U. S. TRADEMARK LAW

U. S. TRADEMARK LAW
U. S. PATENT & TRADEMARK OFFICE
December 28, 2009
Trademark Act of 1946, as Amended
PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427
The headings used for sections and subsections or paragraphs in the following
reprint of the Act are not part of the Act but have been added for convenience in
using this reprint. Prior trademark statutes may be found in Title 15, Chapter 3, of
the U.S. Code and in the Statutes at Large. The present Act forms Chapter 22 of
Title 15 of the U.S. Code and the U.S. Code citations have been placed at the
beginning of each section and subsection. Included are an amendment to repeal
§ 40 by the Act of May 24, 1949, 63 Stat. 109; and amendments made to § 7(a)
by the Act of August 17, 1950, Public Law 81-710, 64 Stat. 459; to § 21 by the
Act of July 19, 1952, Public Law 82-593, 66 Stat. 792; to §§ 17, 20, 21, 24 and
31 by the Act of August 8, 1958, Public Law 85-609, 72 Stat. 540; to § 44(d) by
the Act of October 3, 1961, Public Law 87-333, 75 Stat. 748; to §§ 1(a)(1), 2(d),
6, 7(a), 7(d), 7(e), 7(f), 9, 10, 12(a), 12(c), 13, 14, 15, 16, 21, 23, 24, 29, 30, 32,
33, 35, 44(b), 44(e) and 45 by the Act of October 9, 1962, Public Law 87-772, 76
Stat. 769; to § 31 by the Act of July 24, 1965, Public Law 89-83, 79 Stat. 260; to
§ 29 and the terms “Patent Office” and “Commissioner of Patents” by the Act of
January 2, 1975, Public Law 93-596, 88 Stat. 1949; to §§ 13, 21 and 35 by the
Act of January 2, 1975, Public Law 93-600, 88 Stat. 1955; to § 42 by the Act of
October 3, 1978, Public Law 95-410, 92 Stat. 903; to § 17 by the Act of October
15, 1980, Public Law 96-455, 94 Stat. 2024; to § 31 by the Act of December 12,
1980, Public Law 96-517, 94 Stat. 3018; to §§ 21 and 39 by the Act of April 2,
1982, Public Law 97-164, 96 Stat. 25; to §§ 8(a), 8(b), 11, 13, 14, 15, 16 and 31
by the Act of August 27, 1982, Public Law 97-247, 96 Stat. 317; to § 31(a) by the
Act of September 8, 1982, Public Law 97-256, 96 Stat. 816; to add § 39(a) by the
Act of October 12, 1982, Public Law 97-296, 96 Stat. 1316; to §§ 34, 35 and 36
by the Act of October 12, 1984, Public Law 98-473, 98 Stat. 2179; to §§ 14(c), 21
and 45 by the Act of November 8, 1984, Public Law 98-620, 98 Stat. 3335; to §§
1, 2(d), 2(e), 2(f), 3, 4, 5, 6(b), 7, 8(a), 9(a), 9(c), 10, 12(a), 13, 14, 15, 16, 18, 19,
21, 23, 24, 26, 27, 29, 30, 32(2), 33, 34, 35(a), 36, 39, 43(a), 44 and 45 and to
add § 51 by the Act of November 16, 1988, Public Law 100-667, 102 Stat. 3935;
to § 31(a) by the Act of December 10, 1991, Public Law 102-204, 105 Stat. 1640;
to § 32(1), to add § 40, and to §§ 43(a) and 45 by the Act of October 27, 1992,
Public Law 102-542, 106 Stat. 3567; to §§ 2(e), 2(f) and 23(a) by the Act of
December 8, 1993, Public Law 103-182, 107 Stat. 2057; to §§ 2(a) and 45 by the
Act of December 8, 1994, Public Law 103-465, 108 Stat. 4982; to §§ 43 and 45
by the Act of January 16, 1996, Public Law 104-98, 109 Stat. 985; to §§ 34(d)(9)
and 35 by Public Law No. 104-153, 110 Stat. 1386, July 2, 1996; to §§ 1(d)(1), 2,
7(a), 14, 23(c), 26, 31, 32(1), 33(b), 39(a) and 42 by Public Law 105-330, 112
Stat. 3069, effective October 30, 1998; to §§ 2, 10, 13(a), 14, 24, 32, 34(a),
35(a), 36, 40, 43(a), 43(c)(2) and 45 by Public Law 106-43, 113 Stat. 218,
effective August 5, 1999; to §§ 1(a), 1(b), 12(b), 8, 9, 10, 44(d) and 44(e) by
Public Law 105-330, 112 Stat. 3064, effective October 30, 1999; to §§ 1, 2, 6, 7,
8, 9, 10, 12, 13, 15, 16, 17, 18, 21, 23, 24, 30, 31, 32, 34, 35, 37, 41, 43, 44, 45,
and 47(b) by Public Law 106-113, 113 Stat. 1501A, Nov. 29, 1999; to add Title
XII, by Public Law 107-273, 116 Stat. 1758, effective Nov. 2, 2003; by Public Law
108-482, 118 Stat. 3916, effective Dec. 23, 2004; by Public Law 109-312, 120
Stat. 1730, Oct. 6, 2006.
TITLE I - THE PRINCIPAL REGISTER
§ 1 (15 U.S.C. § 1051). Application for registration; verification
(a)(1) The owner of a trademark used in commerce may request registration
of its trademark on the principal register hereby established by paying the
prescribed fee and filing in the Patent and Trademark Office an application
and a verified statement, in such form as may be prescribed by
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the Director, and such number of specimens or facsimiles of the mark as
used as may be required by the Director.
(2) The application shall include specification of the applicant’s domicile and
citizenship, the date of the applicant’s first use of the mark, the date of the
applicant’s first use of the mark in commerce, the goods in connection with
which the mark is used, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify that—
(A) the person making the verification believes that he or she, or the
juristic person in whose behalf he or she makes the verification, to be the
owner of the mark sought to be registered;
(B) to the best of the verifier’s knowledge and belief, the facts recited in
the application are accurate;
(C) the mark is in use in commerce; and
(D) to the best of the verifier’s knowledge and belief, no other person
has the right to use such mark in commerce either in the identical
form thereof or in such near resemblance thereto as to be likely, when
used on or in connection with the goods of such other person, to
cause confusion, or to cause mistake, or to deceive, except that, in
the case of every application claiming concurrent use, the applicant
shall—
(i) state exceptions to the claim of exclusive use; and
(ii) shall specify, to the extent of the verifier’s knowledge—
(I) any concurrent use by others;
(II) the goods on or in connection with which and the areas in which each concurrent
use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires registration.
(4) The applicant shall comply with such rules or regulations as may be
prescribed by the Director. The Director shall promulgate rules prescribing
the requirements for the application and for obtaining a filing date herein.
(b)(1) A person who has a bona fide intention, under circumstances showing
the good faith of such person, to use a trademark in commerce may request
registration of its trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and Trademark Office an
application and a verified statement, in such form as may be prescribed by
the Director.
(2) The application shall include specification of the applicant’s domicile and
citizenship, the goods in connection with which the applicant has a bona fide
intention to use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify—
(A) that the person making the verification believes that he or she, or the juristic
person in whose behalf he or she makes the verification, to be entitled to use the
mark in commerce;
(B) the applicant’s bona fide intention to use the mark in commerce;
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(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the
application are accurate; and
(D) that, to the best of the verifier’s knowledge and belief, no other person has the
right to use such mark in commerce either in the identical form thereof or in such
near resemblance thereto as to be likely, when used on or in connection with the
goods of such other person, to cause confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 1126 of this title, no mark shall
be registered until the applicant has met the requirements of subsections (c) and
(d) of this section.
(4) The applicant shall comply with such rules or regulations as may be
prescribed by the Director. The Director shall promulgate rules prescribing the
requirements for the application and for obtaining a filing date herein.
(c) At any time during examination of an application filed under subsection (b) of
this section, an applicant who has made use of the mark in commerce may claim
the benefits of such use for purposes of this chapter, by amending his or her
application to bring it into conformity with the requirements of subsection (a) of
this section.
(d) (1) Within six months after the date on which the notice of allowance with respect
to a mark is issued under section 1063(b)(2) of this title to an applicant under
subsection (b) of this section, the applicant shall file in the Patent and Trademark
Office, together with such number of specimens or facsimiles of the mark as used in
commerce as may be required by the Director and payment of the prescribed fee, a
verified statement that the mark is in use in commerce and specifying the date of the
applicant’s first use of the mark in commerce and those goods or services specified
in the notice of allowance on or in connection with which the mark is used in
commerce. Subject to examination and acceptance of the statement of use, the mark
shall be registered in the Patent and Trademark Office, a certificate of registration
shall be issued for those goods or services recited in the statement of use for which
the mark is entitled to registration, and notice of registration shall be published in the
Official Gazette of the Patent and Trademark Office. Such examination may include
an examination of the factors set forth in subsections (a) through (e) of section 1052
of this title. The notice of registration shall specify the goods or services for which the
mark is registered.
(2) The Director shall extend, for one additional 6-month period, the time for filing the
statement of use under paragraph (1), upon written request of the applicant before
the expiration of the 6-month period provided in paragraph (1). In addition to an
extension under the preceding sentence, the Director may, upon a showing of good
cause by the applicant, further extend the time for filing the statement of use under
paragraph (1) for periods aggregating not more than 24 months, pursuant to written
request of the applicant made before the expiration of the last extension granted
under this paragraph. Any request for an extension under this paragraph shall be
accompanied by a verified statement that the applicant has a continued bona fide
intention to use the mark in commerce and specifying those goods or services
identified in the notice of allowance on or in connection with which the applicant has
a continued bona fide intention to use the mark in commerce. Any request for an
extension under this paragraph shall be accompanied by payment of the prescribed
fee. The Director shall issue regulations setting forth guidelines for determining what
constitutes good cause for purposes of this paragraph.
(3) The Director shall notify any applicant who files a statement of use of the
acceptance or refusal thereof and, if the statement of use is refused, the reasons for
the refusal. An applicant may amend the statement of use.
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(4) The failure to timely file a verified statement of use under paragraph (1) or an
extension request under paragraph (2) shall result in abandonment of the
application, unless it can be shown to the satisfaction of the Director that the delay in
responding was unintentional, in which case the time for filing may be extended, but
for a period not to exceed the period specified in paragraphs (1) and (2) for filing a
statement of use.
(e) If the applicant is not domiciled in the United States the applicant may
designate, by a document filed in the United States Patent and Trademark Office,
the name and address of a person resident in the United States on whom may be
served notices or process in proceedings affecting the mark. Such notices or
process may be served upon the person so designated by leaving with that
person or mailing to that person a copy thereof at the address specified in the
last designation so filed. If the person so designated cannot be found at the
address given in the last designation, or if the registrant does not designate by a
document filed in the United States Patent and Trademark Office the name and
address of a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark, such notices or process
may be served on the Director.
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102
Stat. 3935; Oct. 30, 1998, 112 Stat. 3064; Nov. 29, 1999, 113 Stat. 1501A; Nov. 2, 2002,
116 Stat. 1906.)
§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register;
concurrent registration
No trademark by which the goods of the applicant may be distinguished from the
goods of others shall be refused registration on the principal register on account
of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter
which may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into contempt, or
disrepute; or a geographical indication which, when used on or in connection with
wines or spirits, identifies a place other than the origin of the goods and is first
used on or in connection with wines or spirits by the applicant on or after one
year after the date on which the WTO Agreement (as defined in section 3501(9)
of title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the
United States, or of any State or municipality, or of any foreign nation, or any
simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a particular
living individual except by his written consent, or the name, signature, or portrait of a
deceased President of the United States during the life of his widow, if any, except
by the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the
Patent and Trademark Office, or a mark or trade name previously used in the United
States by another and not abandoned, as to be likely, when used on or in connection
with the goods of the applicant, to cause confusion, or to cause mistake, or to
deceive: Provided, That if the Director determines that confusion, mistake, or
deception is not likely to result from the continued use by more than one person of
the same or similar marks under conditions and limitations as to the mode or place of
use of the marks or the goods on or in connection with which such marks are used,
concurrent registrations may be issued to such persons when they have become
entitled to use such marks as a result of their concurrent lawful use in commerce
prior to (1) the earliest of the filing dates of the applications pending or of any
registration issued under this chapter; (2) July 5, 1947, in the case of registrations
previously issued under the Act of March 3, 1881, or February 20, 1905, and
continuing in full force and
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effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act
of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of
any pending application or a registration shall not be required when the owner of
such application or registration consents to the grant of a concurrent registration to
the applicant. Concurrent registrations may also be issued by the Director when a
court of competent jurisdiction has finally determined that more than one person is
entitled to use the same or similar marks in commerce. In issuing concurrent
registrations, the Director shall prescribe conditions and limitations as to the mode or
place of use of the mark or the goods on or in connection with which such mark is
registered to the respective persons.
(e) Consists of a mark which, (1) when used on or in connection with the goods of
the applicant is merely descriptive or deceptively misdescriptive of them, (2) when
used on or in connection with the goods of the applicant is primarily geographically
descriptive of them, except as indications of regional origin may be registrable under
section 1054 of this title, (3) when used on or in connection with the goods of the
applicant is primarily geographically deceptively misdescriptive of them, (4) is
primarily merely a surname, or (5) comprises any matter that, as a whole, is
functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of
this section, nothing herein shall prevent the registration of a mark used by the
applicant which has become distinctive of the applicant’s goods in commerce. The
Director may accept as prima facie evidence that the mark has become distinctive,
as used on or in connection with the applicant’s goods in commerce, proof of
substantially exclusive and continuous use thereof as a mark by the applicant in
commerce for the five years before the date on which the claim of distinctiveness is
made. Nothing in this section shall prevent the registration of a mark which, when
used on or in connection with the goods of the applicant, is primarily geographically
deceptively misdescriptive of them, and which became distinctive of the applicant’s
goods in commerce before the date of the enactment of the North American Free
Trade Agreement Implementation Act. A mark which would be likely to cause dilution
by blurring or dilution by tarnishment under section 43(c), may be refused registration
only pursuant to a proceeding brought under section 13. A registration for a mark
which would be likely to cause dilution by blurring or dilution by tarnishment under
section 43(c), may be canceled pursuant to a proceeding brought under either
section 14 or section 24.
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat.
3037; Dec. 8, 1993, 107 Stat. 2057; Dec. 8, 1994, 108 Stat. 4982; Oct. 30, 1998, 112 Stat.
3069; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120
Stat. 1730.)
§ 3 (15 U.S.C. § 1053). Service marks registrable
Subject to the provisions relating to the registration of trademarks, so far as they are
applicable, service marks shall be registrable, in the same manner and with the
same effect as are trademarks, and when registered they shall be entitled to the
protection provided herein in the case of trademarks. Applications and procedure
under this section shall conform as nearly as practicable to those prescribed for the
registration of trademarks.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 4 (15 U.S.C. § 1054). Collective marks and certification marks registrable
Subject to the provisions relating to the registration of trademarks, so far as they are
applicable, collective and certification marks, including indications of regional origin,
shall be registrable under this chapter, in the same manner and with the same effect
as are trademarks, by persons, and nations, States, municipalities, and the like,
exercising legitimate control over the use of the marks
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sought to be registered, even though not possessing an industrial or commercial
establishment, and when registered they shall be entitled to the protection provided
in this chapter in the case of trademarks, except in the case of certification marks
when used so as to represent falsely that the owner or a user thereof makes or sells
the goods or performs the services on or in connection with which such mark is used.
Applications and procedure under this section shall conform as nearly as practicable
to those prescribed for the registration of trademarks.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 5 (15 U.S.C. § 1055). Use by related companies
Where a registered mark or a mark sought to be registered is or may be used
legitimately by related companies, such use shall inure to the benefit of the registrant
or applicant for registration, and such use shall not affect the validity of such mark or
of its registration, provided such mark is not used in such manner as to deceive the
public. If first use of a mark by a person is controlled by the registrant or applicant for
registration of the mark with respect to the nature and quality of the goods or
services, such first use shall inure to the benefit of the registrant or applicant, as the
case may be.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 6 (15 U.S.C. § 1056). Disclaimers
(a) The Director may require the applicant to disclaim an unregistrable component of
a mark otherwise registrable. An applicant may voluntarily disclaim a component of a
mark sought to be registered.
(b) No disclaimer, including those made under subsection (e) of section 1057 of this
title, shall prejudice or affect the applicant’s or registrant’s rights then existing or
thereafter arising in the disclaimed matter, or his right of registration on another
application if the disclaimed matter be or shall have become distinctive of his goods
or services.
(Amended Oct. 9, 1962, 76 Stat. 769; Nov. 16, 1988, 102 Stat. 3938; Nov. 29, 1999, 113
Stat. 1501A-583.)
§ 7 (15 U.S.C. § 1057). Certificates of registration
(a) Issuance and form. Certificates of registration of marks registered upon the
principal register shall be issued in the name of the United States of America,
under the seal of the Patent and Trademark Office, and shall be signed by the
Director or have his signature placed thereon, and a record thereof shall be kept
in the Patent and Trademark Office. The registration shall reproduce the mark,
and state that the mark is registered on the principal register under this chapter,
the date of the first use of the mark, the date of the first use of the mark in
commerce, the particular goods or services for which it is registered, the number
and date of the registration, the term thereof, the date on which the application
for registration was received in the Patent and Trademark Office, and any
conditions and limitations that may be imposed in the registration.
(b) Certificate as prima facie evidence. A certificate of registration of a mark upon
the principal register provided by this chapter shall be prima facie evidence of the
validity of the registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s exclusive right to use
the registered mark in commerce on or in connection with the goods or services
specified in the certificate, subject to any conditions or limitations stated in the
certificate.
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(c) Application to register mark considered constructive use. Contingent on the
registration of a mark on the principal register provided by this chapter, the filing of
the application to register such mark shall constitute constructive use of the mark,
conferring a right of priority, nationwide in effect, on or in connection with the goods
or services specified in the registration against any other person except for a person
whose mark has not been abandoned and who, prior to such filing—
(1) has used the mark;
(2) has filed an application to register the mark which is pending or has resulted in
registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which he or she
has acquired a right of priority, and timely files an application under section 1126(d)
to register the mark which is pending or has resulted in registration of the mark.
(d) Issuance to assignee. A certificate of registration of a mark may be issued to the
assignee of the applicant, but the assignment must first be recorded in the Patent
and Trademark Office. In case of change of ownership the Director shall, at the
request of the owner and upon a proper showing and the payment of the prescribed
fee, issue to such assignee a new certificate of registration of the said mark in the
name of such assignee, and for the unexpired part of the original period.
(e) Surrender, cancellation, or amendment by registrant. Upon application of the
registrant the Director may permit any registration to be surrendered for cancellation,
and upon cancellation appropriate entry shall be made in the records of the Patent
and Trademark Office. Upon application of the registrant and payment of the
prescribed fee, the Director for good cause may permit any registration to be
amended or to be disclaimed in part: Provided, That the amendment or disclaimer
does not alter materially the character of the mark. Appropriate entry shall be made
in the records of the Patent and Trademark Office and upon the certificate of
registration or, if said certificate is lost or destroyed, upon a certified copy thereof.
(f) Copies of Patent and Trademark Office records as evidence. Copies of any
records, books, papers, or drawings belonging to the Patent and Trademark Office
relating to marks, and copies of registrations, when authenticated by the seal of the
Patent and Trademark Office and certified by the Director, or in his name by an
employee of the Office duly designated by the Director, shall be evidence in all cases
wherein the originals would be evidence; and any person making application therefor
and paying the prescribed fee shall have such copies.
(g) Correction of Patent and Trademark Office mistake. Whenever a material mistake
in a registration, incurred through the fault of the Patent and Trademark Office, is
clearly disclosed by the records of the Office a certificate stating the fact and nature
of such mistake shall be issued without charge and recorded and a printed copy
thereof shall be attached to each printed copy of the registration and such corrected
registration shall thereafter have the same effect as if the same had been originally
issued in such corrected form, or in the discretion of the Director a new certificate of
registration may be issued without charge. All certificates of correction heretofore
issued in accordance with the rules of the Patent and Trademark Office and the
registrations to which they are attached shall have the same force and effect as if
such certificates and their issue had been specifically authorized by statute.
(h) Correction of applicant’s mistake. Whenever a mistake has been made in a
registration and a showing has been made that such mistake occurred in good
faith through the fault of the applicant, the Director is authorized to issue a
certificate of correction or, in his discretion, a new certificate upon the payment of
the prescribed fee: Provided, That the correction does not involve such changes
in the registration as to require republication of the mark.
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(Amended Aug. 17, 1950, 64 Stat. 459; Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat.
1949; Nov. 16, 1988, 102 Stat. 3938; Oct. 30, 1998, 112 Stat. 3069; Nov. 29, 1999, 113
Stat. 1501A-583.)
§ 8 (15 U.S.C. § 1058). Duration
(a) In general. Each registration shall remain in force for 10 years, except that the
registration of any mark shall be canceled by the Director for failure to comply with
the provisions of subsection (b) of this section, upon the expiration of the following
time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this chapter, at the end
of 6 years following the date of registration.
(2) For registrations published under the provisions of section 1062(c), at the end
of 6 years following the date of publication under such section.
(3) For all registrations, at the end of each successive 10-year period following the
date of registration.
(b) Affidavit of continuing use. During the 1-year period immediately preceding
the end of the applicable time period set forth in subsection (a) of this section, the
owner of the registration shall pay the prescribed fee and file in the Patent and
Trademark Office—
(1) an affidavit setting forth those goods or services recited in the registration on
or in connection with which the mark is in use in commerce and such number of
specimens or facsimiles showing current use of the mark as may be required by
the Director; or
(2) an affidavit setting forth those goods or services recited in the registration on or in
connection with which the mark is not in use in commerce and showing that any such
nonuse is due to special circumstances which excuse such nonuse and is not due to
any intention to abandon the mark.
(c) Grace period for submissions; deficiency.
(1) The owner of the registration may make the submissions required under this
section within a grace period of 6 months after the end of the applicable time period
set forth in subsection (a) of this section. Such submission is required to be
accompanied by a surcharge prescribed by the Director.
(2) If any submission filed under this section is deficient, the deficiency may be
corrected after the statutory time period and within the time prescribed after
notification of the deficiency. Such submission is required to be accompanied by a
surcharge prescribed by the Director.
(d) Notice of affidavit requirement. Special notice of the requirement for affidavits
under this section shall be attached to each certificate of registration and notice of
publication under section 12(c).
(e) Notification of acceptance or refusal of affidavits. The Director shall notify any
owner who files 1 of the affidavits required by this section of the Director’s
acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
(f) Designation of resident for service of process and notices. If the registrant is not
domiciled in the United States, the registrant may designate, by a document filed in
the United States Patent and Trademark Office, the name and address of a person
resident in the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served upon the
person so designated by leaving with that person or mailing to that person a copy
thereof at the address specified in the last designation so filed. If the person so
designated
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cannot be found at the address given in the last designation, or if the registrant does
not designate by a document filed in the United States Patent and Trademark Office
the name and address of a person resident in the United States on whom may be
served notices or process in proceedings affecting the mark, such notices or process
may be served on the Director.
(Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3939; Oct.
30, 1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Nov. 2, 2002, 116 Stat.
1906)
§ 9 (15 U.S.C. § 1059). Renewal of registration
(a) Subject to the provisions of section 1058 of this title, each registration may be
renewed for periods of 10 years at the end of each successive 10-year period
following the date of registration upon payment of the prescribed fee and the filing of
a written application, in such form as may be prescribed by the Director. Such
application may be made at any time within 1 year before the end of each successive
10-year period for which the registration was issued or renewed, or it may be made
within a grace period of 6 months after the end of each successive 10-year period,
upon payment of a fee and surcharge prescribed therefor. If any application filed
under this section is deficient, the deficiency may be corrected within the time
prescribed after notification of the deficiency, upon payment of a surcharge
prescribed therefor.
(b) If the Director refuses to renew the registration, the Director shall notify the
registrant of the Director’s refusal and the reasons therefor.
(c) If the registrant is not domiciled in the United States the registrant may
designate, by a document filed in the United States Patent and Trademark Office,
the name and address of a person resident in the United States on whom may be
served notices or process in proceedings affecting the mark. Such notices or
process may be served upon the person so designated by leaving with that
person or mailing to that person a copy thereof at the address specified in the
last designation so filed. If the person so designated cannot be found at the
address given in the last designation, or if the registrant does not designate by a
document filed in the United States Patent and Trademark Office the name and
address of a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark, such notices or process
may be served on the Director.
(Amended Oct. 9, 1962, 76 Stat. 770; Nov. 16, 1988, 102 Stat. 3939; Oct. 30, 1998, 112
Stat. 3067; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1907.)
§ 10 (15 U.S.C. § 1060). Assignment
(a)(1) A registered mark or a mark for which an application to register has been
filed shall be assignable with the good will of the business in which the mark is
used, or with that part of the good will of the business connected with the use of
and symbolized by the mark. Notwithstanding the preceding sentence, no
application to register a mark under section 1051(b) of this title shall be
assignable prior to the filing of an amendment under section 1051(c) of this title
to bring the application into conformity with section 1051(a) of this title or the
filing of the verified statement of use under section 1051(d) of this title, except for
an assignment to a successor to the business of the applicant, or portion thereof,
to which the mark pertains, if that business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be necessary to include
the good will of the business connected with the use of and symbolized by any other
mark used in the business or by the name or style under which the business is
conducted.
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(3) Assignments shall be by instruments in writing duly executed. Acknowledgment
shall be prima facie evidence of the execution of an assignment, and when the
prescribed information reporting the assignment is recorded in the United States
Patent and Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable
consideration without notice, unless the prescribed information reporting the
assignment is recorded in the United States Patent and Trademark Office within 3
months after the date of the assignment or prior to the subsequent purchase.
(5) The United States Patent and Trademark Office shall maintain a record of
information on assignments, in such form as may be prescribed by the Director.
(b) An assignee not domiciled in the United States may designate by a document
filed in the United States Patent and Trademark Office the name and address of a
person resident in the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served upon the
person so designated by leaving with that person or mailing to that person a copy
thereof at the address specified in the last designation so filed. If the person so
designated cannot be found at the address given in the last designation, or if the
assignee does not designate by a document filed in the United States Patent and
Trademark Office the name and address of a person resident in the United States on
whom may be served notices or process in proceedings affecting the mark, such
notices or process may be served upon the Director.
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat.
3937; Aug. 5, 1999, 113 Stat. 218; Oct. 30, 1998, 112 Stat. 3068, effective Oct. 30, 1999;
Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat.
1907.)
§ 11 (15 U.S.C. § 1061). Acknowledgments and verifications
Acknowledgments and verifications required hereunder may be made before any
person within the United States authorized by law to administer oaths, or, when
made in a foreign country, before any diplomatic or consular officer of the United
States or before any official authorized to administer oaths in the foreign country
concerned whose authority shall be proved by a certificate of a diplomatic or
consular officer of the United States, or apostille of an official designated by a foreign
country which, by treaty or convention, accords like effect to apostilles of designated
officials in the United States, and shall be valid if they comply with the laws of the
state or country where made.
(Amended Aug. 27, 1982, 96 Stat. 321.)
§ 12 (15 U.S.C. § 1062). Publication
(a) Upon the filing of an application for registration and payment of the prescribed
fee, the Director shall refer the application to the examiner in charge of the
registration of marks, who shall cause an examination to be made and, if on such
examination it shall appear that the applicant is entitled to registration, or would be
entitled to registration upon the acceptance of the statement of use required by
section 1051(d) of this title, the Director shall cause the mark to be published in the
Official Gazette of the Patent and Trademark Office: Provided, That in the case of an
applicant claiming concurrent use, or in the case of an application to be placed in an
interference as provided for in section 1066 of this title, the mark, if otherwise
registrable, may be published subject to the determination of the rights of the parties
to such proceedings.
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(b) If the applicant is found not entitled to registration, the examiner shall advise the
applicant thereof and of the reason therefor. The applicant shall have a period of six
months in which to reply or amend his application, which shall then be reexamined.
This procedure may be repeated until (1) the examiner finally refuses registration of
the mark or (2) the applicant fails for a period of six months to reply or amend or
appeal, whereupon the application shall be deemed to have been abandoned,
unless it can be shown to the satisfaction of the Director that the delay in responding
was unintentional, whereupon such time may be extended.
(c) A registrant of a mark registered under the provision of the Act of March 3, 1881,
or the Act of February 20, 1905, may, at any time prior to the expiration of the
registration thereof, upon the payment of the prescribed fee file with the Director an
affidavit setting forth those goods stated in the registration on which said mark is in
use in commerce and that the registrant claims the benefits of this chapter for said
mark. The Director shall publish notice thereof with a reproduction of said mark in the
Official Gazette, and notify the registrant of such publication and of the requirement
for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of
this title. Marks published under this subsection shall not be subject to the provisions
of section 1063 of this chapter.
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102
Stat. 3940; Oct. 30, 1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 13 (15 U.S.C. § 1063). Opposition
(a) Any person who believes that he would be damaged by the registration of a mark
upon the principal register, including the registration of any mark which would be
likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of
this title, may, upon payment of the prescribed fee, file an opposition in the Patent
and Trademark Office, stating the grounds therefor, within thirty days after the
publication under subsection (a) of section 1062 of this title of the mark sought to be
registered. Upon written request prior to the expiration of the thirty-day period, the
time for filing opposition shall be extended for an additional thirty days, and further
extensions of time for filing opposition may be granted by the Director for good cause
when requested prior to the expiration of an extension. The Director shall notify the
applicant of each extension of the time for filing opposition. An opposition may be
amended under such conditions as may be prescribed by the Director.
(b) Unless registration is successfully opposed—
(1) a mark entitled to registration on the principal register based on an application
filed under section 1051(a) of this title or pursuant to section 1126 shall be registered
in the Patent and Trademark Office, a certificate of registration shall be issued, and
notice of the registration shall be published in the Official Gazette of the Patent and
Trademark Office; or
(2) a notice of allowance shall be issued to the applicant if the applicant applied
for registration under section 1051(b) of this title.
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat.
1955; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3940; Aug. 5, 1999, 113 Stat.
218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)
§ 14 (15 U.S.C. § 1064). Cancellation
A petition to cancel a registration of a mark, stating the grounds relied upon, may,
upon payment of the prescribed fee, be filed as follows by any person who
believes that he is or will be damaged, including as a result of a likelihood of
dilution by blurring or dilution by tarnishment
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under section 1125(c) of this title, by the registration of a mark on the principal
register established by this chapter, or under the Act of March 3, 1881, or the Act
of February 20, 1905:
(1) Within five years from the date of the registration of the mark under this
chapter.
(2) Within five years from the date of publication under section 1062(c) of this title of
a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered, or is functional, or has been
abandoned, or its registration was obtained fraudulently or contrary to the provisions
of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title
for a registration under this chapter, or contrary to similar prohibitory provisions of
such said prior Acts for a registration under such Acts, or if the registered mark is
being used by, or with the permission of, the registrant so as to misrepresent the
source of the goods or services on or in connection with which the mark is used. If
the registered mark becomes the generic name for less than all of the goods or
services for which it is registered, a petition to cancel the registration for only those
goods or services may be filed. A registered mark shall not be deemed to be the
generic name of goods or services solely because such mark is also used as a name
of or to identify a unique product or service. The primary significance of the
registered mark to the relevant public rather than purchaser motivation shall be the
test for determining whether the registered mark has become the generic name of
goods or services on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of
February 20, 1905, and has not been published under the provisions of subsection
(c) of section 1062 of this title.
(5) At any time in the case of a certification mark on the ground that the registrant (A)
does not control, or is not able legitimately to exercise control over, the use of such
mark, or (B) engages in the production or marketing of any goods or services to
which the certification mark is applied, or (C) permits the use of the certification mark
for purposes other than to certify, or (D) discriminately refuses to certify or to
continue to certify the goods or services of any person who maintains the standards
or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the
grounds specified in paragraphs (3) and (5) of this section any mark registered
on the principal register established by this chapter, and the prescribed fee shall
not be required. Nothing in paragraph (5) shall be deemed to prohibit the
registrant from using its certification mark in advertising or promoting recognition
of the certification program or of the goods or services meeting the certification
standards of the registrant. Such uses of the certification mark shall not be
grounds for cancellation under paragraph (5), so long as the registrant does not
itself produce, manufacture, or sell any of the certified goods or services to which
its identical certification mark is applied.
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 320; Nov. 8, 1984, 98 Stat.
3335; Nov. 16, 1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113
Stat. 218; Oct. 6, 2006, 120 Stat. 1730.)
§ 15 (15 U.S.C. § 1065). Incontestability of right to use mark under certain
conditions
Except on a ground for which application to cancel may be filed at anytime under
paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if
any, to which the use of a mark registered on the principal register infringes a
valid right acquired under the law of any State or Territory by use of a mark or
trade name continuing from a date prior to the date of registration under this
chapter of such registered mark, the right of the registrant to use such registered
mark
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in commerce for the goods or services on or in connection with which such
registered mark has been in continuous use for five consecutive years
subsequent to the date of such registration and is still in use in commerce, shall
be incontestable: Provided, That—
(1) there has been no final decision adverse to registrant’s claim of ownership of
such mark for such goods or services, or to registrant’s right to register the same or
to keep the same on the register; and
(2) there is no proceeding involving said rights pending in the Patent and Trademark
Office or in a court and not finally disposed of; and
(3) an affidavit is filed with the Director within one year after the expiration of any
such five-year period setting forth those goods or services stated in the registration
on or in connection with which such mark has been in continuous use for such five
consecutive years and is still in use in commerce, and the other matters specified in
paragraphs (1) and (2) of this section; and
(4) no incontestable right shall be acquired in a mark which is the generic name for
the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with
reference to a mark registered under this chapter shall apply to a mark registered
under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of
the required affidavit with the Director within one year after the expiration of any
period of five consecutive years after the date of publication of a mark under the
provisions of subsection (c) of section 1062 of this title.
The Director shall notify any registrant who files the above-prescribed affidavit of the
filing thereof.
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat.
320; Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 16 (15 U.S.C. § 1066). Interference
Upon petition showing extraordinary circumstances, the Director may declare that an
interference exists when application is made for the registration of a mark which so
resembles a mark previously registered by another, or for the registration of which
another has previously made application, as to be likely when used on or in
connection with the goods or services of the applicant to cause confusion or mistake
or to deceive. No interference shall be declared between an application and the
registration of a mark the right to the use of which has become incontestable.
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 321; Nov. 16, 1988, 102 Stat.
3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 17 (15 U.S.C. § 1067). Interference, opposition, and proceedings for
concurrent use registration or for cancellation; notice; Trademark Trial and
Appeal Board
(a) In every case of interference, opposition to registration, application to register as
a lawful concurrent user, or application to cancel the registration of a mark, the
Director shall give notice to all parties and shall direct a Trademark Trial and Appeal
Board to determine and decide the respective rights of registration.
(b) The Trademark Trial and Appeal Board shall include the Director, Deputy Director
of the United States Patent and Trademark Office, the Commissioner for Patents, the
Commissioner for Trademarks, and administrative trademark judges who are
appointed by the Director.
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(c) Authority of the Secretary. The Secretary of Commerce may, in his or her
discretion, deem the appointment of an administrative trademark judge who, before
the date of the enactment of this subsection, held office pursuant to an appointment
by the Director to take effect on the date on which the Director initially appointed the
administrative trademark judge.
(d) Defense to Challenge of Appointment. It shall be a defense to a challenge to the
appointment of an administrative trademark judge on the basis of the judge's having
been originally appointed by the Director that the administrative trademark judge so
appointed was acting as a de facto officer.
(Amended Aug. 8, 1958, 72 Stat. 540; Jan. 2, 1975, 88 Stat. 1949; 94 Stat. 2024; Nov. 29,
1999, 113 Stat. 1536, 1501A-580; Nov. 2, 2002, 116 Stat. 1902; Aug. 12, 2008, 122 Stat.
3014.)
§ 18 (15 U.S.C. § 1068). Refusal, cancellation, or restriction of registration;
concurrent use
In such proceedings the Director may refuse to register the opposed mark, may
cancel the registration, in whole or in part, may modify the application or registration
by limiting the goods or services specified therein, may otherwise restrict or rectify
with respect to the register the registration of a registered mark, may refuse to
register any or all of several interfering marks, or may register the mark or marks for
the person or persons entitled thereto, as the rights of the parties under this chapter
may be established in the proceedings: Provided, That in the case of the registration
of any mark based on concurrent use, the Director shall determine and fix the
conditions and limitations provided for in subsection (d) of section 1052 of this title.
However, no final judgment shall be entered in favor of an applicant under section
1051(b) of this title before the mark is registered, if such applicant cannot prevail
without establishing constructive use pursuant to section 1057(c) of this title.
(Amended Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 19 (15 U.S.C. § 1069). Applicability, in inter partes proceeding, of equitable
principles of laches, estoppel and acquiescence
In all inter partes proceedings equitable principles of laches, estoppel, and
acquiescence, where applicable, may be considered and applied.
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3941.)
§ 20 (15 U.S.C. § 1070). Appeal from examiner to Trademark Trial and Appeal
Board
An appeal may be taken to the Trademark Trial and Appeal Board from any final
decision of the examiner in charge of the registration of marks upon the payment of
the prescribed fee.
(Amended Aug. 8, 1958, 72 Stat. 540.)
§ 21 (15 U.S.C. § 1071). Appeal to courts
(a) Persons entitled to appeal; United States Court of Appeals for the Federal
Circuit; waiver of civil action; election of civil action by adverse party; procedure.
(1) An applicant for registration of a mark, party to an interference proceeding, party
to an opposition proceeding, party to an application to register as a lawful concurrent
user, party to a cancellation proceeding, a registrant who has filed an affidavit as
provided in section 1058 of this title, or an applicant for renewal, who is dissatisfied
with the decision of the Director or Trademark
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Trial and Appeal Board, may appeal to the United States Court of Appeals for the
Federal Circuit thereby waiving his right to proceed under subsection (b) of this
section: Provided, That such appeal shall be dismissed if any adverse party to the
proceeding, other than the Director, shall, within twenty days after the appellant has
filed notice of appeal according to paragraph (2) of this subsection, files notice with
the Director that he elects to have all further proceedings conducted as provided in
subsection (b) of this section. Thereupon the appellant shall have thirty days
thereafter within which to file a civil action under subsection (b) of this section, in
default of which the decision appealed from shall govern the further proceedings in
the case.
(2) When an appeal is taken to the United States Court of Appeals for the Federal
Circuit, the appellant shall file in the Patent and Trademark Office a written notice of
appeal directed to the Director, within such time after the date of the decision from
which the appeal is taken as the Director prescribes, but in no case less than 60
days after that date.
(3) The Director shall transmit to the United States Court of Appeals for the
Federal Circuit a certified list of the documents comprising the record in the
Patent and Trademark Office. The court may request that the Director forward
the original or certified copies of such documents during pendency of the appeal.
In an ex parte case, the Director shall submit to that court a brief explaining the
grounds for the decision of the Patent and Trademark Office, addressing all the
issues involved in the appeal. The court shall, before hearing an appeal, give
notice of the time and place of the hearing to the Director and the parties in the
appeal.
(4) The United States Court of Appeals for the Federal Circuit shall review the
decision from which the appeal is taken on the record before the Patent and
Trademark Office. Upon its determination the court shall issue its mandate and
opinion to the Director, which shall be entered of record in the Patent and
Trademark Office and shall govern the further proceedings in the case. However,
no final judgment shall be entered in favor of an applicant under section 1051(b)
of this title before the mark is registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 1057(c) of this title.
(b) Civil action; persons entitled to; jurisdiction of court; status of Director;
procedure.
(1) Whenever a person authorized by subsection (a) of this section to appeal to the
United States Court of Appeals for the Federal Circuit is dissatisfied with the decision
of the Director or Trademark Trial and Appeal Board, said person may, unless
appeal has been taken to said United States Court of Appeals for the Federal Circuit,
have remedy by a civil action if commenced within such time after such decision, not
less than sixty days, as the Director appoints or as provided in subsection (a) of this
section. The court may adjudge that an applicant is entitled to a registration upon the
application involved, that a registration involved should be canceled, or such other
matter as the issues in the proceeding require, as the facts in the case may appear.
Such adjudication shall authorize the Director to take any necessary action, upon
compliance with the requirements of law. However, no final judgment shall be
entered in favor of an applicant under section 1051(b) of this title before the mark is
registered, if such applicant cannot prevail without establishing constructive use
pursuant to section 1057(c) of this title.
(2) The Director shall not be made a party to an inter partes proceeding under this
subsection, but he shall be notified of the filing of the complaint by the clerk of the
court in which it is filed and shall have the right to intervene in the action.
(3) In any case where there is no adverse party, a copy of the complaint shall be
served on the Director, and, unless the court finds the expenses to be unreasonable,
all the expenses of the proceeding shall be paid by the party bringing the case,
whether the final decision is in favor of such party or not. In suits brought hereunder,
the record in the Patent and Trademark Office shall be admitted on motion of any
party, upon such terms and conditions as to costs, expenses, and the further crossexamination
of the witnesses as the court imposes, without
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prejudice to the right of any party to take further testimony. The testimony and
exhibits of the record in the Patent and Trademark Office, when admitted, shall have
the same effect as if originally taken and produced in the suit.
(4) Where there is an adverse party, such suit may be instituted against the party in
interest as shown by the records of the Patent and Trademark Office at the time of
the decision complained of, but any party in interest may become a party to the
action. If there be adverse parties residing in a plurality of districts not embraced
within the same State, or an adverse party residing in a foreign country, the United
States District Court for the District of Columbia shall have jurisdiction and may issue
summons against the adverse parties directed to the marshal of any district in which
any adverse party resides. Summons against adverse parties residing in foreign
countries may be served by publication or otherwise as the court directs.
(Amended July 19, 1952, 66 Stat. 814; Aug. 8, 1958, 72 Stat. 540; Oct. 9, 1962, 76 Stat. 771;
Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Apr. 2, 1982, 96 Stat. 49; Nov. 8,
1984, 98 Stat. 3363; Nov. 16, 1988, 102 Stat. 3942; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 22 (15 U.S.C. § 1072). Registration as notice
Registration of a mark on the principal register provided by this chapter or under the
Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of
the registrant’s claim of ownership thereof.
TITLE II - THE SUPPLEMENTAL REGISTER
§ 23 (15 U.S.C. § 1091). Filing and registration for foreign use
(a) In addition to the principal register, the Director shall keep a continuation of the
register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled
“An Act to give effect to certain provisions of the convention for the protection of
trademarks and commercial names, made and signed in the city of Buenos Aires, in
the Argentine Republic, August 20, 1910, and for other purposes,” to be called the
supplemental register. All marks capable of distinguishing applicant’s goods or
services and not registrable on the principal register herein provided, except those
declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section
1052 of this title, which are in lawful use in commerce by the owner thereof, on or in
connection with any goods or services may be registered on the supplemental
register upon the payment of the prescribed fee and compliance with the provisions
of subsection