘‘(2) the goods and services listed in the ex- tension of protection, the request for exten- entitled to the benefits conferred by this isting registration are also listed in the ex- sion of protection shall not be refused and subsection only if the application is filed not tension of protection; and the Commissioner shall issue a certificate of later than 3 months after the date on which ‘‘(3) the certificate of extension of protec- extension of protection pursuant to the re- the international registration was canceled, tion is issued after the date of the existing quest. in whole or in part, and only if the applica- registration.’’. ‘‘(d) DESIGNATION OF AGENT FOR SERVICE OF tion complies with all the requirements of SEC. 3. EFFECTIVE DATE. PROCESS.—In responding to a notification of this Act which apply to any application filed This Act and the amendments made by refusal with respect to a mark, the holder of pursuant to section 1 or 44. this Act shall take effect on the date on the international registration of the mark ‘‘SEC. 71. AFFIDAVITS AND FEES. which the Madrid Protocol (as defined in sec- shall designate, by a written document filed ‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An tion 60(1) of the Trademark Act of 1946) en- in the Patent and Trademark Office, the extension of protection for which a certifi- ters into force with respect to the United name and address of a person resident in the cate of extension of protection has been States. United States on whom may be served no- issued under section 69 shall remain in force tices or process in proceedings affecting the for the term of the international registration By Mr. HATCH: mark. Such notices or process may be served upon which it is based, except that the ex- S. 2192. A bill to make certain tech- upon the person so designated by leaving tension of protection of any mark shall be nical corrections to the Trademark Act with that person, or mailing to that person, canceled by the Commissioner— of 1946; to the Committee on the Judi- a copy thereof at the address specified in the ‘‘(1) at the end of the 6-year period begin- ciary. last designation so filed. If the person so des- ning on the date on which the certificate of TECHNICAL CORRECTIONS TO THE TRADEMARK ignated cannot be found at the address given extension of protection was issued by the ACT OF 1946 Commissioner, unless within the 1-year pe- in the last designation, such notice or proc- Mr. HATCH. Mr. President, I rise ess may be served upon the Commissioner. riod preceding the expiration of that 6-year today to introduce some housekeeping ‘‘SEC. 69. EFFECT OF EXTENSION OF PROTEC- period the holder of the international reg- TION. istration files in the Patent and Trademark amendments to the Trademark Act. ‘‘(a) ISSUANCE OF EXTENSION OF PROTEC- Office an affidavit under subsection (b) to- This bill makes a number of technical TION.—Unless a request for extension of pro- gether with a fee prescribed by the Commis- corrections to the Trademark Act tection is refused under section 68, the Com- sioner; and which will clean up the code and make missioner shall issue a certificate of exten- ‘‘(2) at the end of the 10-year period begin- explicit some of the current practices sion of protection pursuant to the request ning on the date on which the certificate of of the Patent and Trademark Office and shall cause notice of such certificate of extension of protection was issued by the extension of protection to be published in Commissioner, and at the end of each 10-year with respect to the trademark protec- the Official Gazette of the Patent and Trade- period thereafter, unless— tion of matter that is wholly func- mark Office. ‘‘(A) within the 6-month period preceding tional. ‘‘(b) EFFECT OF EXTENSION OF PROTEC- the expiration of such 10-year period the I take it as my duty as Chairman of TION.—From the date on which a certificate holder of the international registration files the Committee on the Judiciary to try of extension of protection is issued under in the Patent and Trademark Office an affi- to ensure that the U.S. Code is clear, subsection (a)— davit under subsection (b) together with a useful, and up-to-date. These house- ‘‘(1) such extension of protection shall have fee prescribed by the Commissioner; or keeping amendments will help clarify the same effect and validity as a registration ‘‘(B) within 3 months after the expiration the law in useful ways, and I hope my on the Principal Register, and of such 10-year period, the holder of the ‘‘(2) the holder of the international reg- international registration files in the Patent colleagues will support this bill. istration shall have the same rights and rem- and Trademark Office an affidavit under sub- For the reference of my colleagues, I edies as the owner of a registration on the section (b) together with the fee described in ask unanimous consent that a copy of Principal Register. subparagraph (A) and an additional fee pre- the bill and a section-by-section anal- ‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PRO- scribed by the Commissioner. ysis be printed in the RECORD. TECTION TO THE UNITED STATES ‘‘(b) CONTENTS OF AFFIDAVIT.—The affi- There being no objection, the items ON THE UNDERLYING INTER- davit referred to in subsection (a) shall set were ordered to be printed in the NATIONAL REGISTRATION. forth those goods or services recited in the RECORD, as follows: ‘‘(a) EFFECT OF CANCELLATION OF INTER- extension of protection on or in connection NATIONAL REGISTRATION.—If the Inter- with which the mark is in use in commerce S. 2192 national Bureau notifies the Patent and and the holder of the international registra- Be it enacted by the Senate and House of Rep- Trademark Office of the cancellation of an tion shall attach to the affidavit a specimen resentatives of the United States of America in international registration with respect to or facsimile showing the current use of the Congress assembled, some or all of the goods and services listed in mark in commerce, or shall set forth that SECTION 1. TECHNICAL CORRECTIONS TO the international registration, the Commis- any nonuse is due to special circumstances TRADEMARK ACT OF 1946. sioner shall cancel any extension of protec- which excuse such nonuse and is not due to (a) IN GENERAL.—The Act entitled ‘‘An Act tion to the United States with respect to any intention to abandon the mark. Special to provide for the registration and protec- such goods and services as of the date on notice of the requirement for such affidavit tion of trademarks used in commerce, to which the international registration was shall be attached to each certificate of ex- carry out the provisions of certain inter- canceled. tension of protection. national conventions, and for other pur- ‘‘(b) EFFECT OF FAILURE TO RENEW INTER- ‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF poses’’, approved July 5, 1946 (15 U.S.C. 1051 NATIONAL REGISTRATION.—If the Inter- PROTECTION. et seq.) (commonly referred to as the Trade- national Bureau does not renew an inter- ‘‘An extension of protection may be as- mark Act of 1946), is amended as follows: national registration, the corresponding ex- signed, together with the goodwill associated (1) Section 1 (15 U.S.C. 1051) is amended— tension of protection to the United States with the mark, only to a person who is a na- (A) in subsection (a)(1)(A), by striking shall cease to be valid as of the date of the tional of, is domiciled in, or has a bona fide ‘‘goods in connection’’ each place it appears expiration of the international registration. and effective industrial or commercial estab- and inserting ‘‘goods on or in connection’’; ‘‘(c) TRANSFORMATION OF AN EXTENSION OF lishment either in a country that is a Con- and PROTECTION INTO A UNITED STATES APPLICA- tracting Party or in a country that is a (B) in subsection (d)(1)— TION.—The holder of an international reg- member of an intergovernmental organiza- (i) by inserting ‘‘and,’’ after ‘‘specifying istration canceled in whole or in part by the tion that is a Contracting Party. the date of the applicant’s first use of the International Bureau at the request of the ‘‘SEC. 73. INCONTESTABILITY. mark in commerce’’; and office of origin, under Article 6(4) of the Ma- ‘‘The period of continuous use prescribed (ii) by striking ‘‘and, the mode or manner drid Protocol, may file an application, under under section 15 for a mark covered by an ex- in which the mark is used on or in connec- section 1 or 44 of this Act, for the registra- tension of protection issued under this title tion with such goods or services’’. tion of the same mark for any of the goods may begin no earlier than the date on which (2) Section 2 (15 U.S.C. 1052) is amended— and services to which the cancellation ap- the Commissioner issues the certificate of (A) in subsection (e)— plies that were covered by an extension of the extension of protection under section 69, (i) in paragraph (3) by striking ‘‘or’’ after protection to the United States based on except as provided in section 74. ‘‘them,’’; and

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00066 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6573 (ii) by inserting before the period at the Subparagraph 1(a)(1)(B)(ii) amends sub- that as a whole is not functional’’ to the list- end the following: ‘‘, or (5) comprises any section 1(d)(1) of the Trademark Act by de- ing of the types of marks which can be reg- matter that, as a whole, is functional’’; and leting ‘‘and the mode or manner in which the istered on the Supplemental register. This (B) in subsection (f), by striking ‘‘para- mark is used on or in connection with such change codifies existing case law and the graphs (a), (b), (c), (d), and (e)(3)’’ and insert- goods or services’’. Section 1(d)(1) sets out current practice of the Office. ing ‘‘subsections (a), (b), (c), (d), (e)(3), and the requirements for a complete ‘‘statement Paragraph 1(a)(7) amends section 26 of the (e)(5)’’. of use’’, the document that must be filed to Trademark Act by deleting an extraneous (3) Section 7(a) (15 U.S.C. 1057(a)) is amend- complete any published trademark applica- comma. ed in the first sentence by striking the sec- tion that was originally filed based on in- Paragraph 1(a)(8) amends section 31 of the ond period at the end. tent-to-use the mark. The statement of use Trademark Act by deleting ‘‘§ 31 Fees’’ from (4) Section 10 (15 U.S.C. 1060) is amended— is meant to bring the intent-to-use based ap- the title of the section and inserting ‘‘Sec. (A) at the end of the first sentence, by plication into conformity with the require- 31. (a)’’. striking the comma before the period; and ments for a trademark application based on Paragraph 1(a)(9) amends section 32(1) of (B) in the third sentence, by striking the use in commerce. The deletion of this lan- the Trademark Act to clarify that the defini- second period at the end. guage makes this section parallel to section tion of ‘‘any person’’ as set out in paragraph (5) Section 14(3) (15 U.S.C. 1064(3)) is 1(a)(1)(A), as amended by the Trademark 1 of section 32 is limited to the matter with- amended by inserting ‘‘or is functional,’’ be- Law Treaty Implementation Act. Section in the paragraph. fore ‘‘or has been abandoned’’. 1(a)(1)(A), as amended, sets out the require- Paragraph 1(a)(10) amends section 33(b) of (6) Section 23(c) (15 U.S.C. 1091(c)) is ments for filing a complete trademark appli- the Trademark Act by inserting as a new amended by striking ‘‘or device’’ and insert- cation based on use in commerce. Thus the paragraph 8, ‘‘That the mark is functional; ing ‘‘, device, any matter that as a whole is amendment conforms the requirements of or’’. This language adds a new defense not functional,’’. these two sections, requirements that should against a claim of infringement made by the (7) Section 26 (15 U.S.C. 1094) is amended by logically be identical. In addition, the expe- owner of a mark which has become ‘‘incon- striking ‘‘7(c),,’’ and inserting ‘‘, 7(c),’’. rience of the Office has been that requiring testable’’ under the provisions of section 32 (8) Section 31 (15 U.S.C. 1113) is amended— the applicant to state the mode or manner of of the Trademark Act. This language is fully (A) by striking— using the mark adds no additional useful in- consistent with the amendment made to formation to the application inasmuch as an paragraph 14(3) of the Trademark Act by ‘‘§ 31. Fees’’; applicant is already required to submit paragraph 1(a)(5) of this Act. and specimens, e.g., tags, labels, advertising etc., Paragraph 1(a)(11) amends section 39(a) of (B) by striking ‘‘(a)’’ and inserting ‘‘SEC. to demonstrate how it is using the mark. the Trademark Act to strike a reference, 31. (a)’’. Therefore, an additional statement con- that is no longer relevant, to ‘‘circuit (9) Section 32(1) (15 U.S.C. 1114(1)) is cerning the mode or manner of use of the courts’’ and insert the word ‘‘courts’’. amended by striking ‘‘As used in this sub- mark is unnecessary. Paragraph 1(a)(12) amends Section 42 of the section’’ and inserting ‘‘As used in this para- Subparagraph 1(a)(2)(A) amends paragraph Trademark Act by sdeleting an extraneous graph’’. 2(e) of the Trademark Act by adding a new ‘‘the’’. (10) Section 33(b) (15 U.S.C. 1115(b)) is subparagraph 5, ‘‘any matter that, as a Paragraph 1(a)(13) amends the Act to amended— whole, is functional’’, to the list of statutory strike ‘‘trade-mark’’ in each place it occurs (A) by redesignating paragraph (8) as para- refusals set out in that paragraph. The lan- and replace it with ‘‘trademark’’. This is the graph (9); and guage clarifies that matter which is wholly more modern spelling. (B) by inserting after paragraph (7) the fol- functional must be refused registration, a Section 1(b) establishes an effective date lowing: position that is completely consistent with that is prospective with respect to both civil ‘‘(8) That the mark is functional; or’’. the intent of the Trademark Act. This actions and proceedings at the U.S. Patent (11) Section 39(a) (15 U.S.C. 1121(a)) is change codifies both the case law in this and Trademark Office. amended by striking ‘‘circuit courts’’ and in- matter and the long-standing practice of the serting ‘‘courts’’. Office to refuse registration to matter that By Mr. HATCH (for himself and (12) Section 42 (15 U.S.C. 1124) is amended is wholly functional based on a combined Mr. LEAHY): by striking ‘‘the any domestic’’ and insert- reading of sections 1, 2 and 45 of the Trade- S. 2193. A bill to implement the pro- mark Act. This new section will provide ex- ing ‘‘any domestic’’. visions of the Trademark Law Treaty; (13) The Act is amended by striking ‘‘trade- amining attorneys with a simple reference mark’’ each place it appears in the text and for the functionality refusal. to the Committee on the Judiciary. the title and inserting ‘‘trademark’’. Subparagraph 1(a)(2)(B) amends paragraph TRADEMARK LAW TREATY IMPLEMENTATION ACT (b) EFFECTIVE DATE.—The amendments 2(f) of the Trademark Act to add a reference Mr. HATCH. Mr. President, I rise to made by this section shall take effect on the to the new statutory refusal set out in sub- introduce the Trademark Law Treaty date of enactment of this Act, and shall paragraph 2(e)(5). This amendment to para- graph 2(f) of the Trademark Act provides Implementation Act of 1998. This legis- apply only to any civil action filed or pro- lation makes necessary changes in our ceeding before the United States Patent and that matter which is wholly functional may Trademark Office commenced on or after not be registered upon a showing that the domestic trademark law and proce- such date relating to the registration of a matter has become distinctive. This change dures to ensure that we are in compli- mark. codifies existing case law and the current ance when we ratify the treaty, which practice of the Office and is not a change in appears more likely this year than pre- SECTION-BY-SECTION ANALYSIS the substantive law. viously. The Trademark Law Treaty Paragraph 1(a)(3) amends section 7(a) of SECTION 1. TECHNICAL CORRECTIONS TO THE the Trademark Act by deleting an extra- was done and signed at Geneva in Octo- TRADEMARK ACT OF 1946 neous period. ber of 1994, and entered into force in Section 1(a) provides that the Act entitled Paragraph 1(a)(4) amends section 10 of the 1996. ‘‘An Act to provide for the registration and Trademark Act by deleting extraneous punc- The obligations under the Trademark protection of trademarks used in commerce, tuation. Law Treaty legislation will require to carry out the provision of certain inter- Paragraph 1(a)(5) amends paragraph 14(3) of some relatively minor changes to U.S. national conventions, and for other pur- the Trademark Act by inserting the phrase poses’’, approved July 5, 1946, as amended (15 ‘‘or is functional,’’ before ‘‘or has been aban- trademark practice, but will bring sig- U.S.C. 1051 et seq.) shall be referred to as the doned’’. This amendment adds an additional nificant improvements in the trade- ‘‘Trademark Act of 1946’’ and will be amend- ground for canceling a registration more mark practices of a number of impor- ed by the following provisions. than five years after the date of registration. tant countries around the world in Subparagraph 1(a)(1)(A) amends subpara- This amendment changes existing case law which U.S. trademark owners seek pro- graph 1(a)(1)(A) of the Trademark Act to in this matter but is fully consistent with tection. The required changes will change the phrase ‘‘goods in connection’’ to the purpose of the Trademark Act. To ex- eliminate complexities and simplify ‘‘goods on or in connection’’. This amend- empt the registration of a wholly functional ment simply adds language to clarify that a design from being subject to cancellation the process of obtaining, renewing, and trademark or service mark may be used on five years after the registration has issued managing trademark assets for Amer- or in connection with goods or services rath- permits the trademark owner with such a ican firms marketing their products er than just directly on the goods. This lan- registration to obtain patent-like protection and services around the world. guage is fully consistent with case law and for its wholly functional design without the Countries around the world have a Patent and Trademark Office (‘‘Office’’) limited term that the patent law imposes. number of varying requirements for fil- practice and is not a substantive change. This change is therefore wholly consistent ing trademark applications, effecting Subparagraph 1(a)(1)(B)(i) amends sub- with both the purpose of the Trademark Act changes of ownership of trademark reg- section 1(d)(1) of the Trademark Act by in- and the codifications of current practice re- serting ‘‘and’’ after the words ‘‘specifying garding functionality made in this Act. istrations, and other procedures associ- the date of the applicant’s first use of the Paragraph 1(a)(6) amends section 23(c) of ated with managing trademark assets. mark in commerce,’’. the Trademark Act by adding ‘‘any matter These differences cause considerable

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00067 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6574 CONGRESSIONAL RECORD — SENATE June 18, 1998 aggravation and expense to trademark which a mark is used or intended to be verified statement, in such form as may be owners seeking to protect their marks used in connection with the goods or prescribed by the Commissioner, and such around the world. Many of these proce- services identified in the application; number of specimens or facsimiles of the mark as used as may be required by the dures and requirements imposed by for- the elimination of the requirement Commissioner. eign countries are non-substantive and that the applicant verify an applica- ‘‘(2) The application shall include speci- highly technical. In addition, many of tion; the adoption of a grace period of fication of the applicant’s domicile and citi- these requirements in the various pro- at least six months for the filing of a zenship, the date of the applicant’s first use cedures of foreign trademark offices renewal application; the elimination of of the mark, the date of the applicant’s first impose very significant cost burdens, a declaration or evidence concerning use of the mark in commerce, the goods in both in official fees to be paid to local connection with which the mark is used, and the use of a mark in connection with a drawing of the mark. trademark offices, as well as agent’s the filing of a renewal application; and, ‘‘(3) The statement shall be verified by the fees for fulfilling the various require- the elimination of a requirement to file applicant and specify that— ments. For example, many countries a copy of the actual assignment docu- ‘‘(A) the person making the verification be- require that signatures on applications ment as a condition for recording the lieves that he or she, or the juristic person in for powers of attorney be notarized, au- assignment of a trademark registra- whose behalf he or she makes the thenticated, and legalized. This very tion. verification, to be the owner of the mark expensive and time consuming proce- sought to be registered; This bill will also harmonize and sim- ‘‘(B) to the best of the verifier’s knowledge dure is prohibited under the Treaty in plify the procedural requirements and belief, the facts recited in the applica- all cases except where the registrant is under the Trademark Act of 1946. Sec- tion are accurate; surrendering a registration. tions 8 and 9 will be amended to estab- ‘‘(C) the mark is in use in commerce; and The Treaty eliminates these con- lish a similar period of one year prior ‘‘(D) to the best of the verifier’s knowledge flicting and expensive practices by set- to the end of the applicable time pe- and belief, no other person has the right to ting forth a list of maximum require- riod, along with a grace period of six use such mark in commerce either in the identical form thereof or in such near resem- ments which a member State can im- months after that period, for filing pose for various actions. Specifically, blance thereto as to be likely, when used on both affidavits of use and renewal ap- or in connection with the goods of such other the Treaty sets forth maximum re- plications. While it separates the ten- person, to cause confusion, or to cause mis- quirements for: the contents of a trade- year affidavit of use from the renewal take, or to deceive, except that, in the case mark application; the content of a application, as required by the Treaty, of every application claiming concurrent power of attorney; the elements nec- the bill permits them both to be filed use, the applicant shall— essary for an application to receive a during the same time period which will ‘‘(i) state exceptions to the claim of exclu- filing date; a request to record a sive use; and benefit trademark applicants. ‘‘(ii) shall specify, to the extent of the change in the name or address of a The Trademark Law Treaty Imple- trademark owner; and, a request to verifier’s knowledge— mentation Act of 1998 will help Amer- ‘‘(I) any concurrent use by others; renew a trademark registration. These ican companies protect their trade- ‘‘(II) the goods on or in connection with requirements are implemented through mark assets in markets around the which and the areas in which each concur- the adoption of model forms for trade- world thereby facilitating their ability rent use exists; mark applicants and owners to use to compete. At the same time, the ‘‘(III) the periods of each use; and which must be accepted by every mem- changes it makes in U.S. trademark ‘‘(IV) the goods and area for which the ap- ber State. While a member need not law are made in a manner that will as- plicant desires registration. impose all of the requirements or ele- ‘‘(4) The applicant shall comply with such sist American trademark owners pro- rules or regulations as may be prescribed by ments listed, it cannot demand the in- tect their marks in this country. the Commissioner. The Commissioner shall clusion of any additional requirements Mr. President, I hope my colleagues promulgate rules prescribing the require- or elements in respect of a particular will support this legislation which is so ments for the application and for obtaining a action. important to American trademark filing date herein.’’. (b) APPLICATION FOR BONA FIDE INTENTION There are several other guarantees owners. mandated by the Treaty that will ben- TO USE TRADEMARK.—Subsection (b) of sec- I ask unanimous consent that the tion 1 of the Trademark Act of 1946 (15 U.S.C. efit trademark applicants and owners. text of the bill and an explanatory sec- 1051(b)) is amended to read as follows: Under the Treaty, countries will have tion by section analysis be printed in ‘‘(b)(1) A person who has a bona fide inten- to register and protect service marks, the RECORD. tion, under circumstances showing the good as well as goods marks, an important There being no objection, the items faith of such person, to use a trademark in consideration to the U.S. service econ- were ordered to be printed in the commerce may request registration of its omy, which has many valuable service trademark on the principal register hereby RECORD, as follows: established by paying the prescribed fee and marks, such as Marriott and American S. 2193 filing in the Patent and Trademark Office an Airlines. Applicants will be able to file Be it enacted by the Senate and House of Rep- application and a verified statement, in such for protection under multiple classi- resentatives of the United States of America in form as may be prescribed by the Commis- fications for goods and services, which Congress assembled, sioner. ‘‘(2) The application shall include speci- will mature into multiple class reg- SECTION 1. SHORT TITLE. istrations. No longer will trademark fication of the applicant’s domicile and citi- This Act may be cited as the ‘‘Trademark zenship, the goods in connection with which owners be forced to make a separate Law Treaty Implementation Act’’. the applicant has a bona fide intention to filing for each power of attorney; one SEC. 2. REFERENCE TO THE TRADEMARK ACT OF use the mark, and a drawing of the mark. general power will suffice. Member 1946. ‘‘(3) The statement shall be verified by the countries are precluded from consid- For purposes of this Act, the Act entitled applicant and specify— ering goods or services as being similar ‘‘An Act to provide for the registration and ‘‘(A) that the person making the to each other simply on the ground protection of trademarks used in commerce, verification believes that he or she, or the to carry out the provisions of certain inter- that they appear in the same class of juristic person in whose behalf he or she national conventions, and for other pur- makes the verification, to be entitled to use the NICE classification. Moreover, a poses’’, approved July 5, 1946 (15 U.S.C. 1051 the mark in commerce; request to change the name or address et seq.), shall be referred to as the ‘‘Trade- ‘‘(B) the applicant’s bona fide intention to of a trademark owner or a request to mark Act of 1946’’. use the mark in commerce; correct a mistake in a trademark reg- SEC. 3. APPLICATION FOR REGISTRATION; ‘‘(C) that, to the best of the verifier’s istration may not be refused without VERIFICATION. knowledge and belief, the facts recited in the giving the trademark owner an oppor- (a) APPLICATION FOR USE OF TRADEMARK.— application are accurate; and tunity to comment. Section 1(a) of the Trademark Act of 1946 (15 ‘‘(D) that, to the best of the verifier’s As I indicated, the Trademark Law U.S.C. 1051(a)) is amended to read as follows: knowledge and belief, no other person has Treaty Implementation Act of 1998 ‘‘SECTION 1. (a)(1) The owner of a trade- the right to use such mark in commerce ei- mark used in commerce may request reg- ther in the identical form thereof or in such makes only minor changes in our do- istration of its trademark on the principal near resemblance thereto as to be likely, mestic trademark law. These changes register hereby established by paying the when used on or in connection with the include: the elimination of the require- prescribed fee and filing in the Patent and goods of such other person, to cause confu- ment for a statement of the manner in Trademark Office an application and a sion, or to cause mistake, or to deceive.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00068 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6575 Except for applications filed pursuant to sec- ‘‘(d) Special notice of the requirement for business is ongoing and existing. In any as- tion 44, no mark shall be registered until the affidavits under this section shall be at- signment authorized by this section, it shall applicant has met the requirements of sub- tached to each certificate of registration and not be necessary to include the good will of sections (c) and (d) of this section. notice of publication under section 12(c). the business connected with the use of and ‘‘(4) The applicant shall comply with such ‘‘(e) The Commissioner shall notify any symbolized by any other mark used in the rules or regulations as may be prescribed by owner who files 1 of the affidavits required business or by the name or style under which the Commissioner. The Commissioner shall by this section of the Commissioner’s accept- the business is conducted. Assignments shall promulgate rules prescribing the require- ance or refusal thereof and, in the case of a be by instruments in writing duly executed. ments for the application and for obtaining a refusal, the reasons therefor. Acknowledgment shall be prima facie evi- filing date herein.’’. ‘‘(f) If the registrant is not domiciled in dence of the execution of an assignment, and (c) CONSEQUENCE OF DELAYS.—Paragraph the United States, the registrant shall des- when the prescribed information reporting (4) of section 1(d) of the Trademark Act of ignate by a written document filed in the the assignment is recorded in the Patent and 1946 (15 U.S.C. 1051(d)(4)) is amended to read Patent and Trademark Office the name and Trademark Office, the record shall be prima as follows: address of some person resident in the facie evidence of execution. An assignment ‘‘(4) The failure to timely file a verified United States on whom may be served no- shall be void against any subsequent pur- statement of use under paragraph (1) or an tices or process in proceedings affecting the chaser for valuable consideration without extension request under paragraph (2) shall mark. Such notices or process may be served notice, unless the prescribed information re- result in abandonment of the application, upon the person so designated by leaving porting the assignment is recorded in the unless it can be shown to the satisfaction of with that person or mailing to that person a Patent and Trademark Office within 3 the Commissioner that the delay in respond- copy thereof at the address specified in the months after the date of the subsequent pur- ing was unintentional, in which case the last designation so filed. If the person so des- chase or prior to the subsequent purchase. time for filing may be extended, but for a pe- ignated cannot be found at the address given The Patent and Trademark Office shall riod not to exceed the period specified in in the last designation, such notice or proc- maintain a record of information on assign- paragraphs (1) and (2) for filing a statement ess may be served upon the Commissioner.’’. ments, in such form as may be prescribed by of use.’’. SEC. 6. RENEWAL OF REGISTRATION. the Commissioner. SEC. 4. REVIVAL OF ABANDONED APPLICATION. ‘‘(b) An assignee not domiciled in the Section 12(b) of the Trademark Act of 1946 Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended to read as follows: United States shall designate by a written (15 U.S.C. 1062(b)) is amended in the last sen- document filed in the Patent and Trademark ‘‘RENEWAL OF REGISTRATION tence by striking ‘‘unavoidable’’ and by in- Office the name and address of some person serting ‘‘unintentional’’. ‘‘SEC. 9. (a) Subject to the provisions of resident in the United States on whom may SEC. 5. DURATION OF REGISTRATION; CANCELLA- section 8, each registration may be renewed be served notices or process in proceedings TION; AFFIDAVIT OF CONTINUED for periods of 10 years at the end of each suc- affecting the mark. Such notices or process USE; NOTICE OF COMMISSIONER’S cessive 10-year period following the date of ACTION. may be served upon the person so designated registration upon payment of the prescribed by leaving with that person or mailing to Section 8 of the Trademark Act of 1946 (15 fee and the filing of a written application, in U.S.C. 1058) is amended to read as follows: that person a copy thereof at the address such form as may be prescribed by the Com- specified in the last designation so filed. If ‘‘DURATION missioner. Such application may be made at the person so designated cannot be found at ‘‘SEC. 8. (a) Each registration shall remain any time within 1 year before the end of each the address given in the last designation, in force for 10 years, except that the reg- successive 10-year period for which the reg- such notice or process may be served upon istration of any mark shall be canceled by istration was issued or renewed, or it may be the Commissioner.’’. the Commissioner for failure to comply with made within a grace period of 6 months after the provisions of subsection (b) of this sec- SEC. 8. INTERNATIONAL CONVENTIONS; COPY OF the end of each successive 10-year period, FOREIGN REGISTRATION. tion, upon the expiration of the following upon payment of a fee and surcharge pre- Section 44 of the Trademark Act of 1946 (15 time periods, as applicable: scribed therefor. If any application filed U.S.C. 1126) is amended— ‘‘(1) For registrations issued pursuant to under this section is deficient, the deficiency (1) in subsection (d)— the provisions of this Act, at the end of 6 may be corrected within the time prescribed (A) by striking ‘‘23, or 44(e) of this Act’’ years following the date of registration. after notification of the deficiency, upon and inserting ‘‘or 23 of this Act or under sub- ‘‘(2) For registrations published under the payment of a surcharge prescribed therefor. section (e) of this section’’; and provisions of section 12(c), at the end of 6 ‘‘(b) If the Commissioner refuses to renew (B) in paragraphs (3) and (4) by striking years following the date of publication under the registration, the Commissioner shall no- ‘‘this subsection (d)’’ and inserting ‘‘this sub- such section. tify the registrant of the Commissioner’s re- section’’; and ‘‘(3) For all registrations, at the end of fusal and the reasons therefor. (2) in subsection (e), by striking the second each successive 10-year period following the ‘‘(c) If the registrant is not domiciled in sentence and inserting the following: ‘‘Such date of registration. the United States, the registrant shall des- applicant shall submit, within such time pe- ‘‘(b) During the 1-year period immediately ignate by a written document filed in the riod as may be prescribed by the Commis- preceding the end of the applicable time pe- Patent and Trademark Office the name and sioner, a certification or a certified copy of riod set forth in subsection (a), the owner of address of some person resident in the the registration in the country of origin of the registration shall pay the prescribed fee United States on whom may be served no- the applicant.’’. and file in the Patent and Trademark Of- tices or process in proceedings affecting the fice— mark. Such notices or process may be served SEC. 9. TRANSITION PROVISIONS. ‘‘(1) an affidavit setting forth those goods upon the person so designated by leaving (a) REGISTRATIONS IN 20-YEAR TERM.—The or services recited in the registration on or with that person or mailing to that person a provisions of section 8 of the Trademark Act in connection with which the mark is in use copy thereof at the address specified in the of 1946, as amended by section 5 of this Act, in commerce and such number of specimens last designation so filed. If the person so des- shall apply to a registration for trademark or facsimiles showing current use of the ignated cannot be found at the address given issued or renewed for a 20-year term, if the mark as may be required by the Commis- in the last designation, such notice or proc- expiration date of the registration is on or sioner; or ess may be served upon the Commissioner.’’. after the effective date of this Act. (b) APPLICATIONS FOR REGISTRATION.—This ‘‘(2) an affidavit setting forth those goods SEC. 7. RECORDING ASSIGNMENT OF MARK. Act and the amendments made by this Act or services recited in the registration on or Section 10 of the Trademark Act of 1946 (15 shall apply to any application for registra- in connection with which the mark is not in U.S.C. 1060) is amended to read as follows: use in commerce and showing that any such tion of a trademark pending on, or filed on ‘‘ASSIGNMENT nonuse is due to special circumstances which or after, the effective date of this Act. excuse such nonuse and is not due to any in- ‘‘SEC. 10. (a) A registered mark or a mark (c) AFFIDAVITS.—The provisions of section tention to abandon the mark. for which an application to register has been 8 of the Trademark Act of 1946, as amended ‘‘(c)(1) The owner of the registration may filed shall be assignable with the good will of by section 5 of this Act, shall apply to the make the submissions required under this the business in which the mark is used, or filing of an affidavit if the sixth or tenth an- section within a grace period of 6 months with that part of the good will of the busi- niversary of the registration, or the sixth an- after the end of the applicable time period ness connected with the use of and symbol- niversary of publication of the registration set forth in subsection (a). Such submission ized by the mark. Notwithstanding the pre- under section 12(c) of the Trademark Act of is required to be accompanied by a surcharge ceding sentence, no application to register a 1946, for which the affidavit is filed is on or prescribed by the Commissioner. mark under section 1(b) shall be assignable after the effective date of this Act. ‘‘(2) If any submission filed under this sec- prior to the filing of an amendment under (d) RENEWAL APPLICATIONS.—The amend- tion is deficient, the deficiency may be cor- section 1(c) to bring the application into con- ment made by section 6 shall apply to the fil- rected after the statutory time period and formity with section 1(a) or the filing of the ing of an application for renewal of a reg- within the time prescribed after notification verified statement of use under section 1(d), istration if the expiration date of the reg- of the deficiency. Such submission is re- except for an assignment to a successor to istration for which the renewal application quired to be accompanied by a surcharge pre- the business of the applicant, or portion is filed is on or after the effective date of scribed by the Commissioner. thereof, to which the mark pertains, if that this Act.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00069 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6576 CONGRESSIONAL RECORD — SENATE June 18, 1998 SEC. 10. EFFECTIVE DATE. Under the terms of the Treaty, the United The Verified Statement This Act and the amendments made by States may continue to require the afore- Rather than requiring in the verified state- this Act shall take effect— mentioned declarations and may require ment a repetition of statements in the writ- (1) on the date that is 1 year after the date verification by the applicant of such declara- ten application identifying goods and, in a of the enactment of this Act, or tions, but may not require verification by section 1(a) application, dates of use, the (2) upon the entry into force of the Trade- the applicant of the written application. proposed revision requires a statement that, mark Law Treaty with respect to the United Thus, it becomes necessary to distinguish to the best of the applicant’s knowledge and States, the declarations of use and intention to use belief, the facts recited in the application whichever occurs first. from the other elements of the application. are accurate. In addition, the proposed revi- Additionally, the existing subsections 1(a) sion specifies the averments that the appli- SECTION-BY-SECTION ANALYSIS and 1(b) of the Trademark Act of 1946 (15 cant must make in the verified statement U.S.C. 1051(a)) and 1051(b)) require, respec- SECTION 1. SHORT TITLE concerning applicant’s use, or bona fide in- tively, a statement of the mode or manner in tention to use, the mark in commerce, own- This section provides a short title: ‘‘Trade- which the mark is used or intended to be mark Law Treaty Implementation Act.’’ ership of the mark and lack of knowledge of used, in connection with the goods specified conflicting third party rights. These aver- SECTION 2. REFERENCE TO THE TRADEMARK ACT in the application. Thus, it becomes nec- ments do not differ from those in the exist- OF 1946 essary to delete the requirement for this ing provisions. This section provides that the Act entitle statement from the list of required elements The proposed revision requires verification ‘‘An Act to provide for the registration and in the written application. of the statement by the applicant and omits protection of trademarks used in commerce, Distinction Between Written Application and the specification of the appropriate person to to carry out the provision of certain inter- Verified Declarations verify the declaration for a juristic appli- national conventions, and for other pur- Consistent with the Treaty obligations, cant, i.e., the proposed revision omits the poses’’, approved July 5, 1946, as amended (15 the proposed revision will distinguish be- phrase requiring verification by ‘‘a member U.S.C 1051 et. seq.) shall be referred to as the tween the written application and the dec- of the firm or an officer of the corporation or ‘‘Trademark Act of 1946’’. larations of use and intention to use for pur- association applying.’’ While this revision is SECTION 3. APPLICATION FOR REGISTRATION; poses of the signature requirement. The pro- not required by the Treaty, it will greatly VERIFICATION posed revision will continue to require a simplify the filing of an application without Summary of Section 3 written application, in such form as may be compromising the integrity of the informa- This section amends subsections 1(a) (Ap- prescribed by the Commissioner, and a dec- tion contained therein. This proposed revi- plication for Use) and 1(b) (Application for laration verified by the applicant, as set sion will give the Patent and Trademark Of- Intent to Use) of the Trademark Act of 1946 forth in the two subsections. fice (‘‘PTO’’) the discretion to determine the (15 U.S.C. 1051(a) and 1051(b)) to create a By separating the written application from appropriate person with authority to sign clear distinction between the written appli- the verified declarations, there will no the declaration for a juristic applicant. cation, the form of which may be prescribed longer be a requirement in the law for Under the existing provision, the PTO has by the Commissioner, and the declaration verification by the applicant of the written been limited to accepting, for example, only pertaining to applicant’s use or intention to application. In the proposed revision, as in the signature of an officer of a corporation use the mark, the substance of which is de- the existing subsections, the Commissioner on an application when another corporate tailed in the respective subsections; to re- will retain authority to prescribe the form of manager’s signature would be appropriate quire that the declaration pertaining to use the application. Thus, the Commissioner will because the corporate manager has author- or intention to use be verified by the appli- have discretion to permit the written appli- ity to bind the corporation legally or be- cant; to authorize the Commissioner to pro- cation to be filed with no signature or with cause the corporate manager has specific mulgate rules prescribing both the elements the signature of applicant’s representative. knowledge of the facts asserted in the appli- of the application, in addition to those speci- Also, the Commissioner may permit the fil- cation. The unnecessary rigidity of the exist- fied in the proposed provision, and those ele- ing of a single document, which combines ing provision has worked a hardship on ap- ments necessary for a filing date; to omit the the elements of the written application and plicants who have been denied filing dates requirement in the written application for a the declaration, and which is signed by the because the person verifying their applica- statement of the ‘‘mode or manner’’ in which applicant, as under the existing subsections. tion has not met the strict requirement of the mark is used or intended to be used in Elements of the Written Application being an officer of the corporate applicant. connection with the specified goods or serv- Additionally, the Patent and Trademark Of- The proposed revision specifies a non-ex- ices; and to clarify and modernize the lan- fice has had difficulty applying the officer clusive list of elements and grants authority guage of the subsections, as appropriate. In requirement to foreign juristic entities to the Commissioner to prescribe, by regula- addition, an amendment is made to sub- whose managers are not clearly officers tion and consistent with law and inter- section 1(d) (15 U.S.C. 1051(d)) to clarify that under the United States’ corporate stand- national obligations, additional elements an application may be revived after a notice ards. which the Commissioner considers to be nec- of allowance is issued. essary for an application and those elements Revival of Applications After the Notice of Al- Applications under the Trademark Law Treaty necessary for receipt of a filing date. This lowance Has Issued and Existing U.S. Law proposal improves the ability of the law per- Existing subsection 1(d) (15 U.S.C. 1051(d)) With the goal of simplifying and harmo- taining to application requirements to ac- is amended to clarify that applications nizing the registration process worldwide, commodate advancing technology and fur- which are awaiting the filing of a statement Article 3(1) of the Trademark Law Treaty ther international procedural harmoni- of use or a request for extension of time to (‘‘Treaty’’ or ‘‘TLT’’) establishes a com- zation. The proposed revision specifically re- file a statement of use may be revived if it prehensive list of indications or elements quires the application to include applicant’s can be shown to the satisfaction of the Com- that may be required in an application to domicile and citizenship, the dates of appli- missioner that the failure to file was unin- register a trademark or service mark cant’s first use of the mark and first use of tentional. Although this change is not nec- (‘‘mark’’). This list permits a Contracting the mark in commerce in an application essary for the implementation of the TLT, Party to the Treaty (‘‘Party’’) to require, under subsection 1(a), the goods in connec- the change clarifies that the Commissioner inter alia, a signature and declarations of tion with which the mark is used or intended has the authority to revive such an applica- use and intention to use a mark. The list to be used, and a drawing of the mark. Con- tion so long as reviving the application does does not permit a Party to require, inter sistent with the Treaty, the proposed revi- not extend the statutory period for filing the alia, a statement of the mode or manner in sion omits a requirement for specification of statement of use. The standard for revival is which the mark is used, or intended to be the mode or manner in which the mark is that the applicant’s failure to file was unin- used, in connection with the goods or serv- used, or intended to be used, in connection tentional. This is the same standard that is ices specified in the application. Article 3(4) with the goods specified in the application. being proposed in subsection 12(b) of the of the Treaty obligates a Party that requires Additionally, the proposed revision reorga- Trademark Act of 1946 (15 U.S.C. 1062(b)) for a signature to permit either the applicant or nizes subsections 1(a) and (b) 1946 (15 U.S.C. reviving applications during the examina- his representative to sign the application, 1051(a)) and 1051(b)) to clarify the provisions tion process. except that a Party may require declarations and to modernize the language. To parallel SECTION 4. REVIVAL OF AN ABANDONED of use and intention to use a mark to be the language of the Treaty, the phrase ‘‘may APPLICATION signed by the applicant. apply to register’’ is replaced by ‘‘may re- The existing subsections 1(a) and 1(b) of quest registration’’. Reference to ‘‘firm, cor- Summary of Section 4 the Trademark Act of 1946 (15 U.S.C. 1051(a)) poration or association’’ is replaced by a ref- This section amends subsection 12(b) of the and 1051(b)) require, respectively, declara- erence to ‘‘juristic person’’ or ‘‘person.’’ Sec- Trademark Act of 1946 (15 U.S.C. 1062(b)) by tions pertaining to use and intention to use tion 45 defines ‘‘person’’ as including ‘‘juris- changing the present standard for reviving a mark and require verification by the appli- tic persons.’’ These terms are considered an abandoned application upon a showing of cant of the written application, which in- preferable in view of the numerous types of ‘‘unavoidable’’ delay to the standard of ‘‘un- cludes the aforementioned declarations. juristic persons in existence today. intentional’’ delay.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00070 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6577 Revival of Applications Under the Historical The legislative history of Public Law 97– cific requirements pertaining to the filing ‘‘Unavoidable Delay’’ Standard 247 pertains primarily to fees. However, the required by each existing section differ un- Section 12(b) of the Trademark Act of 1946 intent of Congress appears to be to give the necessarily. These differing requirements (15 U.S.C. 1062(b)) provides that an applica- Commissioner the power to revive abandoned have caused confusion to some registrants, tion is abandoned if the applicant does not applications using a much less strict stand- particularly those proceeding pro se, result- timely respond to an Office Action, ‘‘unless ard than had been previously applied. In re ing in the cancellation of registrations of it can be shown to the satisfaction of the Rutan, supra. Neither the legislative history marks still in use in commerce due to non- Commissioner that the delay in responding of the Lanham Act nor the relevant case law compliance with the technical requirements was unavoidable, whereupon such time may limit the Commissioner’s authority to estab- of one or the other of these maintenance sec- be extended.’’ lish procedures for revival of unintentionally tions. Furthermore, since the proposed revi- Prior to the implementation of the Trade- abandoned trademark applications. sion to section 8 adds an affidavit require- mark Act of 1946, there was no statutory pro- With the goal of the Trademark Law Trea- ment at ten-year internals, harmonizing the vision for abandonment and revival of aban- ty to simplify the registration process world- filing procedures with those for renewal en- doned trademark applications. There was a wide, this proposed amendment parallels the ables the registrant to make both filings at regulatory provision that an abandoned ap- unintentional standard for revival available the same time, thus, simplifying registration plication could be revived if it were ‘‘shown to patent applicants and relaxes the stand- maintenance. to the satisfaction of the Commissioner that ard for reviving trademark applications. Summary of Section 5 the delay in the prosecution of the same was This will enable the majority of applicants, unavoidable,’’ However, the legislative his- who file a timely petition to revive an appli- This section amends section 8 of the Trade- tory of the Lanham Act is silent as to the cation that was abandoned due to an unin- mark Act of 1946 (15 U.S.C. 1058). The main meaning or intention behind the ‘‘unavoid- tentional delay, to proceed to registration purpose of the revision of this section is to able delay’’ standard for revival of aban- from the point that the application became set out, in one section, all of the require- doned applications. abandoned, rather than requiring these ap- ments for filing any of the affidavits of use The language of section 12(b) of the Trade- plicants to refile their applications. needed to maintain a registration and to en- mark Act of 1946 is virtually identical to the sure that the requirements of each use affi- SECTION 5. DURATION OF REGISTRATION; CAN- analogous provision of the patent law, 35 davit are identical. This section includes the CELLATION; AFFIDAVIT OF CONTINUED USE; U.S.C. 133, which provides for abandonment affidavit of use filed between the fifth and NOTICE OF COMMISSIONER’S ACTION of patent applications and revival upon a the sixth year after registration, between showing of unavoidable delay. The require- Note on Sections 5 and 6: Registration Mainte- the fifth and the sixth year after publication ments for reviving an ‘‘unavoidably’’ aban- nance under the Trademark Law Treaty under subsection 12(c), and in the year pre- doned patent applications, set forth in 37 and Existing U.S. Law ceding every ten year anniversary of the reg- C.F.R. § 1.137(a), are identical to the require- Sections 5 and 6 of this legislation amend istration. ments for reviving an abandoned trademark existing sections 8 and 9 of the Trademark This purpose is accomplished by adding an application under 37 C.F.R. § 2.66. Act of 1946, which are the two provisions of obligation to file an affidavit of use or non- Courts have held that the Commissioner the Act containing requirements for reg- use, consistent with the requirements set has broad discretion in determining whether istration maintenance. These two sections forth in the subsections, in the year pre- a delay is unavoidable. Under current law, are analogous in their requirements for the ceding every tenth anniversary of the reg- the Commissioner’s decision is subject to ju- filing of a verified document attesting to the istration, to provide for correction of defi- dicial review, but will be reversed only if it use of the mark in commerce and specimens ciencies in submissions under these sub- is arbitrary, capricious, or an abuse of dis- or facsimiles, or a showing of excusable non- sections; to provide for a grace period for cretion. Morganroth v. Quigg, 885 F.2d 843, 21 use. Section 8 of the Trademark Act of 1946 making submissions required by these sub- USPQ2d 1125 (Fed. Cir. 1989); Smith v. requires the aforementioned filing during sections; to modernize the language and to Mossinghoff, 671 F.2d 533, 213 USPQ 977 (D.C. the year preceding the sixth year following simplify and clarify the existing procedural Cir. 1982); Douglas v. Manbeck, 21 USPQ2d 1697 registration to avoid cancellation of the reg- requirements for filing affidavits under these (E.D. Pa. 1991). istration. Section 9 of the Trademark Act of subsections; and to harmonize certain proce- Revival of Applications Under the New ‘‘Unin- 1946 requires the aforementioned filing as dural requirements for such affidavits with tentional Delay’’ Standard part of the registration renewal application. the requirements for a registration renewal Prior to 1982, patent applications, like With the goal of simplifying and harmo- application contained in section 9 of the trademark applications, could be revived nizing the process for renewal of a trade- Trademark Act of 1946. only upon a showing of unavoidable delay. mark or service mark registration world- Subsection 8(a) states the duration of each Under Public Law 97–247, § 3, 96 Stat. 317 wide, Article 13(1) of the Treaty establishes a registration and provides that the registra- (1982) codified at 35 U.S.C. 41(a)(7), it became comprehensive list of indications that may tion shall be canceled by the Commissioner possible to revive an unintentionally aban- be required in a request to renewal a trade- if timely affidavits of use are not filed. Para- doned patent application. Section 41(a)(7) es- mark or service mark registration. This list graph (1) of subsection 8(a) states that an af- tablishes two different fees for filing peti- does not include a declaration and/or evi- fidavit of use must be filed by the end of six tions with two different standards to revive dence concerning use of the mark. Article years following registration. Paragraph (2) of abandoned applications. There is one for a 13(4)(iii) expressly prohibits a requirement subsection 8(a) states that an affidavit of use petition to revive an unavoidably abandoned for the furnishing of a declaration and/or evi- must be filed by the end of six years fol- application and another fee for a petition to dence concerning use of the mark as part of lowing the date of publication under sub- revive an unintentionally abandoned appli- a request for renewal. However, the Treaty section 12(c) of the Trademark Act of 1946 (15 cation. The procedure for petitioning to re- contains no prohibition against a require- U.S.C. 1062(c)). Paragraph (3) of subsection vive an unintentionally abandoned applica- ment for the periodic filing of a declaration 8(a) states that an affidavit of use must be tion is set forth in 37 C.F.R. § 1.137(b), effec- and/or evidence of use in connection with a filed by the end of each successive ten-year tive October 1, 1982. 58 Fed. Reg. 44277 (Aug. registration, as long as such requirement is period following the date of registration. 20, 1993); 48 Fed. Reg. 2696 (Jan. 20, 1983). The not part of the requirements for renewal. In Subsection 8(b) sets out the length of the rule requires, among other things, that the fact, Article 13(1)(b) of the Treaty, con- time period during which the statutory filing applicant submit a verified statement that cerning renewal fees, recognizes that fees can be made and the contents needed in each the delay was unintentional, and provides may be required in connection with the fil- filing. In every case, there is a one year stat- that the ‘‘Commissioner may require addi- ing of a declaration and/or evidence of use of utory period for filing the affidavit. tional information where there is a question a registered mark. that the delay was unintentional.’’ Subsection 8(c) permits the filing of the Under the terms of the Treaty, the United use affidavit, after the statutory period for The legislative history of Public Law 97– States may continue to require the periodic 247 states: Section 41(a)7 establishes two dif- filing has ended upon payment of an addi- filing of a verified document attesting to the tional ‘‘grace period’’ surcharge. The section ferent fees for filing petitions with different use of the mark in commerce and specimens standards to revive abandoned applica- also provides that a correction of a defi- or facsimiles, or a showing of excusable non- ciency, after the statutory period, may be tions. . . Since the section provides for two use. However, the United States may not alternative fees with different standards, the made upon payment of an additional ‘‘defi- make such a requirement in connection with section would permit the applicant seeking ciency’’ surcharge. registration renewal. revival . . . to choose one or the other of the Subsection 8(c)(1) sets out the time period fees and standards under such regulations as Harmonization of Trademark Act Sections 8 and for filing the use affidavit where the statu- the Commissioner may establish. . . This 9 Requirements tory period has expired, the so-called section would permit the Commissioner to have The proposed revision harmonizes certain ‘‘grace’’ period, and gives the Commissioner more discretion than present law to revive aban- procedural requirements for the affidavits authority to prescribe a surcharge for affida- doned applications...in appropriate cir- required under this section with the require- vits filed during the grace period. cumstances (emphasis added). H.R. Rep. No. ments for a registration renewal application Subsection 8(c)(2) allows for correction of 542, 97th Cong. 2d Sess. 6–7 (1982), quoted in contained in section 9 of the Trademark Act deficiencies in the filings submitted under In re Rutan, 231 USPQ 864, 865 (Comm’r Pats. of 1946. While both sections contain require- this section upon payment of the deficiency 1986). ments for registration maintenance, the spe- surcharge.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00071 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6578 CONGRESSIONAL RECORD — SENATE June 18, 1998 Subsection 8(d) sets out the requirement posed in the revision to section 9(a) of the ments imposed on applicants by subsection that the Commissioner attach to each cer- Trademark Act of 1946, concerning renewal. 1(e) of the Trademark Act of 1946. This is tificate of registration, and notice of publi- Only an owner who did not make any filing necessary because the appointment required cation under section 12(c), a special notice of prior to the end of the statutory period may in subsection 1(e) of the Trademark Act of the requirement for the affidavits required make the required filing under the grace pe- 1946 pertains only during the pendency of the by this section. This section preserves an ob- riod provisions. The owner filing an affidavit application. ligation of the Commissioner that is set out prior to the end of the statutory period, but Registrant or Owner: Who must file? in the last sentence of existing section 8(a) correcting a deficiency either during or after Throughout the revised section 8, the term and in section 12(c). the grace period, will be subject to the ‘‘defi- ‘‘registrant’’ has been replaced by the term Subsection 8(e) preserves the obligation of ciency surcharge’’ only. On the other hand, ‘‘owner.’’ The practice at the Patent and the Commissioner, in existing subsection the owner filing an affidavit during the six- Trademark Office has been to require that 8(c), to notify any owner who files an affi- month grace period, will be subject to the the current owner of the registration file all davit under section 8 of his acceptance or re- ‘‘grace period surcharge’’ (for the ability to the post-registration affidavits needed to fusal of the affidavit. The subsection has file the affidavit during the grace period) maintain a registration. The current owner been revised to reflect the revisions in sub- and, if notified of deficiencies, the ‘‘defi- of the registration must aver to actual sections 8 (a) and (b) by stating that it ap- ciency surcharge’’ (for the ability to correct knowledge of the use of the mark in the sub- plies to any of the above prescribed affida- a deficiency after the end of the statutory ject registration. However, the definition of vits. period.) The proposed revision does not de- ‘‘registrant’’ in section 45 of the Act states Subsection 8(f) has been added to require fine deficiency or place any limits on the that the ‘‘terms ‘applicant’ and ‘registrant’ the appointment by owners, not domiciled in type of deficiency or omission that can be embrace the legal representatives, prede- the United States, of a domestic representa- cured after expiration of the statutory filing cessors, successors and assigns of each appli- tive for service of notices or process in pro- period. The Commissioner has broad discre- cant and registrant.’’ Therefore, use of the ceedings affecting the mark. tion to provide procedures and fees for cur- term ‘‘registrant’’ in section 8 of the Act Periodic Filing of the Affidavit ing deficiencies or omissions. would imply that any legal representative, The PTO continues to believe in the value Simplification and Clarification of Section 8 of predecessor, successor or assign of the reg- of requiring a periodic filing verifying the the Trademark Act istrant could successfully file the affidavits continued use of the mark as a way to main- The proposed revision conforms the re- required by sections 8 and 9. To correct this tain the integrity of the trademark register quirements of subsections 8(a) and (b) of the situation, and to keep with the general prin- by periodically removing from the register Trademark Act of 1946 to current practice. ciple, as set out in section 1, that the owner marks no longer in use in commerce. There- First, the language in the existing sub- is the proper person to prosecute an applica- fore, consistent with the Treaty obligations, sections ‘‘attaching to the affidavit a speci- tion, section 8 has been amended to state the proposed revision adds to section 8 of the men or facsimile showing current use of the that the owner must file the affidavits re- Trademark Act of 1946 an obligation to file mark’’ is revised to clarify that the speci- quired by the section. an affidavit of use or excusable non-use, con- mens or fascimiles are to be filed along with SECTION 6. RENEWAL OF REGISTRATION sistent with the requirements set forth in the affidavit but are not considered part of Summary of Section 6 the subsection, in the year preceding the the affidavit for purposes of complying with This section amends subsection 9(a) of the tenth anniversary of the registration and the requirement to set forth in the affidavit Trademark Act of 1946 to cross-reference the every ten years thereafter. This revision is the goods or services on or in connection obligatory registration maintenance require- proposed in view of the proposed deletion of with which the mark is in use in commerce. ments of section 8 of the Trademark Act of the requirement in connection with registra- The sentence comprising subsection 8(a) of 1946; to delete the obligation to submit as tion renewal, in section 9 of the Trademark the Trademark Act of 1946 has been revised part of a renewal application verified state- Act of 1946, for a verified statement attesting to clarify and distinguish the requirements ments regarding the use of the mark in com- to the use of the mark in commerce, accom- for the fee, the affidavit, the specimens and merce and attaching to the application a panied by specimens or facsimiles, or a show- a showing of non-use. The proposed revision specimen or facsimile showing current use of ing of excusable non-use. further permits the Commissioner to specify the mark; to extend the time for filing a re- Grace Period and Correction of Deficiencies the number of specimens or facsimiles re- newal application to up to one year before Rules 8 of the Regulations under the quired so that he may require a specimen or the expiration of the period for which the Trademark Law Treaty provides that re- facsimile for each class of goods or services registration was issued or renewed and, for newal request must be accepted for at least identified in the registration. The language an additional fee, up to six months after the a six-month period, upon payment of a sur- ‘‘setting forth those goods or services recited end of the expiring period of the registration; charge, after the date the renewal is due. in the registration on or in connection with to grant authority to the Commissioner to The existing provisions of section 9 of the which the mark is not in use in commerce’’ prescribe the form of the written application Trademark Act of 1946 permit the renewal is proposed to be added to parallel the affi- for renewal of the registration; and, to per- application to be filed within a three-month davit requirements pertaining to use of the mit the correction of deficiencies after the period, upon payment of a surcharge, after mark and to clarify that the owner must statutory filing period. the date the renewal is due. The existing pro- specify the goods or services to which a This section amends subsection 9(c) to visions of section 8 of the Trademark Act of showing of non-use pertains. specify the requirements for the appoint- 1946 contain no grace period for the filing of Existing Subsection 8(b) ment by registrants not domiciled in the United States of a domestic representative the required affidavit after its due date. As The requirements set out in former sub- described below, the proposed revision incor- for service of notices or process in pro- section 8(b) of the Trademark Act of 1946, ceedings affecting the mark. porates the six-month grace period required pertaining to marks published pursuant to Use Requirement for Registration Renewal by the treaty for filing renewal requests and section 12(c) of the Trademark Act of 1946, harmonizes the requirements for filings have been set out in subsections 8(a)(2), 8(b) Separate from the obligation to renew a under sections 8 and 9 of the Trademark Act and (8)(c) and conform to the proposed revi- trademark registration at ten-year intervals, of 1946. Harmonization of the filing require- sions as to the time of filing the affidavit, the U.S. Patent and Trademark Office con- ments of sections 8 and 9 will require the the grace period and the correction of defi- tinues to believe in the value of requiring a amendment of both sections to provide this ciencies. periodic filing verifying the continued use of the mark as a way to maintain the integrity six-month grace period for making the re- Existing Subsection 8(c) quired filing. This amendment is a liberaliza- of the trademark register by periodically re- Subsection 8(c) of the Trademark Act of tion of sections 8 and 9 of the Trademark Act moving from the register marks no longer in 1946 is now set out in subsection 8(e) and has of 1946, which is desirable to avoid, to the ex- use in commerce. Therefore, consistent with been amended to reflect the revisions in sub- tent possible, the removal from the register the Treaty obligations, the proposed revision sections 8 (a) and (b) to add requirements for for mere technical reasons of marks that are deletes from subsection 9(a) of the Trade- the periodic filing of additional affidavits by still in use in commerce. mark Act of 1946 the requirement that the The proposed revision to section 8 of the changing reference from ‘‘. . . any owner renewal application include a verified state- Trademark Act of 1946 will amend the exist- who files either of the above-prescribed affi- ment attesting to the use of the mark in ing law by providing a six-month grace pe- davits . . .’’ to ‘‘. . . any owner who files one commerce, accompanied by a specimen or riod for filing the required affidavit, condi- of the above-prescribed affidavits . . .’’. facsimile evidencing current use of the tioned upon payment of a ‘‘grace period’’ Subsection 8(f)—Appointment of Domestic Rep- mark, or a showing of excusable non-use. surcharge. Additionally, the proposed revi- resentative These requirements are proposed to be added sion permits the correction of a deficiency Section 5 of this Act proposes to add a sec- to subsection 8(a) of the Trademark Act of after the sixth anniversary of registration. tion 8(f) to the Trademark Act of 1946 to pro- 1946 in the form of an obligation to file an af- Such correction must be accompanied by a vide for the appointment of a domestic rep- fidavit of use or excusable non-use, con- ‘‘deficiency surcharge’’ and be filed no later resentative for service of notices or process sistent with the requirements set forth in than the end of a prescribed period after no- in proceedings affecting the mark by owners the subsection, on the tenth anniversary of tification of the deficiency. This proposed re- not domiciled in the United States. This new the registration and every ten years there- vision is consistent with the practice pro- subsection is consistent with similar require- after.

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00072 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY June 18, 1998 CONGRESSIONAL RECORD — SENATE S6579 Also, consistent with the treaty obliga- order to record an assignment of a trade- a registration if the expiration date of the tions, the requirement that the renewal ap- mark registration. registration for which the renewal applica- plication be verified is proposed to be deleted Additionally, pertaining to the proscrip- tion is filed is on or after the effective date and the Commissioner is granted authority tion against the assignment of a mark in an of this Act. to prescribe the form of the written renewal application filed under section 1(b) of the application, consistent with law and inter- Trademark Act of 1946 (intent-to-use), the SECTION 10. EFFECTIVE DATE national treaties or agreements to which the proposed amendment adds reference to sec- This section provides that this Act shall United States is a party. tion 1(c) of the Trademark Act of 1946 so that take effect one year after enactment of the the filing of an amendment to allege use pur- Grace Period and Harmonization Act or upon entry into force of the Treaty in suant to section 1(c) removes the restriction Rule 8 of the Regulations under the Trade- respect to the United States, whichever oc- against assigning the mark except to the mark Law Treaty provides that a renewal re- curs first. Since the provisions of the Act successor to the business of the applicant, or quest must be accepted for at least a six- will modernize and simplify procedures per- month period, upon payment of a surcharge, portion thereof, to which the mark pertains, if that business is ongoing and existing. taining to trademark application filing and after the date the renewal is due. The exist- registration maintenance, this section pro- ing provisions of section 9 of the Trademark Presently, prior to registration of an appli- cation filed pursuant to section 1(b) of the vides that, if the U.S. has not acceded to the Act of 1946 permit the renewal application to treaty and become subject to the obligations be filed within a three-month period, upon Trademark Act of 1946 (15 U.S.C. 1051(b)) thereunder within a year after enactment, payment of a surcharge, after the date the based upon a bona fide intention to use a the Act will become effective so that its ben- renewal is due. The revision proposes to mark in commerce on the identified goods or efits can be realized by trademark owners. change the three-month grace period for re- services, an applicant must file either a questing registration renewal to the six- verified statement of use under section 1(d) Since the United States is not one of the month grace period required by the treaty of the Trademark Act of 1946 (15 U.S.C. first five States to deposit its instrument of and harmonizes the requirements for filings 1051(d)) or an amendment to allege use under ratification or accession, Article 20 of the under sections 8 and 9 of the Trademark Act section 1(c) of the Trademark Act of 1946 (15 Treaty provides that the Treaty shall enter of 1946. Harmonization of the filing require- U.S.C. 1051(c)). The substance of the two fil- into force three months after the date on ments of sections 8 and 9 will require the ings is essentially the same. The difference which the instrument of ratification or ac- amendment of both sections to provide this between the two filings is the point at which cession is deposited. six-month grace period for making the re- the filing is made. Presently, section 10 of quired filing. This amendment is a liberaliza- the Trademark Act of 1946 (15 U.S.C. 1060) Mr. LEAHY. Mr. President, I am tion of sections 8 and 9 of the Trademark Act limits the assignability of an application to pleased today to introduce the Trade- of 1946, which is desirable to avoid, to the ex- register a mark under section 1(b) of the mark Law Treaty Implementation and tent possible, the removal from the register Trademark Act of 1946 (15 U.S.C. 1051(b)) Registration Simplification Act (TLT for mere technical reasons of marks that are until such time as applicant files a verified Act). The TLT Act, which will imple- still in use in commerce. In particular, con- statement of use under section 1(d) of the ment the Trademark Law Treaty of Trademark Act of 1946 (15 U.S.C. 1051(d)). sistent with the filing requirements in sec- 1994, is an important step in our con- tion 8 of the Trademark Act of 1946, the pe- Since the effect of the filing of an amend- riod for filing a renewal request is expressly ment to allege use under section 1(c) of the tinuing endeavor to harmonize trade- defined as the period one year prior to expi- Trademark Act of 1946 (15 U.S.C. 1051(c)) is mark law around the world so that ration of the period for which the registra- analogous, there is no reason in law or policy American businesses—particularly tion was issued or renewed, or within a grace for omitting to include reference to section small American businesses—seeking to period of six months after the end of the ex- 1(c) in section 10. expand internationally will face sim- piring period. SECTION 8. INTERNATIONAL CONVENTIONS; COPY plified and straightforward trademark Subsection 9(c)—Appointment of Domestic Rep- OF FOREIGN REGISTRATION registration procedures in foreign resentatives This section amends section 44(e) of the countries. Subsection 6(b) of this Act amends sub- Trademark Act of 1946 (15 U.S.C. 1126(e)) to section 9(c) to the Trademark Act of 1946 to change the requirement that an application This bill is one of a series I have sup- provide for the appointment of a domestic ‘‘be accompanied by a certificate or certified ported which protect American trade- representative for service of notices or proc- copy’’ of the foreign registration, which has mark holders in a world of rapidly ess in proceedings affecting the mark by been interpreted to be a filing date require- changing technology and international owners not domiciled in the United States, ment, so that such copy may be submitted to rather than referencing the requirements in the PTO prior to registration, within such competition. Earlier this year I intro- subsection 1(e) of the Trademark Act of 1946. time limits as may be prescribed by the duced S. 1727, legislation authorizing This is preferable because the appointment Commissioner. Such a requirement as a pre- the National Research Council of the required in subsection 1(e) of the Trademark requisite to receiving a filing date is prohib- National Academy of Sciences to con- Act of 1946 pertains only during the pend- ited pursuant to Article 5 of the Trademark duct a comprehensive study of the ef- ency of the application. Law Treaty. fects of adding new generic Top Level SECTION 7. RECORDING ASSIGNMENT OF MARK SECTION 9. TRANSITION PROVISIONS Domains on trademark and other intel- This section amends section 10 of the This section clarifies when and how the lectual property rights owners. More- Trademark Act of 1946 (15 U.S.C. 1060) to new provisions set out for the maintenance over, I supported the Federal Trade- clarify that the PTO will record a change in of registrations will apply to existing and fu- ownership without requiring a copy of the ture applications and registrations. mark Dilution Act of 1995, which was underlying document; and to remove the pro- Section 9(a) provides that registrations enacted into law last Congress. This scription against the assignment of a mark issued or renewed with a 20 year term, i.e. legislation provides intellectual prop- in an application filed under section 1(b) of those registrations issued or renewed prior erty rights holders with the power to the Trademark Act of 1946 (15 U.S.C. 1051(b)) to the effective date of the Trademark Law enjoin another person’s commercial use (intent-to-use) upon the filing of an amend- Revision Act of 1988, will be subject to the of famous marks that would cause dilu- ment to allege use pursuant to section 1(c) of post-registration provisions of this Act on or the Trademark Act of 1946 (15 U.S.C. 1051(c)). after a date that is 1 year before the date on tion of the mark’s distinctive quality. The PTO has interpreted the present ref- which the twenty year term expires. This Together, these measures represent ef- erence to a ‘‘record of assignments’’ in sec- provision will allow those registrations to forts to refine American trademark law tion 10 to require the PTO to record a copy have the benefit of the one year statutory to ensure that it promotes American of the actual assignment document. Article filing period and the six-month grace period interests. 11(4) of Trademark Law Treaty prohibits the provided by the Act. requirement of a statement or proof of such Section 9(b) provides that the Act shall Today more than ever before, trade- transfer in order to record an assignment of apply to any application for the registration marks are among the most valuable as- a trademark registration. The proposed of a trademark pending on, or filed after, the sets of business. One of the major ob- amendment clarifies that, rather than main- effective date of the Act. stacles in securing international trade- taining a ‘‘record of assignments,’’ the PTO Section 9(c) provides that the filing of an mark protection is the difficulty and ‘‘shall maintain a record of the prescribed in- affidavit under Section 5 of the Act, which formation on assignments, in such form as amends Section 8(b) of the Trademark Act of cost involved in obtaining and main- may be prescribed by the Commissioner.’’ 1946, shall be required for any registration if taining a registration in each and The proposed amendment authorizes the the sixth or tenth anniversary of the reg- every country. Countries around the PTO to determine what information regard- istration, or the sixth anniversary of publi- world have a number of varying re- ing assignments it will record and maintain. cation under section 12(c) of the Trademark quirements for filing trademark appli- The proposed amendment will ensure that a Act of 1946, occurs on or after the effective cations, many of which are non-sub- transfer of goodwill remains a necessary ele- date of this Act. ment of a valid assignment of a trademark; Section 9(d) provides that the amendment stantive and very confusing. Because of however, the PTO will not require a state- made by section 6 of this Act shall apply to these difficulties, many U.S. busi- ment or proof of the transfer of goodwill in the filing of an application for the renewal of nesses, especially smaller businesses,

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00073 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY S6580 CONGRESSIONAL RECORD — SENATE June 18, 1998 are forced to concentrate their efforts of S. 981, a bill to provide for analysis Senate Joint Resolution 49, a joint res- on registering their trademarks only in of major rules. olution proposing a constitutional certain major countries while pirates S. 1825 amendment to protect human life. freely register their marks in other At the request of Mrs. MURRAY, the SENATE JOINT RESOLUTION 50 countries. name of the Senator from Wisconsin At the request of Mr. BOND, the The Trademark Law Treaty will (Mr. FEINGOLD) was added as a cospon- names of the Senator from Indiana eliminate many of the arduous reg- sor of S. 1825, a bill to amend title 10, (Mr. LUGAR), and the Senator from istration requirements of foreign coun- United States Code, to provide suffi- North Carolina (Mr. HELMS) were added tries by enacting a list of maximum re- cient funding to assure a minimum size as cosponsors of Senate Joint Resolu- quirements for trademark procedures. for honor guard details at funerals of tion 50, a joint resolution to disapprove Eliminating needless formalities will veterans of the Armed Forces, to estab- the rule submitted by the Health Care be an enormous step in the direction of lish the minimum size of such details, Financing Administration, Department a rational trademark system which and for other purposes. of Health and Human Services on June will benefit American business, espe- S. 1868 1, 1998, relating to surety bond require- cially smaller businesses, to expand At the request of Mr. NICKLES, the ments for home health agencies under into the international market more name of the Senator from Wyoming the medicare and medicaid programs. freely. Fortunately, the Trademark (Mr. THOMAS) was added as a cosponsor f Law Treaty has already been signed by of S. 1868, a bill to express United thirty-five countries, has already been States foreign policy with respect to, SENATE RESOLUTION 251—CON- ratified by ten countries including and to strengthen United States advo- GRATULATING THE DETROIT Japan and the United Kingdom, and cacy on behalf of, individuals per- RED WINGS ON WINNING THE has already been reported favorably to secuted for their faith worldwide; to 1998 NATIONAL HOCKEY LEAGUE the full Senate by the Senate Foreign authorize United States actions in re- STANLEY CUP CHAMPIONSHIP Affairs Committee. sponse to religious persecution world- Mr. LEVIN (for himself and Mr. As the United States is already in ac- wide; to establish an Ambassador at ABRAHAM) submitted the following res- cordance with most of the Trademark Large on International Religious Free- olution; which was considered and Law Treaty requirements, the TLT Act dom within the Department of State, a agreed to: would impose only minor changes to Commission on International Religious S. RES. 251 U.S. trademark law. The Patent and Persecution, and a Special Adviser on Trademark Office, the International Whereas on June 16, 1998, the Detroit Red International Religious Freedom with- Wings defeated the Washington Capitals, 4–1, Trademark Association and the Amer- in the National Security Council; and in Game 4 of the championship series; ican Intellectual Property Law Asso- for other purposes. Whereas this victory marks the second ciation have indicated their support for year in a row that the Red Wings won the S. 1924 the TLT Act. Stanley Cup in a four game sweep; I hope the Senate will consider and At the request of Mr. MACK, the name Whereas the Stanley Cup took its first trip pass this bill expeditiously. of the Senator from Michigan (Mr. around the rink in the lap of Vladimir ABRAHAM) was added as a cosponsor of Konstantinov, the Red Wing defenseman who f S. 1924, a bill to restore the standards was seriously injured in an accident less ADDITIONAL COSPONSORS used for determining whether technical than a week after Detroit won the Cup last year; S. 389 workers are not employees as in effect before the Tax Reform Act of 1986. Whereas Vladi and his wife Irina, whose At the request of Mr. ABRAHAM, the strength and courage are a source of pride name of the Senator from Oregon (Mr. S. 2092 and inspiration to our entire community are SMITH) was added as a cosponsor of S. At the request of Mrs. MURRAY, her an exemplary Red Wings family and Vladi’s 389, a bill to improve congressional de- name was added as a cosponsor of S. battle is an inspiration to all Americans; liberation on proposed Federal private 2092, a bill to promote full equality at Whereas Marian and Mike Ilitch, the own- sector mandates, and for other pur- the United Nations for Israel. ers of the Red Wings and community leaders in Detroit and Michigan, have brought the poses. S. 2110 Stanley Cup back to Detroit yet again; S. 472 At the request of Mr. BIDEN, the Whereas the Red Wings, as one of the origi- At the request of Mr. CRAIG, the name of the Senator from South Caro- nal six NHL teams, have always held a spe- name of the Senator from Utah (Mr. lina (Mr. HOLLINGS) was added as a co- cial place in the hearts of all Michiganders; HATCH) was added as a cosponsor of S. sponsor of S. 2110, a bill to authorize Whereas it was a profound source of pride 472, a bill to provide for referenda in the Federal programs to prevent vio- for Detroit when the Wings brought the Cup which the residents of Puerto Rico may lence against women, and for other back to Detroit in 1954 and 1955, the last time express democratically their pref- purposes. the Wings won consecutive NHL champion- ships; erences regarding the political status S. 2128 Whereas today, Detroit continues to pro- of the territory, and for other purposes. At the request of Mr. STEVENS, the vide Red Wings fans with hockey greatness S. 617 name of the Senator from Idaho (Mr. and Detroit, otherwise known as At the request of Mr. JOHNSON, the CRAIG) was added as a cosponsor of S. ‘‘Hockeytown, U.S.A.’’ is home to the most name of the Senator from Wisconsin 2128, a bill to clarify the authority of loyal fans in the world; Whereas the Red Wings are indebted to (Mr. FEINGOLD) was added as a cospon- the Director of the Federal Bureau of Head Coach Scotty Bowman, who has sor of S. 617, a bill to amend the Fed- Investigation regarding the collection brought the Red Wings to the playoffs 3 eral Meat Inspection Act to require of fees to process certain identification times in the last 4 years, and with this year’s that imported meat, and meat food records and name checks, and for other victory, has earned his eighth Stanley Cup products containing imported meat, purposes. victory, tying him with his mentor Toe bear a label identifying the country of S. 2162 Blake for the most championships in league origin. At the request of Mr. MACK, the name history; Whereas the Wings are also lucky to have S. 778 of the Senator from Arizona (Mr. KYL) the phenomenal leadership of Team Captain At the request of Mr. LUGAR, the was added as a cosponsor of S. 2162, a Steve Yzerman, who in his fifteenth season name of the Senator from New York bill to amend the Internal Revenue in the NHL, received the Conn Smythe Tro- (Mr. MOYNIHAN) was added as a cospon- Code of 1986 to more accurately codify phy, given to the most valuable player in the sor of S. 778, a bill to authorize a new the depreciable life of printed wiring NHL playoffs; trade and investment policy for sub-Sa- board and printed wiring assembly Whereas each one of the Red Wings will be haran Africa. equipment. remembered on the premier sports trophy, the Stanley Cup, including Slava Fetisov, S. 981 SENATE JOINT RESOLUTION 49 Bob Rouse, Nick Lidstrom, Igor Larionov, At the request of Mr. LEVIN, the At the request of Mr. SMITH, the Mathieu Dandenault, Slava Kozlov, Brendan name of the Senator from Nebraska name of the Senator from Utah (Mr. Shanahan, Dmitri Mironov, Doug Brown, (Mr. HAGEL) was added as a cosponsor HATCH) was added as a cosponsor of Kirk Maltby, Steve Yzerman, Martin

VerDate Mar 15 2010 03:17 Oct 31, 2013 Jkt 081600 PO 00000 Frm 00074 Fmt 4624 Sfmt 0634 E:\1998SENATE\S18JN8.REC S18JN8 mmaher on DSKCGSP4G1 with SOCIALSECURITY