Changes to U.S. Trademark Law Under GATT


The "General Agreement on Trade and Tariffs" (GATT) is a set of agreements that direct multinational business practices. The GATT implementing legistation (GATT Act) contains two amendments to the U.S. Trademark Act, also known as the Lanham Act (15 U.S.C. Secs. 1051 1127).

Mark Abandonment

The first amendment relates to the abandonment of a mark. Under former law, if it could be shown that a trademark had not been used for two consecutive years, a presumption of abandonment arose. This gave a plaintiff a distinct advantage in a proceeding, either in the Patent and Trademark Office or in federal court, to cancel a registered mark on the grounds that the mark had been abandoned. GATT requires that this period be extended to three years, and Section 45 of the Trademark Act, 15 U.S.C. 1127, has now been amended to reflect that change. The amendment will be effective January 1, 1996.

The amended provision will make it more difficult than it was previously to achieve cancellation of a mark which is not in use between the second and third year of such nonuse. This will be to the detriment of a subsequent applicant who wishes to register a mark which is being blocked by the earlier registration. On the other hand, the new provision operates to increase an advantage already enjoyed by non U.S. applicants: Ordinarily, all applicants must provide proof of use of a trademark in the United States before a mark will be registered (although an application can be based on intent to use). However, a foreign applicant can obtain a registration under the Paris Convention, as codified in Section 44 of the Lanham Act, 15 U.S.C 1126, without proof of use if it is based on a registration of the same mark in the applicant's home country.

The GATT Act thus extends from two to three years the time during which a non U.S. company may be able to maintain a defensive registration for a mark it has never used in the U.S., unless the challenger can affirmatively sustain its burden of proving abandonment, rather than relying upon the presumption of abandonment of Section 45 of the Act.

Geographic Marks

The other GATT inspired change to U.S. trademark law relates to the registration of marks for wines and spirits that contain misleading geographical indications. The GATT Act amends Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), to expressly prohibit registration of such marks. The change will only apply to marks that are first used on or after January 1, 1996.

In order to comply with the North American Free Trade Agreement (NAFTA), the Lanham Act was amended on December 8, 1993 (effective January 1, 1994), via the NAFTA Implementation Act, to prohibit the registration of "primarily geographically deceptively misdescriptive" marks for any type of goods or services unless the mark was first used and became distinctive prior to the enactment of the NAFTA Implementation Act (December 8, 1993). It appears that U.S. trademark law already prohibited the registration of a mark for wines or spirits if the mark identifies a geographic location which is not the place of origin of the wine or spirit.

A judicial ruling may ultimately be required to establish whether there is in fact a distinction between the prohibition against registering a misleading geographical mark for wines and spirits and the general prohibition against registering "primarily geographically deceptively misdescriptive" marks. Regardless of whether this prohibition is a material change above and beyond the NAFTA amendments, it was necessitated by political considerations due to the sensitivity of European wine producing nations on this issue.

Finally, although GATT has resulted in only minor changes to U.S. trademark law, other countries will be required to change their laws to implement GATT provisions and protections that are already available under U.S. law. Specifically, GATT mandates that each participating country shall: (1) allow for the registration of service marks; (2) enhance protection for internationally well known marks; (3) prohibit the mandatory linking of trademarks; and (4) prohibit the compulsory licensing of marks.