[Congressional Record: September 17, 1998 (Senate)]
[Page S10535-S10536]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]
[DOCID:cr17se98-160]


                TRADEMARK LAW TREATY IMPLEMENTATION ACT

  Mr. SANTORUM. Mr. President, I ask unanimous consent that the Senate
proceed to the consideration of Calendar No. 474, S. 2193.
  The PRESIDING OFFICER. The clerk will report.
  The bill clerk read as follows:

       A bill (S. 2193) to implement the provisions of the
     Trademark Law Treaty.

  The PRESIDING OFFICER. Is there objection to the immediate
consideration of the bill?
  There being no objection, the Senate proceeded to consider the bill.

                           Amendment No. 3601

(Purpose: To make certain technical corrections to the Trademark Act of
                     1946, and for other purposes)

  Mr. SANTORUM. Mr. President, Senator Hatch has a substitute amendment
at the desk, and I ask for its consideration.
  The PRESIDING OFFICER. The clerk will report.
  The bill clerk read as follows:

       The Senator from Pennsylvania [Mr. Santorum], for Mr.
     Hatch, proposes an amendment numbered 3601.

  The amendment is as follows:
  [The bill was not available for printing. It will appear in a future
edition of the Record.]
  Mr. LEAHY. Mr. President, I am pleased that the Senate is considering
S. 2193, the Trademark Law Treaty Implementation Act (TLT Act), along
with some important technical amendments. I wish that Congress was
doing more work on intellectual property issues to maintain America's
preeminence in the realm of technology. Specifically I wish we were at
conference on the Digital Millennium Copyright Act, which would
implement the World Intellectual Property Organization treaties. We
should also be passing the Patent Bill, which would help America's
inventors of today and tomorrow. I am glad however, at the very least,
that we are at last considering the TLT Act.

              the trademark law treaty implementation act

  The TLT Act, which Senator Hatch and I introduced to implement the
Trademark Law Treaty of 1994, is an important step in our continuing
endeavor to harmonize trademark law around the world so that American
businesses--particularly small American businesses like so many of the
businesses in Vermont--seeking to expand internationally will face
simplified and straightforward trademark registration procedures in
foreign countries.
  Today more than ever before, trademarks are among the most valuable
assets of business. One of the major obstacles in securing
international trademark protection is the difficulty and cost involved
in obtaining and maintaining a registration in each and every country.
Countries around the world have a number of varying requirements for
filing trademark applications, many of which are nonsubstantive and
very confusing. Because of these difficulties, many U.S. businesses,
especially smaller businesses, are forced to concentrate their efforts
on registering their trademarks only in certain major countries while
pirates freely register their marks in other countries.
  The Trademark Law Treaty will eliminate many of the arduous
registration requirements of foreign countries by enacting a list of
maximum requirements for trademark procedures. Eliminating needless
formalities will be an enormous step in the direction of a rational
trademark system which will benefit American business, especially
smaller businesses, to expand into the international market more
freely. Fortunately, the Trademark Law Treaty has already been signed
by thirty-five countries and was ratified by the Senate on June 26,
1998.
  The U.S. Patent and Trademark Office, the International Trademark
Association, and the American Intellectual Property Law Association all
support the Trademark Law Treaty and the TLT Act. In a letter to me
dated July 1, 1998, the International Trademark Association stated that
the Trademark law Treaty is ``critical to the success of U.S. companies
as they operate in the rapidly expanding and ever increasingly
competitive global marketplace.'' The American Intellectual Property
Law Association, in a letter to me dated July 13, 1998, explained:
``The Trademark Law Treaty harmonizes a number of the requirements and
procedures associated with the filing, registration and renewal of
trademarks. It has the potential to bring significant improvements in
the trademark practices of a number of important countries around the
world in which U.S. trademark owners seek protection. By conforming its
trademark law with the obligations of the TLT and ratifying the treaty,
the United States can exercise leadership to encourage additional
nations, particularly those with burdensome procedural requirements, to
also adhere.''

                     the technical corrections bill

  I also support the amendment to this legislation of S. 2192, the
trademark technical corrections bill. This measure contains several
mostly technical amendments to the Lanham Act. The most important of
these amendments addresses the status of ``functional'' shapes as
trademarks. Functional shapes are those whose features are dictated by
utilitarian considerations. Under current law, the registration as a
trademark of a functional shape becomes ``incontestable'' after 5 years

[[Page S10536]]

even though it should never have been registered in the first place. S.
2192 would correct this anomaly by adding functionality as a ground of
cancellation of a mark at any time. The U.S. Patent and Trademark
Office, the International Trademark Association, and the American
Intellectual Property Law Association all support the trademark
technical corrections bill. To date, I have not heard any opposition to
this amendment.
  I hope that after passage of the TLT Act, Congress can get back to
work on our other pressing intellectual property issues, namely the
Digital Millennium Copyright Act and the Patent Bill, to fortify
American intellectual property rights around the world and to help
unleash the full potential of America's most creative industries.
  Mr. SANTORUM. Mr. President, I ask unanimous consent that the
amendment be agreed to.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The amendment (No. 3601) was agreed to.
  Mr. SANTORUM. Mr. President, I ask unanimous consent that the bill be
considered read a third time and passed, as amended; that the motion to
reconsider be laid upon the table; and that any statements relating to
the bill appear at the appropriate place in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The bill (S. 2193), as amended, was considered read the third time
and passed.

                          ____________________
