To improve and promote compliance with international intellectual property obligations and to defend United States intellectual property interests from suspension of benefits abroad, and for other purposes.

July 21, 2005

Mr. FLAKE (for himself and Mr. DELAHUNT) introduced the following bill; which was referred to the Committee on the Judiciary, and in addition to the Committee on Ways and Means, 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

To improve and promote compliance with international intellectual property obligations and to defend United States intellectual property interests from suspension of benefits abroad, 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 Trademark Defense Act of 2005'.

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 businesses that engage in international trade.

(2) Worldwide sales of branded products of United States businesses 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 protection that other countries afford to the trademarks and trade names of United States businesses under treaties and international agreements.

(3) Among such treaties and agreements are the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization (WTO), the Paris Convention for the Protection of Industrial Property, and the General Inter-American Convention for Trade Mark and Commercial Protection.

(4) The United States should ensure that the trademark and trade names of United States businesses continue to be protected abroad by working to ensure that other countries comply with their obligations under 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 businesses 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 businesses 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 (as contained in section 101(b) of division A of Public Law 105-277; 112 Stat. 2681-88) abrogates, with respect to Cuba, the General Inter-American Convention on Trade Mark and Commercial Protection. The District 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 General Inter-American Convention on Trade Mark and Commercial Protection, is to suspend or revoke the protections Cuba currently affords United States trademarks and trade names.

(8) Since 1996, hundreds of United States businesses have registered over 50,000 European Community trademarks, and thousands of trademark registrations in individual European Union member states, in order to ensure the exclusive right to use their trademarks in the territory of the European Union.

(9) The World Trade Organization upheld a challenge by the European Community and ruled that section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999, is inconsistent with the obligations of the United States under the Agreement on Trade-Related Aspects of Intellectual Property Rights, including provisions of the Paris Convention for the Protection of Industrial Property.

(10) If the United States fails to bring its law into conformity with the WTO ruling, the remedy of the European Community, as provided by the Dispute Settlement Understanding of the World Trade Organization, is compensation and the suspension of concessions or other obligations that the European Community and its member states currently afford to intellectual property and other trade interests of the United States and its citizens.

(11) In order to preserve the rights of United States nationals holding trademarks and trade names in Cuba, in the European Union and its members states, and in other countries, 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.

(12) Since long prior to the enactment of section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999, it has been the practice of the Federal courts to provide equity in adjudicating disputes involving the Untied States trademark rights of foreign nationals whose businesses at home have been confiscated by their governments.

(13) Therefore, section 211 of the Department of Commerce and Related Agencies Appropriations Act, 1999, is not necessary for the courts to reach equitable results with respect to the trademark and trade name rights of foreign nationals who have suffered from confiscation of their businesses at home, and that the repeal of such section will return to the courts the full authority to give due consideration to all the relevant issues, both legal and equitable, with respect to such trademarks and trade names.

(b) Purpose- The purpose of this Act is to improve and promote compliance with international intellectual property obligations and to defend United States intellectual property interests from suspension of benefits abroad, including in the European Community and its member states, Cuba, and in signatories of the General Inter-American Convention for Trade Mark and Commercial Protection and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

SEC. 3. ADHERENCE TO INTERNATIONAL AGREEMENTS AND UNDERSTANDINGS.

(a) 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.

(b) Regulations- Not later than 30 days after the date of the enactment of this Act, the Secretary of the Treasury shall issue such regulations as are necessary to carry out the repeal made by subsection (a), 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. AUTHORITY OF COURTS.

United States courts shall have the authority to recognize, enforce, or otherwise validate an assertion of rights in any mark or trade name based on common law rights or registration or under any applicable provision of law or any applicable treaty to which the United States is a party.

SEC. 5. PROTECTION OF UNITED STATES INTELLECTUAL PROPERTY RIGHTS.

(a) Estimates of Barriers to Market Access- For purposes of preparing the report required by section 181 of the Trade Act of 1974 (19 U.S.C. 2241) for calendar year 2005, the United States Trade Representative shall examine the policies and practices of Cuba with respect to protecting and enforcing intellectual property rights.

(b) Identification of Countries That Deny Adequate Protection, or Market Access, for Intellectual Property Rights- For purposes of meeting the requirements of section 182 of the Trade Act of 1974 (22 U.S.C. 2242) with respect to the report required by section 181 of such Act for calendar year 2005, the United States Trade Representative shall give due consideration to the findings of the Trade Representative pursuant to subsection (a).

END