H.R.2494 - United States-Cuba Trademark Protection Act of 2003108th Congress (2003-2004)
Text: H.R.2494 — 108th Congress (2003-2004)
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Introduced in House (06/17/2003)
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[Congressional Bills 108th Congress] [From the U.S. Government Printing Office] [H.R. 2494 Introduced in House (IH)] 108th CONGRESS 1st Session H. R. 2494 To improve and promote compliance with international intellectual property obligations relating to the Republic of Cuba, and for other purposes. _______________________________________________________________________ IN THE HOUSE OF REPRESENTATIVES June 17, 2003 Mr. Rangel (for himself, Mr. Flake, Mr. Delahunt, Mr. Houghton, Mr. Pomeroy, and Mr. Matsui) introduced the following bill; which was referred to the Committee on International Relations, and in addition to the Committee on the Judiciary, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concerned _______________________________________________________________________ A BILL To improve and promote compliance with international intellectual property obligations relating to the Republic of Cuba, and for other purposes. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, SECTION 1. SHORT TITLE. This Act may be cited as the ``United States-Cuba Trademark Protection Act of 2003''. SEC. 2. FINDINGS AND PURPOSE. (a) Findings.--Congress makes the following findings: (1) Trademarks and trade names are vital assets of the many United States companies that engage in international trade. (2) Worldwide sales of branded products of United States companies contribute in important ways to the livelihood of American workers and the well-being and continued healthy growth of numerous United States businesses. These sales depend, in turn, on the security of the United States trademarks and trade names protected by reciprocal treaties and agreements for the protection of intellectual property. (3) Among such treaties and agreements are the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization, the Inter-American Convention for Trademark and Commercial Protection, and the Madrid Protocol. (4) The United States should ensure that the trademark and trade names of United States companies continue to be protected abroad by working to ensure that countries comply with intellectual property rights treaties and agreements. At the same time, the United States should adhere to its obligations under such treaties and agreements. (5) Hundreds of United States companies have registered their trademarks in Cuba in order to ensure the exclusive right to use those trademarks when the United States trade embargo on that country is lifted. Indeed, following the enactment of the Trade Sanctions Reform and Export Enhancement Act of 2000, many United States companies are already exporting branded food products to Cuba. (6) The United States District Court for the Southern District of New York ruled that section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999 abrogates, with respect to Cuba, the Inter-American Convention on Trademarks and Commercial Protection, and the court's ruling was affirmed by the United States Court of Appeals for the Second Circuit. (7) Cuba's international remedy under customary international law, as codified by Article 60 of the 1969 Vienna Convention on Treaties, for a breach by the United States of the Inter-American Convention, is to suspend or revoke the protections Cuba currently affords United States trademarks and trade names. (8) In order to preserve the rights of United States nationals holding trademarks in Cuba, the United States must repeal section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999, and should take the necessary steps to promote the long-term protection of trademarks, trade names, and domain names held by United States nationals in that country. (9) The recent actions by the Government of Cuba to prosecute and imprison unfairly critics of the government are unacceptable and should be met with strong condemnation. (10) Promoting greater respect for the rule of law in Cuba, including through the provisions of this Act, will it is hoped diminish the likelihood for actions taken in the future that undermine operation of the rule of law or disregard fundamental fairness in administrative and juridical proceedings. (b) Purpose.--The purpose of this Act is to promote global intellectual property rights protections by ensuring that the United States and the Republic of Cuba continue to comply with their obligations under international trademark agreements and understandings. SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS AND UNDERSTANDINGS. (a) Consultations With Cuba.--The President shall direct the Secretary of State to initiate consultations with the Republic of Cuba not later than December 31, 2003, in order to obtain assurances that the Republic of Cuba will-- (1) continue to adhere to-- (A) the Paris Convention for the Protection of Industrial Property; (B) the Inter-American Convention for Trademark and Commercial Protection; and (C) the Madrid Agreement Concerning the International Registration of Marks and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; (2) implement the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the General Assembly of the World Intellectual Property Organization (Pub 833 E) in September 1999; and (3) commit that the manager of the Country-Code Top-Level Domain (ccTLD) will subscribe to the Uniform Dispute Resolution Procedure (UDRP) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) and provide to United States nationals nondiscriminatory access to such procedures. (b) Consultation With Secretary of Commerce.--The Secretary of State shall initiate and conduct the consultations under subsection (a) in consultation with the Secretary of Commerce. (c) Reports to Congress.--The Secretary of State and the Secretary of Commerce shall submit to the Congress a report on the progress and results of the consultations under subsection (a) not later than 6 months after the date of the enactment of this Act and not later than every 6 months thereafter. (d) Repeal of Prohibition on Transactions or Payments With Respect to Certain United States Intellectual Property.-- (1) Repeal.--Section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999 (as contained in section 101(b) of division A of Public Law 105-277; 112 Stat. 2681-88) is repealed. (2) Regulations.--The Secretary of the Treasury shall issue such regulations as are necessary to carry out the repeal made by paragraph (1), including removing any prohibition on transactions or payments to which subsection (a)(1) of section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999 applied. SEC. 4. REGISTRY OF U.S. TRADEMARKS AND WELL-KNOWN MARKS IN CUBA. (a) Registry of U.S. Trademarks.--Not later than December 31, 2003, the Director of the Patent and Trademark Office shall establish a registry of trademarks each of which is owned by a United States national and was registered in, or submitted for registration to, the Republic of Cuba on or after January 1, 1959. (b) Registry of well-known marks.-- (1) Establishment.--Not later than December 31, 2003, the Director of the Patent and Trademark Office shall establish a registry of trademarks each of which is owned by a United States national and met the requirements for a well-known mark in the Republic of Cuba under Article 6bis of the Paris Convention for the Protection of Industrial Property as of December 31, 1958, and the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the General Assembly of the World Intellectual Property Association (Pub 833 E) in September 1999. (2) Requirements for inclusion on registry.--The Director of the Patent and Trademark Office shall require any applicant seeking to register a well-known mark on the registry established under paragraph (1) to supply documentation to establish that the mark met the requirements set forth in paragraph (1). (c) Accessibility.--The Director of the Patent and Trademark Office shall ensure that each registry established under subsections (a) and (b)-- (1) is accessible to the public through the Internet; (2) allows trademark examiners and applicants seeking to register trademarks on the registry to send and receive communications electronically; (3) allows the United States Patent and Trademark Office to process, maintain, and search electronically the contents and history of each application to register a trademark, and trademark registration, included in the registry; and (4) allows the public to access and search electronically the contents and history of each such application and trademark registration. SEC. 5. AMENDMENTS TO CUBAN ASSET CONTROL REGULATIONS. The Secretary of the Treasury shall amend the Cuban Assets Control Regulations (part 515 of title 31, Code of Federal Regulations) so that-- (1) the following transactions by any person who is not a designated national are authorized: (A) the filing and renewal of a blocked foreign domain name, the transfer or receipt of a blocked foreign domain name, and the filing and prosecution of proceedings to determine rights to a blocked foreign domain name and the prosecution of defenses to such proceedings; and (B) the filing and renewal of a blocked foreign trade name, the transfer or receipt of a blocked foreign trade name, and the filing and prosecution of proceedings related to a blocked foreign trade name and the prosecution of defenses to such proceedings; (2)(A) the transfer or receipt of any trademark, trade name, or domain name subject to United States law in which a designated national has an interest is authorized; and (B) the filing and prosecution of opposition and infringement proceedings related to any trademark or trade name in which a designated national has an interest, the filing and prosecution of proceedings to determine rights to any domain name in which a designated national has an interest, and the prosecution of defenses to such proceedings, are authorized; and (3) the payment of fees to the government of any foreign country, either directly or through an attorney or representative, is authorized for research of registries, directories, and government records with respect to blocked foreign trademarks, blocked foreign trade names, or blocked foreign domain names, and the protection and enforcement thereof. SEC. 6. CONFORMING AMENDMENTS. (a) International Conventions.--Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is amended by adding at the end the following: ``(j)(1) Any designated national shall be entitled to the benefits of this Act to the extent necessary to give effect to any provision of any convention or treaty relating to trade or commercial names, or relating to the repression of unfair competition, to which the United States and the Republic of Cuba are parties, or to any reciprocal rights relating to trade or commercial names or the repression of unfair competition, that are extended by the Republic of Cuba to nationals of the United States by law. The absence of commercial activities within the United States shall not constitute a lack of standing or any other reason for the dismissal of any action brought by any such designated national pursuant to this subsection. ``(2) No other provision of this section shall be construed to limit the applicability of paragraph (1). ``(3) As used in this subsection, the term `designated national' has the meaning given that term in subpart C of part 515 of title 31, Code of Federal Regulations, as in effect on April 28, 2003, and includes any national of a foreign country that is a successor-in- interest to that designated national.''. (b) Civil Actions.--Section 43(a) of the Trademark Act of 1946 (15 U.S.C. 1125(a)) is amended by adding at the end the following: ``(4)(A) For purposes of this subsection, any person who is engaged in the bona fide production, distribution, marketing, or sale of spirits outside the United States and who lawfully uses a mark or geographical indication in connection with such spirits shall be considered to be or likely to be damaged by a mark or geographical indication-- ``(i) which, when used on or in connection with other spirits, identifies a place other than origin of such other spirits; and ``(ii) of which the first use in commerce on or in connection with such other spirits was made on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) entered into force with respect to the United States. The preceding sentence shall also apply to any person in any proceeding under section 13 or 14 of this Act. ``(B) As used in this paragraph, the term `spirits' means any article provided for in heading 2207 or 2208 of the Harmonized Tariff Schedule of the United States.''. SEC. 7. AUTHORITY OF COURTS. United States courts shall have the authority to recognize, enforce, or otherwise validate any assertion by a designated national of rights in any mark or trade name based on common law rights or registration or under subsection (b) or (e) of section 44 of the Trademark Act of 1946. In this subsection, the term ``designated national'' includes any national of a foreign country that is a successor-in-interest to that designated national. SEC. 8. DEFINITIONS. In this Act: (1) Blocked foreign domain name.--The term ``blocked foreign domain name'' means a domain name in which a designated national has an interest, including any domain name issued by a designated national. (2) Blocked foreign trade name.--The term ``blocked foreign trade name'' means any trade name in which a designated national has an interest, including any such trade name issued by a designated national. (3) Blocked foreign trademark.--The term ``blocked foreign trademark'' has the meaning given that term in section 515.528(c) of title 31, Code of Federal Regulations, as in effect on April 28, 2003. (4) Designated national.--The term ``designated national'' has the meaning given that term in subpart C of part 515 of title 31, Code of Federal Regulations, as in effect on April 28, 2003. (5) Director of the patent and trademark office.--The term ``Director of the Patent and Trademark Office'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. (6) Domain name; mark; trademark.--The terms ``domain name'', ``mark'', and ``trademark'' have the meanings given those terms in section 45 of the Trademark Act of 1946. (7) Interest.--The term ``interest'' has the meaning given that term in section 515.312 of title 31, Code of Federal Regulations, as in effect on April 28, 2003. (8) Trademark act of 1946.--The term ``Trademark Act of 1946'' means the Act entitled ``An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes'', approved July 5, 1946 (15 U.S.C. 1051 et seq.). (9) Trade name.--The term ``trade name'' means a trade name or commercial name as those terms are defined in section 45 of the Trademark Act of 1946. (10) United states national.--The term ``United States national'' means-- (A) any United States citizen; or (B) any other legal entity which is organized under the laws of the United States, or of any State, the District of Columbia, or any commonwealth, territory, or possession of the United States, and which has its principal place of business in the United States. <all>