US (United States) Code. Title 15. Chapter 22: Trademarks

Codificación normativa de EEUU (Estados Unidos). Legislación federal estadounidense # Commerce and Trade

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15 USC CHAPTER 22 - TRADEMARKS 01/06/03

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TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

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-HEAD-

CHAPTER 22 - TRADEMARKS

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SUBCHAPTER I - THE PRINCIPAL REGISTER

Sec.

1051. Application for registration; verification.

(a) Application for use of trademark.

(b) Application for bona fide intention to use

trademark.

(c) Amendment of application under subsection (b) to

conform to requirements of subsection (a).

(d) Verified statement that trademark is used in

commerce.

(e) Designation of resident for service of process

and notices.

1052. Trademarks registrable on principal register; concurrent

registration.

1053. Service marks registrable.

1054. Collective marks and certification marks registrable.

1055. Use by related companies affecting validity and registration.

1056. Disclaimer of unregistrable matter.

(a) Compulsory and voluntary disclaimers.

(b) Prejudice of rights.

1057. Certificates of registration.

(a) Issuance and form.

(b) Certificate as prima facie evidence.

(c) Application to register mark considered

constructive use.

(d) Issuance to assignee.

(e) Surrender, cancellation, or amendment by

registrant.

(f) Copies of Patent and Trademark Office records as

evidence.

(g) Correction of Patent and Trademark Office

mistake.

(h) Correction of applicant's mistake.

1058. Duration.

(a) In general.

(b) Affidavit of continuing use.

(c) Grace period for submissions; deficiency.

(d) Notice of affidavit requirement.

(e) Notification of acceptance or refusal of

affidavits.

(f) Designation of resident for service of process

and notices.

1059. Renewal of registration.

(a) Period of renewal; time for renewal.

(b) Notification of refusal of renewal.

(c) Designation of resident for service of process

and notices.

1060. Assignment.

1061. Execution of acknowledgments and verifications.

1062. Publication.

(a) Examination and publication.

(b) Refusal of registration; amendment of

application; abandonment.

(c) Republication of marks registered under prior

acts.

1063. Opposition to registration.

1064. Cancellation of registration.

1065. Incontestability of right to use mark under certain

conditions.

1066. Interference; declaration by Director.

1067. Interference, opposition, and proceedings for concurrent use

registration or for cancellation; notice; Trademark Trial and

Appeal Board.

1068. Action of Director in interference, opposition, and

proceedings for concurrent use registration or for cancellation.

1069. Application of equitable principles in inter partes

proceedings.

1070. Appeals to Trademark Trial and Appeal Board from decisions of

examiners.

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.

(b) Civil action; persons entitled to; jurisdiction

of court; status of Director; procedure.

1072. Registration as constructive notice of claim of ownership.

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

1091. Supplemental register.

(a) Marks registerable.

(b) Application and proceedings for registration.

(c) Nature of mark.

1092. Publication; not subject to opposition; cancellation.

1093. Registration certificates for marks on principal and

supplemental registers to be different.

1094. Provisions of chapter applicable to registrations on

supplemental register.

1095. Registration on principal register not precluded.

1096. Registration on supplemental register not used to stop

importations.

SUBCHAPTER III - GENERAL PROVISIONS

1111. Notice of registration; display with mark; recovery of

profits and damages in infringement suit.

1112. Classification of goods and services; registration in

plurality of classes.

1113. Fees.

(a) Applications; services; materials.

(b) Waiver; Indian products.

1114. Remedies; infringement; innocent infringement by printers and

publishers.

1115. Registration on principal register as evidence of exclusive

right to use mark; defenses.

(a) Evidentiary value; defenses.

(b) Incontestability; defenses.

1116. Injunctive relief.

(a) Jurisdiction; service.

(b) Transfer of certified copies of court papers.

(c) Notice to Director.

(d) Civil actions arising out of use of counterfeit

marks.

1117. Recovery for violation of rights.

(a) Profits; damages and costs; attorney fees.

(b) Treble damages for use of counterfeit mark.

(c) Statutory damages for use of counterfeit marks.

(d) Statutory damages for violation of section

1125(d)(1).

1118. Destruction of infringing articles.

1119. Power of court over registration.

1120. Civil liability for false or fraudulent registration.

1121. Jurisdiction of Federal courts; State and local requirements

that registered trademarks be altered or displayed differently;

prohibition.

1121a. Transferred.

1122. Liability of United States and States, and instrumentalities

and officials thereof.

(a) Waiver of sovereign immunity by the United

States.

(b) Waiver of sovereign immunity by States.

(c) Remedies.

1123. Rules and regulations for conduct of proceedings in Patent

and Trademark Office.

1124. Importation of goods bearing infringing marks or names

forbidden.

1125. False designations of origin, false descriptions, and

dilution forbidden.

(a) Civil action.

(b) Importation.

(c) Remedies for dilution of famous marks.

(d) Cyberpiracy prevention.

1126. International conventions.

(a) Register of marks communicated by international

bureaus.

(b) Benefits of section to persons whose country of

origin is party to convention or treaty.

(c) Prior registration in country of origin; country

of origin defined.

(d) Right of priority.

(e) Registration on principal or supplemental

register; copy of foreign registration.

(f) Domestic registration independent of foreign

registration.

(g) Trade or commercial names of foreign nationals

protected without registration.

(h) Protection of foreign nationals against unfair

competition.

(i) Citizens or residents of United States entitled

to benefits of section.

1127. Construction and definitions; intent of chapter.

1128. National Intellectual Property Law Enforcement Coordination

Council.

(a) Establishment.

(b) Duties.

(c) Consultation required.

(d) Non-derogation.

(e) Report.

(f) Funding.

1129. Cyberpiracy protections for individuals.

SUBCHAPTER IV - THE MADRID PROTOCOL

1141. Definitions.

1141a. International applications based on United States

applications or registrations.

(a) In general.

(b) Qualified owners.

1141b. Certification of the international application.

(a) Certification procedure.

(b) Transmittal.

1141c. Restriction, abandonment, cancellation, or expiration of a

basic application or basic registration.

1141d. Request for extension of protection subsequent to

international registration.

1141e. Extension of protection of an international registration to

the United States under the Madrid Protocol.

(a) In general.

(b) If the United States is office of origin.

1141f. Effect of filing a request for extension of protection of an

international registration to the United States.

(a) Requirement for request for extension of

protection.

(b) Effect of proper filing.

1141g. Right of priority for request for extension of protection to

the United States.

1141h. Examination of and opposition to request for extension of

protection; notification of refusal.

(a) Examination and opposition.

(b) Notification of refusal.

(c) Notice to International Bureau.

(d) Designation of agent for service of process.

1141i. Effect of extension of protection.

(a) Issuance of extension of protection.

(b) Effect of extension of protection.

1141j. Dependence of extension of protection to the United States

on the underlying international registration.

(a) Effect of cancellation of international

registration.

(b) Effect of failure to renew international

registration.

(c) Transformation of an extension of protection into

a United States application.

1141k. Affidavits and fees.

(a) Required affidavits and fees.

(b) Contents of affidavit.

(c) Notification.

(d) Service of notice or process.

1141l. Assignment of an extension of protection.

1141m. Incontestability.

1141n. Rights of extension of protection.

EFFECTIVE DATE

This chapter, act July 5, 1946, ch. 540, 60 Stat. 427, became

effective one year from July 5, 1946, and repealed chapter 3 of

this title as of that date. See notes under section 1051 of this

title.

PRIOR LAWS

The Trade-Mark Act of 1905 superseded the Trade-Mark Act of Mar.

3, 1881, ch. 138, 21 Stat. 502, entitled ''An Act to authorize the

registration of trade-marks and protect the same,'' and also act

Aug. 5, 1882, ch. 393, 22 Stat. 298, entitled ''An Act relating to

the registration of trade marks''. Former section 109 of this

title repealed all inconsistent acts and parts of acts, except so

far as they might apply to certificates of registration issued

under the Trade-Mark Act of Mar. 3, 1881, ch. 138, and act Aug. 5,

1882, ch. 393.

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CHAPTER REFERRED TO IN OTHER SECTIONS

This chapter is referred to in section 1129 of this title; title

18 section 2320; title 19 section 1337; title 36 section 220506;

title 48 section 1643.

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15 USC SUBCHAPTER I - THE PRINCIPAL REGISTER 01/06/03

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TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

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-HEAD-

SUBCHAPTER I - THE PRINCIPAL REGISTER

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SUBCHAPTER REFERRED TO IN OTHER SECTIONS

This subchapter is referred to in title 19 section 1681a.

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15 USC Sec. 1051 01/06/03

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TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1051. Application for registration; verification

-STATUTE-

(a) Application for use of trademark

(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 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

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(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) Application for bona fide intention to use trademark

(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

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(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;

(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) Amendment of application under subsection (b) to conform to

requirements of subsection (a)

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) Verified statement that trademark is used in commerce

(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.

(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) Designation of resident for service of process and notices

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 1, 60 Stat. 427; Pub. L.

87-772, Sec. 1, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93-596, Sec. 1,

Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 103,

Nov. 16, 1988, 102 Stat. 3935; Pub. L. 105-330, title I, Sec. 103,

title II, Sec. 201(a), Oct. 30, 1998, 112 Stat. 3064, 3069; Pub. L.

106-113, div. B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)),

Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Pub. L. 107-273, div. C,

title III, Sec. 13207(b)(1), (2), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

PRIOR PROVISIONS

Subsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, Sec. 1,

2, 33 Stat. 724; May 4, 1906, ch. 2081, Sec. 1, 34 Stat. 168; Feb.

18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, Sec. 4, 46

Stat. 155; June 10, 1938, ch. 332, Sec. 1, 52 Stat. 638.

Subsec. (d) is from act Feb. 20, 1905, ch. 592, Sec. 3, 33 Stat.

725.

AMENDMENTS

2002 - Subsec. (d)(1). Pub. L. 107-273, Sec. 13207(b)(1), in

first sentence, substituted ''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.'' for ''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.''

Subsec. (e). Pub. L. 107-273, Sec. 13207(b)(2), amended subsec.

(e) generally. Prior to amendment, subsec. (e) required applicant

not domiciled in United States to designate name and address of

some person resident in the United States on whom may be served

notices or process in proceedings affecting the mark and provided

that notices or process be served by leaving with such person or

mailing to him a copy, or upon Director if designated person cannot

be found.

1999 - Subsecs. (a), (b), (d), (e). Pub. L. 106-113 substituted

''Director'' for ''Commissioner'' wherever appearing.

1998 - Subsec. (a). Pub. L. 105-330, Sec. 103(a), amended subsec.

(a) generally. Prior to amendment, subsec. (a) related to

application by owner of a trademark used in commerce to register

the trademark by filing in the Patent and Trademark Office a

written application in prescribed form and verified by applicant,

by paying prescribed fee, and by complying with prescribed rules or

regulations.

Subsec. (b). Pub. L. 105-330, Sec. 103(b), amended subsec. (b)

generally. Prior to amendment, subsec. (b) related to application,

by person with bona fide intention, under circumstances showing

good faith, to use a trademark in commerce, to register trademark

by filing in the Patent and Trademark Office a written application

in prescribed form and verified by applicant, by paying prescribed

fee, and by complying with prescribed rules or regulations.

Subsec. (d)(1). Pub. L. 105-330, Sec. 201(a)(1)(A), inserted

''and,'' after ''specifying the date of the applicant's first use

of the mark in commerce''.

Pub. L. 105-330, Sec. 201(a)(1)(B), which directed the striking

out of ''and, the mode or manner in which the mark is used on or in

connection with such goods or services'', was executed by striking

out '', and the mode or manner in which the mark is used on or in

connection with such goods or services'' after ''notice of

allowance on or in connection with which the mark is used in

commerce'', to reflect the probable intent of Congress.

Subsec. (d)(4). Pub. L. 105-330, Sec. 103(c), amended par. (4)

generally. Prior to amendment, par. (4) read as follows: ''The

failure to timely file a verified statement of use under this

subsection shall result in abandonment of the application.''

1988 - Subsec. (a). Pub. L. 100-667, Sec. 103(1) to (7), inserted

''(a)'' preceding introductory provisions and substituted ''may

apply to register his or her'' for ''may register his'',

redesignated former subsecs. (a) to (c) as pars. (1) to (3),

respectively, redesignated former pars. (1) to (3) as subpars. (A)

to (C), respectively, in par. (1)(A), substituted ''used on or in

connection with'' for ''applied to'' and ''goods on or in

connection'' for ''goods in connection'', in par. (1)(C), struck

out ''actually'' after ''the mark as'', and in par. (2),

substituted ''prescribed'' for ''filing''.

Subsecs. (b), (c). Pub. L. 100-667, Sec. 103(3), (9), added

subsecs. (b) and (c) and redesignated former subsecs. (b) and (c)

as pars. (2) and (3), respectively, of subsec. (a).

Subsecs. (d), (e). Pub. L. 100-667, Sec. 103(8), (9), added

subsec. (d) and redesignated former subsec. (d) as (e).

1975 - Subsecs. (a), (b), (d). Pub. L. 93-596 substituted

''Patent and Trademark Office'' for ''Patent Office''.

1962 - Subsec. (a)(1). Pub. L. 87-772 substituted ''as to be

likely, when applied to the goods of such other person, to cause

confusion, or to cause mistake, or to deceive'' for ''as might be

calculated to deceive'', and struck out ''or services'' after ''use

by others, the goods''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Pub. L. 105-330, title I, Sec. 109(b), Oct. 30, 1998, 112 Stat.

3069, provided that: ''This title (see Short Title of 1998

Amendment note below) and the amendments made by this title shall

apply to any application for registration of a trademark pending

on, or filed on or after, the effective date of this Act (probably

should be ''this title'', see section 110 of Pub. L. 105-330, set

out as an Effective Date of 1998 Amendment note below).''

Pub. L. 105-330, title I, Sec. 110, Oct. 30, 1998, 112 Stat.

3069, provided that: ''This title (see Short Title of 1998

Amendment note below) and the amendments made by this title shall

take effect -

''(1) on the date that is 1 year after the date of the

enactment of this Act (Oct. 30, 1998), or

''(2) upon the entry into force of the Trademark Law Treaty

with respect to the United States (Aug. 12, 2000),

whichever occurs first.''

Pub. L. 105-330, title II, Sec. 201(b), Oct. 30, 1998, 112 Stat.

3070, provided that: ''The amendments made by this section

(amending this section and sections 1052, 1057, 1064, 1091, 1094,

1113 to 1115, 1121, and 1124 of this title) shall take effect on

the date of enactment of this Act (Oct. 30, 1998), and shall apply

only to any civil action filed or proceeding before the United

States Patent and Trademark Office commenced on or after such date

relating to the registration of a mark.''

EFFECTIVE DATE OF 1988 AMENDMENT

Section 136 of title I of Pub. L. 100-667 provided that: ''This

title and the amendments made by this title (see Short Title of

1988 Amendment note below) shall become effective on the date which

is one year after the date of enactment of this Act (Nov. 16,

1988).''

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

EFFECTIVE DATE

Section 46(a) of act July 5, 1946, provided that this chapter

shall be in force and take effect one year from July 5, 1946.

SHORT TITLE OF 2002 AMENDMENT

Pub. L. 107-273, div. C, title III, Sec. 13401, Nov. 2, 2002,

116 Stat. 1913, provided that: ''This subtitle (subtitle D (Sec.

13401-13403) of title III of div. C of Pub. L. 107-273, enacting

subchapter IV of this chapter and provisions set out as a note

under section 1141 of this title) may be cited as the 'Madrid

Protocol Implementation Act'.''

SHORT TITLE OF 1999 AMENDMENTS

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III, Sec.

3001(a)), Nov. 29, 1999, 113 Stat. 1536, 1501A-545, provided that:

''This title (enacting section 1129 of this title, amending

sections 1114, 1116, 1117, 1125, and 1127 of this title, section

470a of Title 16, Conservation, and section 1338 of Title 28,

Judiciary and Judicial Procedure, and enacting provisions set out

as notes under this section and sections 1117 and 1125 of this

title) may be cited as the 'Anticybersquatting Consumer Protection

Act'.''

Pub. L. 106-43, Sec. 1, Aug. 5, 1999, 113 Stat. 218, provided

that: ''This Act (amending sections 1052 to 1054, 1060, 1063, 1064,

1091, 1092, 1114, 1116 to 1118, 1122, and 1124 to 1127 of this

title, enacting provisions set out as a note under section 1052 of

this title, and amending provisions set out as a note under this

section) may be cited as the 'Trademarks Amendments Act of 1999'.''

SHORT TITLE OF 1998 AMENDMENT

Pub. L. 105-330, title I, Sec. 101, Oct. 30, 1998, 112 Stat.

3064, provided that: ''This title (amending this section and

sections 1058 to 1060, 1062, and 1126 of this title and enacting

provisions set out as notes under this section and sections 1058

and 1059 of this title) may be cited as the 'Trademark Law Treaty

Implementation Act'.''

SHORT TITLE OF 1996 AMENDMENT

Pub. L. 104-98, Sec. 1, Jan. 16, 1996, 109 Stat. 985, provided

that: ''This Act (amending sections 1125 and 1127 of this title and

enacting provisions set out as a note under section 1125 of this

title) may be cited as the 'Federal Trademark Dilution Act of

1995'.''

SHORT TITLE OF 1992 AMENDMENT

Pub. L. 102-542, Sec. 1, Oct. 27, 1992, 106 Stat. 3567, provided

that: ''This Act (enacting section 1122 of this title, amending

sections 1114, 1125, and 1127 of this title, and enacting

provisions set out as a note under section 1114 of this title) may

be cited as the 'Trademark Remedy Clarification Act'.''

SHORT TITLE OF 1988 AMENDMENT

Section 101 of title I of Pub. L. 100-667 provided that: ''This

title (amending this section and sections 1052 to 1060, 1062 to

1066, 1068, 1069, 1071, 1091, 1092, 1094, 1095, 1111, 1112, 1114 to

1118, 1121, and 1125 to 1127 of this title, redesignating section

1121a of this title as section 1121(b) of this title, and enacting

provisions set out as notes under sections 1051 and 1058 of this

title) may be cited as the 'Trademark Law Revision Act of 1988'.''

SHORT TITLE OF 1984 AMENDMENT

Pub. L. 98-620, title I, Sec. 101, Nov. 8, 1984, 98 Stat. 3335,

provided that: ''This title (amending sections 1064 and 1127 of

this title and enacting provisions set out as a note under section

1064 of this title) may be cited as the 'Trademark Clarification

Act of 1984'.''

SHORT TITLE

Act July 5, 1946, ch. 540, 60 Stat. 427, which is classified to

this chapter, is popularly known as the ''Lanham Act'' and also as

the ''Trademark Act of 1946''.

REPEAL OF INCONSISTENT PROVISIONS; CERTAIN PROVISIONS NOT AFFECTED

Section 46(a) of act July 5, 1946, as amended by Pub. L. 106-43,

Sec. 6(b), Aug. 5, 1999, 113 Stat. 220, provided in part that all

acts and parts of acts inconsistent with this chapter are repealed

effective one year from July 5, 1946, but that ''nothing contained

in this Act (this chapter) shall be construed as limiting,

restricting, modifying, or repealing any statute in force on the

effective date of this Act (July 5, 1947) which does not relate to

trademarks, or as restricting or increasing the authority of any

Federal department or regulatory agency except as may be

specifically provided in this Act (this chapter).''

Section 48 of act July 5, 1946, provided that: ''Section 4 of the

Act of January 5, 1905 (U.S.C., title 36, sec. 4), as amended,

entitled 'An Act to incorporate the National Red Cross' (see 18

U.S.C. 706), and section 7 of the Act of June 15, 1916 (U.S.C.,

title 36, sec. 27), entitled 'An Act to incorporate the Boy Scouts

of America, and for other purposes' (see 36 U.S.C. 30905), and the

Act of June 20, 1936 (U.S.C., title 22, sec. 248), entitled 'An Act

to prohibit the commercial use of the coat of arms of the Swiss

Confederation' (see 18 U.S.C. 708), are not repealed or affected by

this Act.''

SAVINGS PROVISION

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III, Sec. 3008),

Nov. 29, 1999, 113 Stat. 1536, 1501A-551, provided that: ''Nothing

in this title (see Short Title of 1999 Amendments note above) shall

affect any defense available to a defendant under the Trademark Act

of 1946 (15 U.S.C. 1051 et seq.) (including any defense under

section 43(c)(4) of such Act (15 U.S.C. 1125(c)(4)) or relating to

fair use) or a person's right of free speech or expression under

the first amendment of the United States Constitution.''

SEPARABILITY

Section 50 of act July 5, 1946, provided that: ''If any provision

of this Act (this chapter) or the application of such provision to

any person or circumstance is held invalid, the remainder of the

Act shall not be affected thereby.''

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce to Secretary of Commerce, with

certain exceptions, see Reorg. Plan No. 5 of 1950, Sec. 1, 2, eff.

May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix

to Title 5, Government Organization and Employees.

-MISC5-

PENDING PROCEEDINGS AND EXISTING REGISTRATION AND RIGHTS UNDER

PRIOR ACTS

Section 46(a) of act July 5, 1946, provided in part that this

chapter, except as otherwise specifically provided therein, shall

not affect any suit, proceeding or appeal pending on the effective

date of this chapter and that the repeal of all inconsistent acts

''shall not affect the validity of registrations granted or applied

for under any of said Acts prior to the effective date of this Act

(July 5, 1947), or rights or remedies thereunder except as provided

in sections 8, 12, 14, 15, and 47 of this Act (sections 1058, 1062,

1064, and 1065 of this title and note under this section).''

Sections 46(b) and 47 of act July 5, 1946, provided:

''(b) Registrations now existing under the Act of March 3, 1881,

or the Act of February 20, 1905 (sections 81 to 109 of this title),

shall continue in full force and effect for the unexpired terms

thereof and may be renewed under the provisions of section 9 of

this Act (section 1059 of this title). Such registrations and the

renewals thereof shall be subject to and shall be entitled to the

benefits of the provisions of this Act (this chapter) to the same

extent and with the same force and effect as though registered on

the principal register established by this Act (this chapter)

except as limited in sections 8, 12, 14, and 15 of this Act

(sections 1058, 1062, 1064, 1065, of this title). Marks registered

under the 'ten-year proviso' of section 5 of the Act of February

20, 1905, as amended (former section 85 of this title), shall be

deemed to have become distinctive of the registrant's goods in

commerce under paragraph (f) of section 2 of this Act (section 1052

of this title) and may be renewed under section 9 hereof (section

1059 of this title) as marks coming within said paragraph.

''Registrations now existing under the Act of March 19, 1920

(former sections 121 to 128 of this title), shall expire six months

after the effective date of this Act (July 5, 1947), or twenty

years from the dates of their registrations, whichever date is

later. Such registrations shall be subject to and entitled to the

benefits of the provisions of this Act (this chapter) relating to

marks registered on the supplemental register established by this

Act (this chapter), and may not be renewed unless renewal is

required to support foreign registrations. In that event renewal

may be effected on the supplemental register under the provisions

of section 9 of this Act (section 1059 of this title).

''Marks registered under previous Acts may, if eligible, also be

registered under this Act (this chapter).

''Sec. 47. (a) All applications for registration pending in the

Patent Office at the effective date of this Act (July 5, 1947) may

be amended, if practicable, to bring them under the provisions of

this Act (this chapter). The prosecution of such applications so

amended and the grant of registrations thereon shall be proceeded

with in accordance with the provisions of this Act (this chapter).

If such amendments are not made, the prosecution of said

applications shall be proceeded with and registrations thereon

granted in accordance with the Acts under which said applications

were filed, and said Acts are hereby continued in force to this

extent and for this purpose only, notwithstanding the foregoing

general repeal thereof.

''(b) In any case in which an appeal is pending before the United

States Court of Customs and Patent Appeals or any United States

Circuit Court of Appeals or the United States Court of Appeals for

the District of Columbia or the United States Supreme Court at the

effective date of this Act (July 5, 1947), the court, if it be of

the opinion that the provisions of this Act (this chapter) are

applicable to the subject matter of the appeal, may apply such

provision or may remand the case to the Commissioner (now Director)

or to the district court for the taking of additional evidence or a

new trial or for reconsideration of the decision on the record as

made, as the appellate court may deem proper.''

Section 49 of said act July 5, 1946, provided: ''Nothing herein

(in this chapter) shall adversely affect the rights or the

enforcement of rights in marks acquired in good faith prior to the

effective date of this Act (July 5, 1947).''

EMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING TRADEMARK CASES

Relief as to filing date of trademark application or registration

and excusal of delayed fees or actions affected by postal situation

beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970,

see note set out under section 111 of Title 35, Patents.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1060, 1062, 1063, 1068,

1071, 1091, 1092, 1094, 1126, 1141j of this title.

-CITE-

15 USC Sec. 1052 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1052. Trademarks registrable on principal register; concurrent

registration

-STATUTE-

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 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 in this chapter

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 December 8, 1993.

A mark which when used would cause dilution under section 1125(c)

of this title may be refused registration only pursuant to a

proceeding brought under section 1063 of this title. A

registration for a mark which when used would cause dilution under

section 1125(c) of this title may be canceled pursuant to a

proceeding brought under either section 1064 of this title or

section 1092 of this title.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 2, 60 Stat. 428; Pub. L.

87-772, Sec. 2, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93-596, Sec. 1,

Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 104,

Nov. 16, 1988, 102 Stat. 3937; Pub. L. 103-182, title III, Sec.

333(a), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 103-465, title V,

Sec. 522, Dec. 8, 1994, 108 Stat. 4982; Pub. L. 105-330, title II,

Sec. 201(a)(2), (12), Oct. 30, 1998, 112 Stat. 3069, 3070; Pub. L.

106-43, Sec. 2(a), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106-113,

div. B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29,

1999, 113 Stat. 1536, 1501A-583.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881, and February 20, 1905, referred to in subsec.

(d), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and Feb. 20,

1905, ch. 592, 33 Stat. 724, which were repealed insofar as

inconsistent with this chapter by act July 5, 1946, ch. 540, Sec.

46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections

81 to 109 of this title.

-MISC2-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 5, 33 Stat. 725; Mar. 2, 1907,

ch. 2573, Sec. 1, 34 Stat. 1251; Feb. 18, 1911, ch. 113, 36 Stat.

918; Jan. 8, 1913, ch. 7, 37 Stat. 649; Mar. 19, 1920, ch. 104,

Sec. 9, 41 Stat. 535; June 7, 1924, ch. 341, 43 Stat. 647.

AMENDMENTS

1999 - Pub. L. 106-43 inserted concluding provisions.

Subsecs. (d), (f). Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

1998 - Pub. L. 105-330, Sec. 201(a)(12), substituted

''trademark'' for ''trade-mark'' in introductory provisions.

Subsec. (e). Pub. L. 105-330, Sec. 201(a)(2)(A), struck out

''or'' before ''(4)'' and inserted '', or (5) comprises any matter

that, as a whole, is functional'' before period at end.

Subsec. (f). Pub. L. 105-330, Sec. 201(a)(2)(B), substituted

''subsections (a), (b), (c), (d), (e)(3), and (e)(5)'' for

''paragraphs (a), (b), (c), (d), and (e)(3)''.

1994 - Subsec. (a). Pub. L. 103-465 amended subsec. (a)

generally. Prior to amendment, subsec. (a) read as follows:

''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.''

1993 - Subsec. (e). Pub. L. 103-182, Sec. 333(a)(1), amended

subsec. (e) generally. Prior to amendment, subsec. (e) read as

follows: ''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, or (2) when used on or in

connection with the goods of the applicant is primarily

geographically descriptive or deceptively misdescriptive of them,

except as indications of regional origin may be registrable under

section 1054 of this title, or (3) is primarily merely a surname.''

Subsec. (f). Pub. L. 103-182, Sec. 333(a)(2), substituted ''(d),

and (e)(3)'' for ''and (d)'' and inserted at end ''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 December 8,

1993.''

1988 - Subsec. (d). Pub. L. 100-667, Sec. 104(1), amended subsec.

(d) generally. Prior to amendment, subsec. (d) read as follows:

''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 applied to the goods of the

applicant, to cause confusion, or to cause mistake, or to deceive:

Provided, That when the Commissioner 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 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 (i) the earliest of the

filing dates of the applications pending or of any registration

issued under this chapter; or (ii) 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 effect on that

date; or (iii) July 5, 1947, in the case of applications filed

under the Act of February 20, 1905, and registered after July 5,

1947. Concurrent registrations may also be issued by the

Commissioner 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 Commissioner shall prescribe conditions and limitations as to

the mode or place of use of the mark or the goods in connection

with which such mark is registered to the respective persons.''

Subsec. (e). Pub. L. 100-667, Sec. 104(2), substituted ''used on

or in connection with'' for ''applied to'' in two places.

Subsec. (f). Pub. L. 100-667, Sec. 104(3), substituted ''used on

or in connection with'' for ''applied to'' and ''five years before

the date on which the claim of distinctiveness is made'' for ''five

years next preceding the date of the filing of the application for

its registration''

1975 - Subsec. (d). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

1962 - Subsec. (d). Pub. L. 87-772, among other changes,

substituted provisions authorizing the issuance of concurrent

registrations to persons when they have become entitled to use such

marks as a result of their concurrent lawful use in commerce prior

to the earliest of the filing dates of the applications pending or

of any registration issued under this chapter, or July 5, 1947, in

the case of registrations previously issued under the act of Mar.

3, 1881, or Feb. 20, 1905, and continuing in full force and effect

on that date, or July 5, 1947, in the case of applications under

the act of Feb. 20, 1905, and registered after July 5, 1947, for

provisions which restricted issuance of concurrent registrations to

persons entitled to use such mark as a result of their concurrent

lawful use thereof in commerce prior to any of the filing dates of

the applications involved, and provisions directing that issuance

of the mark be upon such conditions and limitations as to the mode

or place of use of the marks or the goods in connection with which

such marks are used, for provisions which required issuance under

conditions and limitations as to the mode or place of use of the

goods in connection with which such registrations may be granted,

and eliminated provisions which limited confusion, mistake, or

deception to purchasers, required written notice of applications

for concurrent registrations and of hearings thereon, and

publication in the Official Gazette upon a decision to grant such a

registration and permitted a court to order such a registration

under section 4915 of the Revised Statutes.

EFFECTIVE DATE OF 1999 AMENDMENTS

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

Pub. L. 106-43, Sec. 2(e), Aug. 5, 1999, 113 Stat. 218, provided

that: ''The amendments made by this section (amending this section

and sections 1063, 1064, and 1092 of this title) shall take effect

on the date of enactment of this Act (Aug. 5, 1999) and shall apply

only to any application for registration filed on or after January

16, 1996.''

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1994 AMENDMENT

Section 523 of title V of Pub. L. 103-465 provided that: ''The

amendments made by this subtitle (subtitle B (Sec. 521-523) of

title V of Pub. L. 103-465, amending this section and section 1127

of this title) take effect one year after the date on which the WTO

Agreement enters into force with respect to the United States (Jan.

1, 1995).''

EFFECTIVE DATE OF 1993 AMENDMENT

Section 335 of title III of Pub. L. 103-182 provided that:

''(a) In General. - Subject to subsections (b) and (c), the

amendments made by this subtitle (subtitle C (Sec. 331-335) of

title III of Pub. L. 103-182, enacting section 104A of Title 17,

Copyrights, amending this section, section 1091 of this title, and

section 104 of Title 35, Patents, and amending provisions set out

as a note under section 109 of Title 17) take effect on the date

the Agreement (North American Free Trade Agreement) enters into

force with respect to the United States (Jan. 1, 1994).

''(b) Section 331. - The amendments made by section 331 (amending

section 104 of Title 35) shall apply to all patent applications

that are filed on or after the date of the enactment of this Act

(Dec. 8, 1993): Provided, That an applicant for a patent, or a

patentee, may not establish a date of invention by reference to

knowledge or use thereof, or other activity with respect thereto,

in a NAFTA country, except as provided in sections 119 and 365 of

title 35, United States Code, that is earlier than the date of the

enactment of this Act.

''(c) Section 333. - The amendments made by section 333 (amending

this section and section 1091 of this title) shall apply only to

trademark applications filed on or after the date of the enactment

of this Act.''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce to Secretary of Commerce, with

certain exceptions, see Reorg. Plan No. 5 of 1950, Sec. 1, 2, eff.

May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix

to Title 5, Government Organization and Employees.

-MISC5-

URUGUAY ROUND AGREEMENTS: ENTRY INTO FORCE

The Uruguay Round Agreements, including the World Trade

Organization Agreement and agreements annexed to that Agreement, as

referred to in section 3511(d) of Title 19, Customs Duties, entered

into force with respect to the United States on Jan. 1, 1995. See

note set out under section 3511 of Title 19.

MARKS REGISTERED UNDER TEN-YEAR PROVISO OF TRADE-MARK ACT OF 1905

Marks registered under the ''ten-year proviso'' of section 5 of

the act of Feb. 20, 1905, as amended, deemed to have become

distinctive of the registrant's goods in commerce under par. (f) of

this section, see section 46(b) of act July 5, 1946, set out in

note under section 1051 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1051, 1064, 1068, 1091,

1094 of this title.

-CITE-

15 USC Sec. 1053 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1053. Service marks registrable

-STATUTE-

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 in this chapter 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 3, 60 Stat. 429; Pub. L.

100-667, title I, Sec. 105, Nov. 16, 1988, 102 Stat. 3938; Pub. L.

106-43, Sec. 6(b), Aug. 5, 1999, 113 Stat. 220.)

-MISC1-

AMENDMENTS

1999 - Pub. L. 106-43 substituted ''trademarks'' for

''trade-marks'' wherever appearing.

1988 - Pub. L. 100-667 struck out ''used in commerce'' after

''applicable, service marks'' and '', except when used so as to

represent falsely that the owner thereof makes or sells the goods

on which such mark is used. The Commissioner may establish a

separate register for such service marks'' after ''case of

trade-marks''.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1126 of this title.

-CITE-

15 USC Sec. 1054 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1054. Collective marks and certification marks registrable

-STATUTE-

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 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 4, 60 Stat. 429; Pub. L.

100-667, title I, Sec. 106, Nov. 16, 1988, 102 Stat. 3938; Pub. L.

106-43, Sec. 6(b), Aug. 5, 1999, 113 Stat. 220.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 1, 33 Stat. 724; May 4, 1906,

ch. 2081, Sec. 1, 34 Stat. 168; Feb. 18, 1909, ch. 144, 35 Stat.

628; Apr. 11, 1930, ch. 132, Sec. 4, 46 Stat. 155; June 10, 1938,

ch. 332, Sec. 1, 52 Stat. 638.

AMENDMENTS

1999 - Pub. L. 106-43 substituted ''trademarks'' for

''trade-marks'' wherever appearing.

1988 - Pub. L. 100-667 substituted ''origin,'' for ''origin used

in commerce,'' and ''except in the case of certification marks

when'' for ''except when'' and struck out after first sentence

''The Commissioner may establish a separate register for such

collective marks and certification marks.''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1052, 1064, 1126 of this

title.

-CITE-

15 USC Sec. 1055 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1055. Use by related companies affecting validity and

registration

-STATUTE-

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 5, 60 Stat. 429; Pub. L.

100-667, title I, Sec. 107, Nov. 16, 1988, 102 Stat. 3938.)

-MISC1-

AMENDMENTS

1988 - Pub. L. 100-667 inserted at end ''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.''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1056 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1056. Disclaimer of unregistrable matter

-STATUTE-

(a) Compulsory and voluntary disclaimers

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) Prejudice of rights

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 6, 60 Stat. 429; Pub. L.

87-772, Sec. 3, Oct. 9, 1962, 76 Stat. 769; Pub. L. 100-667, title

I, Sec. 108, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999,

113 Stat. 1536, 1501A-583.)

-MISC1-

AMENDMENTS

1999 - Subsec. (a). Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1988 - Subsec. (b). Pub. L. 100-667 substituted ''subsection

(e)'' for ''paragraph (d)''.

1962 - Pub. L. 87-772, among other changes, provided that an

applicant may voluntarily disclaim a component of a mark sought to

be registered.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-CITE-

15 USC Sec. 1057 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1057. Certificates of registration

-STATUTE-

(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.

(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) of this title

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 certificate 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 7, 60 Stat. 430; Aug. 17,

1950, ch. 733, 64 Stat. 459; Pub. L. 87-772, Sec. 4, Oct. 9, 1962,

76 Stat. 769; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949;

Pub. L. 100-667, title I, Sec. 109, Nov. 16, 1988, 102 Stat. 3938;

Pub. L. 105-330, title II, Sec. 201(a)(3), Oct. 30, 1998, 112 Stat.

3070; Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Subsecs. (a) and (c) are from acts Feb. 20, 1905, ch. 592, Sec.

11, 33 Stat. 727; Mar. 4, 1925, ch. 535, Sec. 3, 43 Stat. 1269.

Subsec. (e) is from act Mar. 19, 1920, ch. 104, Sec. 7, 41 Stat.

535.

Subsec. (f) is from act Mar. 4, 1925, ch. 535, Sec. 1, 43 Stat.

1268.

AMENDMENTS

1999 - Subsecs. (a), (d) to (h). Pub. L. 106-113 substituted

''Director'' for ''Commissioner'' wherever appearing.

1998 - Subsec. (a). Pub. L. 105-330 struck out second period at

end of first sentence.

1988 - Subsec. (b). Pub. L. 100-667, Sec. 109(1), amended subsec.

(b) generally. Prior to amendment, subsec. (b) read as follows:

''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 registration, registrant's ownership of the

mark, and of registrant's exclusive right to use the mark in

commerce in connection with the goods or services specified in the

certificate, subject to any conditions and limitations stated

therein.''

Subsec. (c). Pub. L. 100-667, Sec. 109(3), added subsec. (c).

Former subsec. (c) redesignated (d).

Subsec. (d). Pub. L. 100-667, Sec. 109(2), (4), redesignated

former subsec. (c) as (d) and substituted ''prescribed fee'' for

''fee herein provided''. Former subsec. (d) redesignated (e).

Subsec. (e). Pub. L. 100-667, Sec. 109(2), redesignated former

subsec. (d) as (e). Former subsec. (e) redesignated (f).

Subsec. (f). Pub. L. 100-667, Sec. 109(2), (5), redesignated

former subsec. (e) as (f) and substituted ''prescribed fee'' for

''fee required by law''. Former subsec. (f) redesignated (g).

Subsec. (g). Pub. L. 100-667, Sec. 109(2), redesignated former

subsec. (f) as (g). Former subsec. (g) redesignated (h).

Subsec. (h). Pub. L. 100-667, Sec. 109(2), (6), redesignated

former subsec. (g) as (h) and substituted ''prescribed fee'' for

''required fee''.

1975 - Subsecs. (a), (c) to (f). Pub. L. 93-596 substituted

''Patent and Trademark Office'' for ''Patent Office''.

1962 - Subsec. (a). Pub. L. 87-772 substituted ''signature

placed'' for ''name printed'', and struck out provisions requiring

an attestation by an assistant commissioner or by one of the law

examiners designated by the Commissioner, together with printed

copies of the drawing and statement of the applicant, to be kept in

books for that purpose.

Subsec. (d). Pub. L. 87-772, among other charges, removed the

requirement of a fee in connection with the voluntary surrender or

cancellation of a registration.

Subsec. (e). Pub. L. 87-772 substituted ''an employee of the

Office'' for ''a chief of division'', among other changes.

Subsec. (f). Pub. L. 87-772, among other changes, struck out '',

signed by the Commissioner and sealed with the seal of the Patent

Office'' after ''nature of such mistake''.

1950 - Subsec. (a). Act Aug. 17, 1950, made it unnecessary to

include in the certificate a statement of the applicant.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1068, 1071, 1092, 1094,

1115, 1141f of this title.

-CITE-

15 USC Sec. 1058 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1058. Duration

-STATUTE-

(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) of this title, 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 1062(c) of this title.

(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 Commissioner's (FOOTNOTE 1)

acceptance or refusal thereof and, in the case of a refusal, the

reasons therefor.

(FOOTNOTE 1) So in original. Probably should be ''Director's''.

(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 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 8, 60 Stat. 431; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97-247, Sec.

8, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100-667, title I, Sec. 110,

Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105-330, title I, Sec. 105,

Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106-113, div. B, Sec.

1000(a)(9) (title IV, Sec. 4732(b)(1)(B), (C)), Nov. 29, 1999, 113

Stat. 1536, 1501A-583; Pub. L. 107-273, div. C, title III, Sec.

13207(b)(3), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 12, 33 Stat. 727.

AMENDMENTS

2002 - Subsec. (f). Pub. L. 107-273 amended subsec. (f)

generally. Prior to amendment, text read as follows: ''If the

registrant is not domiciled in the United States, the registrant

shall designate by a written document filed in the Patent and

Trademark Office the name and address of some 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, such notice

or process may be served upon the Director.''

1999 - Subsecs. (a) to (c). Pub. L. 106-113, Sec. 1000(a)(9)

(title IV, Sec. 4732(b)(1)(B)), substituted ''Director'' for

''Commissioner'' wherever appearing.

Subsec. (e). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B), (C)), amended subsec. (e) identically, substituting

''Director'' for ''Commissioner''.

Subsec. (f). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), substituted ''Director'' for ''Commissioner''.

1998 - Pub. L. 105-330 amended section catchline and text

generally. Prior to amendment, text consisted of subsecs. (a) to

(c) relating to affidavits of continuing use, registrations

published under other provisions of law, and notification of

acceptance or refusal of affidavits.

1988 - Subsec. (a). Pub. L. 100-667 substituted ''ten'' for

''twenty'' and ''setting forth those goods or services recited in

the registration on or in connection with which the mark is in use

in commerce and attaching to the affidavit a specimen or facsimile

showing current use of the mark, or showing that any'' for

''showing that said mark is in use in commerce or showing that

its''.

1982 - Subsecs. (a), (b). Pub. L. 97-247 struck out ''still''

after ''showing that said mark is'', and inserted ''in commerce''

after ''use''.

1975 - Subsecs. (a), (b). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective on the date that is 1 year

after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as

a note under section 1051 of this title.

Pub. L. 105-330, title I, Sec. 109(a), Oct. 30, 1998, 112 Stat.

3069, provided that: ''The provisions of section 8 of the Trademark

Act of 1946 (15 U.S.C. 1058), as amended by section 105 of this

Act, shall apply to a registration for trademark issued or renewed

for a 20-year term, if the expiration date of the registration is

on or after the effective date of this Act (probably should be

''this title'', see section 110 of Pub. L. 105-330, set out as an

Effective Date of 1998 Amendment note under section 1051 of this

title).''

For provisions relating to applicability of amendment by Pub. L.

105-330 to applications for registration of trademarks, see section

109(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

Pub. L. 105-330, title I, Sec. 109(c), Oct. 30, 1998, 112 Stat.

3069, provided that: ''The provisions of section 8 of the Trademark

Act of 1946 (15 U.S.C. 1058), as amended by section 105 of this

Act, shall apply to the filing of an affidavit if the sixth or

tenth anniversary of the registration, or the sixth anniversary of

publication of the registration under section 12(c) of the

Trademark Act of 1946 (15 U.S.C. 1062(c)), for which the affidavit

is filed is on or after the effective date of this Act (probably

should be ''this title'', see section 110 of Pub. L. 105-330, set

out as an Effective Date of 1998 Amendment note under section 1051

of this title).''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as a note under

section 294 of Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, and saving clause, see notes set out under section 1051

of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

REFERENCES TO TRADEMARK ACT OF 1946

Pub. L. 105-330, title I, Sec. 102, Oct. 30, 1998, 112 Stat.

3064, provided that: ''For purposes of this title (see Short Title

of 1998 Amendment note set out under section 1051 of this title),

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.), shall be

referred to as the 'Trademark Act of 1946'.''

PENDING APPLICATIONS

Act July 5, 1946, ch. 540, title XI, Sec. 51, as added Nov. 16,

1988, Pub. L. 100-667, title I, Sec. 135, 102 Stat. 3948, provided

that: ''All certificates of registration based upon applications

for registration pending in the Patent and Trademark Office on the

effective date of the Trademark Law Revision Act of 1988 (see

Effective Date of 1988 Amendment note set out under section 1051 of

this title) shall remain in force for a period of 10 years.''

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1059 of this title.

-CITE-

15 USC Sec. 1059 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1059. Renewal of registration

-STATUTE-

(a) Period of renewal; time for renewal

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) Notification of refusal of renewal

If the Director refuses to renew the registration, the Director

shall notify the registrant of the Commissioner's (FOOTNOTE 1)

refusal and the reasons therefor.

(FOOTNOTE 1) So in original. Probably should be ''Director's''.

(c) 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 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 9, 60 Stat. 431; Pub. L.

87-772, Sec. 5, Oct. 9, 1962, 76 Stat. 770; Pub. L. 100-667, title

I, Sec. 111, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105-330, title

I, Sec. 106, Oct. 30, 1998, 112 Stat. 3067; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B), (C)), Nov. 29,

1999, 113 Stat. 1536, 1501A-583; Pub. L. 107-273, div. C, title

III, Sec. 13207(b)(4), Nov. 2, 2002, 116 Stat. 1907.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 12, 33 Stat. 727.

AMENDMENTS

2002 - Subsec. (c). Pub. L. 107-273 amended subsec. (c)

generally. Prior to amendment, text read as follows: ''If the

registrant is not domiciled in the United States, the registrant

shall designate by a written document filed in the Patent and

Trademark Office the name and address of some 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, such notice

or process may be served upon the Director.''

1999 - Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) (title IV,

Sec. 4732(b)(1)(B)), substituted ''Director'' for ''Commissioner''.

Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B), (C)), amended subsec. (b) identically, substituting

''Director'' for ''Commissioner'' in two places.

Subsec. (c). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), substituted ''Director'' for ''Commissioner''.

1998 - Pub. L. 105-330 amended section catchline and text

generally. Prior to amendment, text consisted of subsecs. (a) to

(c) relating to period of renewal and time for renewal,

notification of refusal of renewal, and applicants for renewal not

domiciled in the United States.

1988 - Subsec. (a). Pub. L. 100-667, Sec. 111(1), substituted

''ten'' for ''twenty''.

Subsec. (c). Pub. L. 100-667, Sec. 111(2), substituted

''1051(e)'' for ''1051(d)''.

1962 - Pub. L. 87-772 designated existing provisions as subsecs.

(a) and (c), added subsec. (b), and among other changes, amended

subsec. (a) by substituting provisions requiring a verified

application specifying the goods or services recited in the

registration on or in connection with which the mark is still in

use in commerce and having attached a specimen showing current use

of the mark, or showing that any nonuse is due to special

circumstances which excuse the nonuse and that it's not due to an

intention to abandon the mark, for provisions requiring an

affidavit by the registrant stating that the mark is still in use

in commerce.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective on the date that is 1 year

after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as

a note under section 1051 of this title.

For provisions relating to applicability of amendment by Pub. L.

105-330 to applications for registration of trademarks, see section

109(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

Pub. L. 105-330, title I, Sec. 109(d), Oct. 30, 1998, 112 Stat.

3069, provided that: ''The amendment made by section 106 (amending

this section) shall apply to the filing of an application for

renewal of a registration if the expiration date of the

registration for which the renewal application is filed is on or

after the effective date of this Act (probably should be ''this

title'', see section 110 of Pub. L. 105-330, set out as an

Effective Date of 1998 Amendment note under section 1051 of this

title).''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

RENEWAL UNDER PRIOR ACTS

Renewal of registrations under prior acts, see section 46(b) of

act July 5, 1946, set out as a note under section 1051 of this

title.

EXTENSION OF TIME FOR RENEWAL BY FOREIGN REGISTRANT

Act July 17, 1946, ch. 587, 60 Stat. 568, provided for extension

of time for renewal by a foreign registrant and expired by its own

terms July 17, 1949.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1115 of this title.

-CITE-

15 USC Sec. 1060 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1060. Assignment

-STATUTE-

(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.

(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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 10, 60 Stat. 431; Pub. L.

87-772, Sec. 6, Oct. 9, 1962, 76 Stat. 770; Pub. L. 93-596, Sec. 1,

Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 112,

Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105-330, title I, Sec. 107,

Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106-43, Sec. 6(a), Aug. 5,

1999, 113 Stat. 220; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

(title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536,

1501A-583; Pub. L. 107-273, div. C, title III, Sec. 13207(b)(5),

Nov. 2, 2002, 116 Stat. 1907.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 10, 33 Stat. 727.

AMENDMENTS

2002 - Subsecs. (a), (b). Pub. L. 107-273 amended subsecs. (a)

and (b) generally, in subsec. (a) substituting pars. (1) to (5) for

substantially identical undesignated provisions, and in subsec. (b)

adding provisions relating to service on Director if assignee does

not designate name and address of a person resident in the United

States on whom may be served notices or process.

1999 - Pub. L. 106-43, Sec. 6(a)(2), (3), which directed the

amendment of this section by substituting ''mark.'' for ''mark,''

in the first sentence and striking out a second period at the end

of the third sentence, could not be executed because ''mark,'' and

the second period did not appear subsequent to amendment by Pub. L.

105-330. See 1998 Amendment note below.

Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), substituted ''Director'' for ''Commissioner'' in

last sentence.

Pub. L. 106-43, Sec. 6(a)(1), which directed the amendment of the

penultimate sentence of this section by substituting ''assignment''

for ''subsequent purchase'', was executed by making the

substitution for ''subsequent purchase'' in two places in the

penultimate sentence of subsec. (a), after ''date of the'' and

''prior to the'', to reflect the probable intent of Congress.

Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), substituted ''Director'' for ''Commissioner'' in

last sentence.

1998 - Pub. L. 105-330 amended section catchline and text

generally. Prior to amendment, text read as follows:

''A registered mark or a mark for which application to register

has been filed shall be assignable with the goodwill of the

business in which the mark is used, or with that part of the

goodwill of the business connected with the use of and symbolized

by the mark,. However, no application to register a mark under

section 1051(b) of this title shall be assignable prior to the

filing of the verified statement of use under section 1051(d) of

this title, except to a successor to the business of the applicant,

or portion thereof, to which the mark pertains, if that business is

ongoing and existing. In any assignment authorized by this section

it shall not be necessary to include the goodwill 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. Assignments shall be by instruments in writing duly

executed. Acknowledgment shall be prima facie evidence of the

execution of an assignment and when recorded in the Patent and

Trademark Office the record shall be prima facie evidence of

execution. An assignment shall be void as against any subsequent

purchaser for a valuable consideration without notice, unless it is

recorded in the Patent and Trademark Office within three months

after the date thereof or prior to such subsequent purchase. A

separate record of assignments submitted for recording hereunder

shall be maintained in the Patent and Trademark Office.

''An assignee not domiciled in the United States shall be subject

to and comply with the provisions of section 1051(e) of this

title.''

1988 - Pub. L. 100-667 substituted ''. However, no application to

register a mark under section 1051(b) of this title shall be

assignable prior to the filing of the verified statement of use

under section 1051(d) of this title, except to a successor to the

business of the applicant, or portion thereof, to which the mark

pertains, if that business is ongoing and existing. In any

assignment authorized by this section'' for ''and in any such

assignment'' in first par., and ''1051(e)'' for ''1051(d)'' in last

par.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

1962 - Pub. L. 87-772 substituted provisions which require a

separate record of assignments to be kept in the Patent Office, for

provisions which required the Commissioner to keep such record, and

eliminated provisions permitting the cancellation of any assigned

registration at any time if the registered mark is being used by,

or with the permission of, the assignee so as to misrepresent the

source of the goods or services in connection with which the mark

is used.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective on the date that is 1 year

after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as

a note under section 1051 of this title.

For provisions relating to applicability of amendment by Pub. L.

105-330 to applications for registration of trademarks, see section

109(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-CITE-

15 USC Sec. 1061 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1061. Execution of acknowledgments and verifications

-STATUTE-

Acknowledgments and verifications required under this chapter 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 is 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 11, 60 Stat. 432; Pub. L.

97-247, Sec. 14(c), Aug. 27, 1982, 96 Stat. 321.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 2, 33 Stat. 724; Feb. 18, 1909,

ch. 144, 35 Stat. 627.

AMENDMENTS

1982 - Pub. L. 97-247 substituted ''is'' for ''shall be'' after

''whose authority'', and inserted '', 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''.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective Aug. 27, 1982, see section

17(a) of Pub. L. 97-247, set out as a note under section 41 of

Title 35, Patents.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1062 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1062. Publication

-STATUTE-

(a) Examination and publication

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.

(b) Refusal of registration; amendment of application; abandonment

If the applicant is found not entitled to registration, the

examiner shall advise the applicant thereof and of the reasons

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) Republication of marks registered under prior acts

A registrant of a mark registered under the provisions 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 title.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 12, 60 Stat. 432; Pub. L.

87-772, Sec. 7, Oct. 9, 1962, 76 Stat. 770; Pub. L. 93-596, Sec. 1,

Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 113,

Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105-330, title I, Sec. 104,

Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106-113, div. B, Sec.

1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat.

1536, 1501A-583.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881 and February 20, 1905, referred to in subsec.

(c), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20,

1905, ch. 592, 33 Stat. 724, which were repealed insofar as

inconsistent with this chapter by act July 5, 1946, ch. 540, Sec.

46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections

81 to 109 of this title.

-MISC2-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 6, 33 Stat. 726; Mar. 2, 1907,

ch. 2573, Sec. 2, 34 Stat. 1252.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

1998 - Subsec. (b). Pub. L. 105-330 substituted ''unintentional''

for ''unavoidable'' in last sentence.

1988 - Subsec. (a). Pub. L. 100-667 substituted ''prescribed

fee'' for ''fee herein provided'', and ''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''

for ''entitled to registration, the''.

1975 - Subsec. (a). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

1962 - Subsec. (a). Pub. L. 87-772 inserted proviso permitting

publication of the mark in the case of an applicant claiming

concurrent use, or an application to be placed in an interference,

if such mark is otherwise registrable, subject to the determination

of the rights of the parties.

Subsec. (c). Pub. L. 87-772 inserted ''Marks published under''

before ''this subsection shall not be subject''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective on the date that is 1 year

after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as

a note under section 1051 of this title.

For provisions relating to applicability of amendment by Pub. L.

105-330 to applications for registration of trademarks, see section

109(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1058, 1063, 1064, 1065,

1091, 1115 of this title.

-CITE-

15 USC Sec. 1063 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1063. Opposition to registration

-STATUTE-

(a) Any person who believes that he would be damaged by the

registration of a mark upon the principal register, including as a

result of dilution 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 of this title 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 13, 60 Stat. 433; Pub. L.

87-772, Sec. 8, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93-596, Sec. 1,

Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93-600, Sec. 1, Jan. 2, 1975,

88 Stat. 1955; Pub. L. 97-247, Sec. 9(a), Aug. 27, 1982, 96 Stat.

320; Pub. L. 100-667, title I, Sec. 114, Nov. 16, 1988, 102 Stat.

3940; Pub. L. 106-43, Sec. 2(b), Aug. 5, 1999, 113 Stat. 218; Pub.

L. 106-113, div. B, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 6, 7, 33 Stat. 726; Mar. 2,

1907, ch. 2573, Sec. 2, 34 Stat. 1252.

AMENDMENTS

1999 - Subsec. (a). Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

Pub. L. 106-43 inserted '', including as a result of dilution

under section 1125(c) of this title,'' after ''principal register''

in first sentence.

1988 - Pub. L. 100-667 designated existing provisions as subsec.

(a), substituted ''prescribed fee'' for ''required fee'', and added

subsec. (b).

1982 - Pub. L. 97-247 substituted ''an'' for ''a verified'' after

''required fee, file'', inserted ''when requested prior to the

expiration of an extension'' after ''Commissioner for good cause''

and struck out provision that an unverified opposition could be

filed by a duly authorized attorney, but such opposition would be

null and void unless verified by the opposer within a reasonable

time after such filing is fixed by the Commissioner.

1975 - Pub. L. 93-600 substituted provisions relating to

extensions of time for filing opposition upon written request prior

to the expiration of the thirty-day period for an additional thirty

days, and further extensions for good cause, for provisions

relating to extensions of the time for filing opposition for good

cause shown.

Pub. L. 93-596 substituted ''Patent and Trademark Office'' for

''Patent Office''.

1962 - Pub. L. 87-772 inserted ''An opposition may be amended

under such conditions as may be prescribed by the Commissioner'',

and struck out ''notice of'' after ''file a verified'' and ''time

for filing''.

EFFECTIVE DATE OF 1999 AMENDMENTS

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and

applicable only to any application for registration filed on or

after Jan. 16, 1996, see section 2(e) of Pub. L. 106-43, set out as

a note under section 1052 of this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as a note under

section 294 of Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENTS

Section 4 of Pub. L. 93-600 provided that: ''This Act (amending

this section and sections 1071 and 1117 of this title) shall become

effective upon enactment (Jan. 2, 1975), but shall not affect any

suit, proceeding, or appeal then pending.''

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1051, 1052, 1094, 1141,

1141h of this title.

-CITE-

15 USC Sec. 1064 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1064. Cancellation of registration

-STATUTE-

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 dilution 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 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 14, 60 Stat. 433; Pub. L.

87-772, Sec. 9, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97-247, Sec.

9(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98-620, title I, Sec.

102, Nov. 8, 1984, 98 Stat. 3335; Pub. L. 100-667, title I, Sec.

115, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105-330, title II, Sec.

201(a)(4), title III, Sec. 301, Oct. 30, 1998, 112 Stat. 3070; Pub.

L. 106-43, Sec. 2(c), Aug. 5, 1999, 113 Stat. 218.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881 and February 20, 1905, referred to in opening

par. and pars. (2) and (4), are acts Mar. 3, 1881, ch. 138, 21

Stat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were

repealed insofar as inconsistent with this chapter by act July 5,

1946, ch. 540, Sec. 46(a), 60 Stat. 444. Act Feb. 20, 1905, was

classified to sections 81 to 109 of this title.

-MISC2-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 13, 33 Stat. 728.

AMENDMENTS

1999 - Pub. L. 106-43 inserted '', including as a result of

dilution under section 1125(c) of this title,'' after ''damaged''

in introductory provisions.

1998 - Pub. L. 105-330, Sec. 301, inserted at end ''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.''

Par. (3). Pub. L. 105-330, Sec. 201(a)(4), inserted ''or is

functional,'' before ''or has been abandoned''.

1988 - Pub. L. 100-667, Sec. 115(1), (7), in introductory

provisions, inserted ''as follows'' and substituted ''1905:'' for

''1905 - '', and in concluding proviso substituted ''paragraphs (3)

and (5)'' for ''subsections (c) and (e)''.

Par. (1). Pub. L. 100-667, Sec. 115(2), substituted ''(1)

Within'' for ''(a) within'' and ''chapter.'' for ''chapter; or''.

Par. (2). Pub. L. 100-667, Sec. 115(3), substituted ''(2)

Within'' for ''(b) within'', and ''1905.'' for ''1905; or''.

Par. (3). Pub. L. 100-667, Sec. 115(4), substituted ''(3)'' for

''(c)'' and amended text generally. Prior to amendment, text read

as follows: ''at any time if the registered mark becomes the common

descriptive name of an article or substance, or has been abandoned,

or its registration was obtained fraudulently or contrary to the

provisions of section 1054 of this title or of subsections (a),

(b), or (c) of section 1052 of this title for a registration

hereunder, or contrary to similar prohibitory provisions of said

prior Acts for a registration thereunder, 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 in connection

with which the mark is used. A registered mark shall not be deemed

to be the common descriptive 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 common descriptive name of goods or services in connection with

which it has been used; or''.

Par. (4). Pub. L. 100-667, Sec. 115(5), substituted ''(4) At''

for ''(d) at'', and ''title.'' for ''title; or''.

Par. (5). Pub. L. 100-667, Sec. 115(6), substituted ''(5) At''

for ''(e) at'' and redesignated former pars. (1) to (4) as subpars.

(A) to (D), respectively.

1984 - Par. (c). Pub. L. 98-620 inserted provision that a

registered mark shall not be deemed to be the common descriptive

name of goods or services solely because such mark is also used as

a name of or to identify a unique product or service, and that 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 common descriptive name

of goods or services in connection with which it has been used.

1982 - Pub. L. 97-247 struck out ''verified'' before ''petition

to cancel'' in provision preceding par. (a).

1962 - Pub. L. 87-772 inserted provisions which require a

verified petition to cancel a registration, redesignated par. (d)

as (e), added par. (d) which is composed of provisions formerly

part of par. (c), and in said par. (c), substituted ''registrant''

for ''assignee'', and struck out ''on which the patent has

expired'' before ''or has been abandoned'', and ''has been assigned

and'' before ''is being used by''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and

applicable only to any application for registration filed on or

after Jan. 16, 1996, see section 2(e) of Pub. L. 106-43, set out as

a note under section 1052 of this title.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by section 201(a)(4) of Pub. L. 105-330 effective Oct.

30, 1998, and applicable only to any civil action filed or

proceeding before the United States Patent and Trademark Office

commenced on or after such date relating to the registration of a

mark, see section 201(b) of Pub. L. 105-330, set out as a note

under section 1051 of this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as a note under

section 294 of Title 35, Patents.

FINALITY OF JUDGMENTS PRIOR TO NOVEMBER 8, 1984

Section 104 of title I of Pub. L. 98-620 provided that: ''Nothing

in this title (amending this section and section 1127 of this title

and enacting provisions set out as a note under section 1051 of

this title) shall be construed to provide a basis for reopening of

any final judgment entered prior to the date of enactment of this

title (Nov. 8, 1984).''

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of Federal Trade Commission, with

certain exceptions, to Chairman of such Commission, see Reorg. Plan

No. 8 of 1950, Sec. 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat.

1264, set out under section 41 of this title.

-MISC5-

RESTRICTION ON USE OF FUNDS TO CANCEL REGISTRATION OF TRADEMARKS

For provisions restricting the use of funds authorized to be

appropriated to carry out section 41 et seq. of this title for

fiscal year 1980, 1981, or 1982, for the purpose of taking any

action under this section with respect to the cancellation of the

registration of any mark on the ground that such mark has become

the common descriptive name of an article or substance, see section

18 of Pub. L. 96-252, set out as a note under section 57c of this

title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1052, 1065, 1094 of this

title.

-CITE-

15 USC Sec. 1065 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1065. Incontestability of right to use mark under certain

conditions

-STATUTE-

Except on a ground for which application to cancel may be filed

at any time 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 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

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 15, 60 Stat. 433; Pub. L.

87-772, Sec. 10, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93-596, Sec.

1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97-247, Sec. 10, Aug. 27,

1982, 96 Stat. 320; Pub. L. 100-667, title I, Sec. 116, Nov. 16,

1988, 102 Stat. 3941; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

(title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536,

1501A-583.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881 and February 20, 1905, referred to in text,

are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20, 1905, ch.

592, 33 Stat. 724, which were repealed insofar as inconsistent with

this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat.

444. Act Feb. 20, 1905, was classified to sections 81 to 109 of

this title.

-MISC2-

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' in par. (3) and in two places in concluding

provisions.

1988 - Pub. L. 100-667, in introductory provisions, substituted

''paragraphs (3) and (5)'' for ''subsections (c) and (e)'', in par.

(3) ''paragraphs'' for ''subsections'', and in par. (4) ''the

generic name for the goods or services or a portion thereof, for

which it is registered'' for ''the common descriptive name of any

article or substance, patented or otherwise''.

1982 - Pub. L. 97-247 substituted ''registration'' for ''the

publication'' in provision preceding par. (1).

1975 - Par. (2). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

1962 - Pub. L. 87-772 substituted ''(c) and (e) of section 1064''

for ''(c) and (d) of section 1064'' in provision preceding par.

(1), and struck out ''or trade name'' after ''in a mark'' in par.

(4).

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as a note under

section 294 of Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1094, 1115, 1141m of this

title.

-CITE-

15 USC Sec. 1066 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1066. Interference; declaration by Director

-STATUTE-

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 16, 60 Stat. 434; Pub. L.

87-772, Sec. 11, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97-247, Sec.

11, Aug. 27, 1982, 96 Stat. 321; Pub. L. 100-667, title I, Sec.

117, Nov. 16, 1988, 102 Stat. 3941; Pub. L. 106-113, div. B, Sec.

1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat.

1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 7, 33 Stat. 726.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1988 - Pub. L. 100-667 substituted ''used on or in connection

with the goods or services'' for ''applied to the goods or when

used in connection with the services''.

1982 - Pub. L. 97-247 substituted ''Upon petition showing

extraordinary circumstances, the Commissioner 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 applied to the goods or when

used in connection with the services of the applicant to cause

confusion or mistake or to deceive'' for ''Whenever 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

applied to the goods or when used in connection with the services

of the applicant to cause confusion or mistake or to deceive, the

Commissioner may declare that an interference exists''.

1962 - Pub. L. 87-772 struck out ''purchasers'' after ''or to

deceive''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as a note under

section 294 of Title 35, Patents.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1062, 1094 of this title.

-CITE-

15 USC Sec. 1067 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1067. Interference, opposition, and proceedings for concurrent

use registration or for cancellation; notice; Trademark Trial

and Appeal Board

-STATUTE-

(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, the Commissioner for Patents, the Commissioner for

Trademarks, and administrative trademark judges who are appointed

by the Director.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 17, 60 Stat. 434; Pub. L.

85-609, Sec. 1(a), Aug. 8, 1958, 72 Stat. 540; Pub. L. 93-596, Sec.

1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96-455, Sec. 1, Oct. 15,

1980, 94 Stat. 2024; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

(title IV, Sec. 4716), Nov. 29, 1999, 113 Stat. 1536, 1501A-580;

Pub. L. 107-273, div. C, title III, Sec. 13203(a)(1), Nov. 2,

2002, 116 Stat. 1902.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 7, 33 Stat. 726.

AMENDMENTS

2002 - Subsec. (b). Pub. L. 107-273, which directed amendment of

subsec. (b) by inserting ''the Deputy Commissioner,'' after

''Commissioner,'', could not be executed because ''Commissioner,''

does not appear in text.

1999 - Pub. L. 106-113 amended section generally. Prior to

amendment, section read as follows:

''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 Commissioner shall give

notice to all parties and shall direct a Trademark Trial and Appeal

Board to determine and decide the respective rights of

registration.

''The Trademark Trial and Appeal Board shall include the

Commissioner, the Deputy Commissioner, the Assistant Commissioners,

and members appointed by the Commissioner. Employees of the Patent

and Trademark Office and other persons, all of whom shall be

competent in trademark law, shall be eligible for appointment as

members. Each case shall be heard by at least three members of the

Board, the members hearing such case to be designated by the

Commissioner.''

1980 - Pub. L. 96-455 inserted provisions requiring that the

Trademark Trial and Appeal Board include the Deputy Commissioner

and members appointed by the Commissioner and provisions that

employees of the Patent and Trademark Office and other persons, all

of whom shall be competent in trademark law, shall be eligible for

appointment as members; and struck out provision that the Board

include Patent and Trademark Office employees, designated by the

Commissioner and whose qualifications have been approved by the

Civil Service Commission as being adequate for appointment to the

position of examiner in charge of interferences.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

1958 - Pub. L. 85-609 substituted ''a Trademark Trial and Appeal

Board'' for ''the examiner in charge of interferences'' in first

paragraph, and inserted second paragraph relating to the

composition of the Board.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1980 AMENDMENT; BOARD MEMBERSHIP AS OF OCTOBER

15, 1980, UNAFFECTED

Section 2 of Pub. L. 96-455 provided that: ''This amendment

(amending this section) shall become effective on the date of its

enactment (Oct. 15, 1980). Members of the Trademark Trial and

Appeal Board on the date of enactment shall continue to be members

under and in accordance with the provisions of section 17 of the

Act of July 5, 1946, as amended (this section), in effect

immediately preceding the date of enactment.''

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

EFFECTIVE DATE OF 1958 AMENDMENT

Section 3 of Pub. L. 85-609 provided that: ''This Act (amending

this section and sections 1070, 1071, 1092, and 1113 of this title)

shall take effect on approval (Aug. 8, 1958); it shall apply to ex

parte appeals taken to the Commissioner prior to the date of

approval which have not been heard but shall not apply to any such

appeal which has been heard or decided in which event further

proceedings may be had as though this Act had not been passed; it

shall apply to inter partes cases instituted prior to the date of

approval which have not been heard by an examiner of interferences,

but shall not apply to any such case which has been heard or

decided by an examiner of interferences in which event further

proceedings may be had as though this Act had not passed.''

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

REORGANIZATION PLAN NO. 5 OF 1950

Section 2 of Pub. L. 85-609 provided that: ''The provisions of

this Act (amending this section and sections 1070, 1071, 1092, and

1113 of this title) shall be subject to Reorganization Plan No. 5

of 1950 (64 Stat. 1263).''

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1094 of this title.

-CITE-

15 USC Sec. 1068 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1068. Action of Director in interference, opposition, and

proceedings for concurrent use registration or for cancellation

-STATUTE-

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 18, 60 Stat. 434; Pub. L.

100-667, title I, Sec. 118, Nov. 16, 1988, 102 Stat. 3941; Pub. L.

106-113, div. B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)),

Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 7, 13, 33 Stat. 726, 728.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' in two places.

1988 - Pub. L. 100-667 substituted ''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'' for ''or restrict'', and

''may refuse'' for ''or may refuse'', and inserted provisions that

no final judgment be entered before mark is registered if applicant

cannot prevail without establishing constructive use.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1094 of this title.

-CITE-

15 USC Sec. 1069 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1069. Application of equitable principles in inter partes

proceedings

-STATUTE-

In all inter partes proceedings equitable principles of laches,

estoppel, and acquiescence, where applicable may be considered and

applied.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 19, 60 Stat. 434; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title

I, Sec. 119, Nov. 16, 1988, 102 Stat. 3941.)

-MISC1-

AMENDMENTS

1988 - Pub. L. 100-667 struck out at end ''The provisions of this

section shall also govern proceedings heretofore begun in the

Patent and Trademark Office and not finally determined.''

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-CITE-

15 USC Sec. 1070 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1070. Appeals to Trademark Trial and Appeal Board from

decisions of examiners

-STATUTE-

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 20, 60 Stat. 435; Pub. L.

85-609, Sec. 1(b), Aug. 8, 1958, 72 Stat. 540.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 8, 13, 33 Stat. 726, 728.

AMENDMENTS

1958 - Pub. L. 85-609 substituted ''Trademark Trial and Appeal

Board'' for ''Commissioner in person'' and ''fee'' for ''fees'',

and struck out ''of interferences or'' after ''examiner in

charge''.

EFFECTIVE DATE OF 1958 AMENDMENT

For effective date and applicability of amendment by Pub. L.

85-609, see section 3 of Pub. L. 85-609, set out as a note under

section 1067 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

REORGANIZATION PLAN NO. 5 OF 1950

Amendment by Pub. L. 85-609 as subject to Reorganization Plan No.

5 of 1950, see note set out under section 1067 of this title.

-CITE-

15 USC Sec. 1071 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1071. Appeal to courts

-STATUTE-

(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 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 section, 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 cross-examination

of the witnesses as the court imposes, without 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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 21, 60 Stat. 435; July 19,

1952, ch. 950, Sec. 2, 66 Stat. 814; Pub. L. 85-609, Sec. 1(c),

Aug. 8, 1958, 72 Stat. 540; Pub. L. 87-772, Sec. 12, Oct. 9, 1962,

76 Stat. 771; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949;

Pub. L. 93-600, Sec. 2, Jan. 2, 1975, 88 Stat. 1955; Pub. L.

97-164, title I, Sec. 162(1), Apr. 2, 1982, 96 Stat. 49; Pub. L.

98-620, title IV, Sec. 414(b), Nov. 8, 1984, 98 Stat. 3363; Pub. L.

100-667, title I, Sec. 120, Nov. 16, 1988, 102 Stat. 3942; Pub. L.

106-113, div. B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)),

Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-COD-

CODIFICATION

Pub. L. 93-596, which provided for the substitution of ''Patent

and Trademark Office'' for ''Patent Office'' each time appearing in

this chapter, became effective Jan. 2, 1975, as did Pub. L. 93-600,

which in the course of amending subsecs. (a)(3) and (4) of this

section, referred merely to ''Patent Office''. ''Patent and

Trademark Office'' has been substituted for ''Patent Office'' in

subsecs. (a)(3) and (4) on authority of Pub. L. 93-596.

-MISC3-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 9, 22, 33 Stat. 727, 729; Mar.

2, 1929, ch. 488, Sec. 2(b), 45 Stat. 1478.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

1988 - Subsec. (a)(1). Pub. L. 100-667, Sec. 120(1), made

technical amendments to references in the original act to

subsection (b) of this section resulting in no change in text, and

substituted ''paragraph (2) of this subsection'' for ''subsection

(a)(2) of this section'' and ''action under subsection'' for

''action under said subsection''.

Subsec. (a)(4). Pub. L. 100-667, Sec. 120(2), inserted provision

that no final judgment be entered before mark is registered if

applicant cannot prevail without establishing constructive use.

Subsec. (b)(1). Pub. L. 100-667, Sec. 120(3), made technical

amendments to references in the original act to subsection (a) of

this section resulting in no change in text and inserted provision

that no final judgment be entered before mark is registered if

applicant cannot prevail without establishing constructive use.

Subsec. (b)(3). Pub. L. 100-667, Sec. 120(4), amended first

sentence generally. Prior to amendment, first sentence read as

follows: ''In all cases where there is no adverse party, a copy of

the complaint shall be served on the Commissioner; and all the

expenses of the proceedings shall be paid by the party bringing

them, whether the final decision is in his favor or not.''

1984 - Subsec. (a)(2). Pub. L. 98-620 substituted provisions

requiring the appellant to file a written notice of appeal in the

Patent and Trademark Office directed to the Commissioner for

provisions requiring the appellant to file the notice of appeal

with the Commissioner, and struck out provision which required the

notice of appeal to specify the party or parties taking the appeal,

to designate the decision or part thereof appealed from, and to

state that the appeal was being taken to the United States Court of

Appeals for the Federal Circuit.

Subsec. (a)(3). Pub. L. 98-620 substituted provisions requiring

the Commissioner to 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 for

provisions which required the Commissioner to transmit to the court

certified copies of all the necessary original papers and evidence

in the case specified by the appellant, and any additional papers

and evidence specified by the appellee, and inserted provision that

the court may request that the Commissioner forward the original or

certified copies of such documents during the pendency of the

appeal.

Subsec. (a)(4). Pub. L. 98-620 substituted provisions requiring

the court to review the decision from which the appeal is taken on

the record before the Patent and Trademark Office, and, upon its

determination, to issue its mandate and opinion to the Commissioner

for provisions which required the court to decide such appeal on

the evidence produced before the Patent and Trademark Office and to

return to the Commissioner a certificate of its proceedings and

decision.

1982 - Subsecs. (a)(1), (2), (b)(1). Pub. L. 97-164 substituted

''United States Court of Appeals for the Federal Circuit'' for

''United States Court of Customs and Patent Appeals'' and ''Court

of Customs and Patent Appeals'' wherever appearing.

1975 - Subsec. (a)(2). Pub. L. 93-600 substituted provisions

relating to filing of notice of appeal with the Commissioner and

the contents of such notice of appeal, for provisions relating to

giving notice of appeal to the Commissioner and requiring filing in

the Patent Office reasons for appeal.

Subsec. (a)(3). Pub. L. 93-600 inserted provision requiring the

Commissioner to furnish the court with a brief explaining the

grounds of the decision of the Office.

Pub. L. 93-596 substituted ''Patent and Trademark Office'' for

''Patent Office''.

Subsec. (a)(4). Pub. L. 93-600 substituted ''decide'' for ''hear

and determine'' and struck out ''Upon its determination,'' before

''the court shall return'' and provision requiring the decision to

be confined to the points set forth in the reasons of appeal.

Pub. 93-596 substituted ''Patent and Trademark Office'' for

''Patent Office'' in two places.

Subsec. (b)(3), (4). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

1962 - Pub. L. 87-772 amended section generally, and among other

changes, incorporated with necessary changes in language, the

various provisions of Title 35, Patents, relating to the procedure

of appeals to the Court of Customs and Patent Appeals and review by

civil action in patent cases, which had previously been

incorporated by reference only.

1958 - Pub. L. 85-609 authorized appeals by persons dissatisfied

with the decision of the Trademark Trial and Appeal Board, and

substituted ''Trademark Trial and Appeal Board'' for

''Commissioner'' in proviso.

1952 - Act July 19, 1952, substituted references to new title 35

for repealed section of title 35.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-620 applicable to proceedings pending in

the Patent and Trademark Office on Nov. 8, 1984, and to appeals

pending in the United States Court of Appeals for the Federal

Circuit on that date, see section 414(c) of Pub. L. 98-620, set out

as a note under section 142 of Title 35, Patents.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-164 effective Oct. 1, 1982, see section

402 of Pub. L. 97-164, set out as a note under section 171 of Title

28, Judiciary and Judicial Procedure.

EFFECTIVE DATE OF 1975 AMENDMENTS

Amendment by Pub. L. 93-600 effective Jan. 2, 1975, but not to

affect any suit, proceeding, or appeal then pending, see section 4

of Pub. L. 93-600, set out as a note under section 1063 of this

title.

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

EFFECTIVE DATE OF 1958 AMENDMENT

For effective date and applicability of amendment by Pub. L.

85-609, see section 3 of Pub. L. 85-609, set out as a note under

section 1067 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

REORGANIZATION PLAN NO. 5 OF 1950

Amendment by Pub. L. 85-609 as subject to Reorganization Plan No.

5 of 1950, see note set out under section 1067 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 28 section 1295.

-CITE-

15 USC Sec. 1072 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER I - THE PRINCIPAL REGISTER

-HEAD-

Sec. 1072. Registration as constructive notice of claim of

ownership

-STATUTE-

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.

-SOURCE-

(July 5, 1946, ch. 540, title I, Sec. 22, 60 Stat. 435.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881, and February 20, 1905, referred to in text,

are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20, 1905, ch.

592, 33 Stat. 724, which were repealed insofar as inconsistent with

this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat.

444. Act Feb. 20, 1905, was classified to sections 81 to 109 of

this title.

-MISC2-

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1094 of this title.

-CITE-

15 USC SUBCHAPTER II - THE SUPPLEMENTAL REGISTER 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

.

-HEAD-

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-CITE-

15 USC Sec. 1091 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1091. Supplemental register

-STATUTE-

(a) Marks registerable

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 provided in this chapter,

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 subsections (a) and (e) of section 1051 of this

title so far as they are applicable. Nothing in this section shall

prevent the registration on the supplemental register of a mark,

capable of distinguishing the applicant's goods or services and not

registrable on the principal register under this chapter, that is

declared to be unregistrable under section 1052(e)(3) of this

title, if such mark has been in lawful use in commerce by the owner

thereof, on or in connection with any goods or services, since

before December 8, 1993.

(b) Application and proceedings for registration

Upon the filing of an application for registration on the

supplemental register 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, the registration shall be granted. If

the applicant is found not entitled to registration the provisions

of subsection (b) of section 1062 of this title shall apply.

(c) Nature of mark

For the purposes of registration on the supplemental register, a

mark may consist of any trademark, symbol, label, package,

configuration of goods, name, word, slogan, phrase, surname,

geographical name, numeral, device, any matter that as a whole is

not functional, or any combination of any of the foregoing, but

such mark must be capable of distinguishing the applicant's goods

or services.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 23, 60 Stat. 435; Pub. L.

87-772, Sec. 13, Oct. 9, 1962, 76 Stat. 773; Pub. L. 100-667, title

I, Sec. 121, Nov. 16, 1988, 102 Stat. 3942; Pub. L. 103-182, title

III, Sec. 333(b), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 105-330,

title II, Sec. 201(a)(5), Oct. 30, 1998, 112 Stat. 3070; Pub. L.

106-43, Sec. 6(b), Aug. 5, 1999, 113 Stat. 220; Pub. L. 106-113,

div. B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29,

1999, 113 Stat. 1536, 1501A-583; Pub. L. 107-273, div. C, title

III, Sec. 13207(b)(6), Nov. 2, 2002, 116 Stat. 1908.)

-REFTEXT-

REFERENCES IN TEXT

Paragraph (b) of section 1 of the Act of March 19, 1920, referred

to in subsec. (a), is paragraph (b) of section 1 of act Mar. 19,

1920, ch. 104, 41 Stat. 533, which was classified to section 121(b)

of this title, and repealed by act July 5, 1946, ch. 540, Sec.

46(a), 60 Stat. 444, insofar as inconsistent.

-MISC2-

PRIOR PROVISIONS

Acts Mar. 19, 1920, ch. 104, Sec. 1, 41 Stat. 533; Apr. 11, 1930,

ch. 132, Sec. 4, 46 Stat. 155; June 10, 1938, ch. 332, Sec. 2, 52

Stat. 638.

AMENDMENTS

2002 - Subsec. (c). Pub. L. 107-273 struck out second comma after

''numeral''.

1999 - Subsec. (a). Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

Pub. L. 106-43 substituted ''trademarks'' for ''trade-marks''.

Subsec. (b). Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1998 - Subsec. (c). Pub. L. 105-330 substituted '', device, any

matter that as a whole is not functional,'' for ''or device''.

1993 - Subsec. (a). Pub. L. 103-182 substituted ''(d), and

(e)(3)'' for ''and (d)'' and inserted at end ''Nothing in this

section shall prevent the registration on the supplemental register

of a mark, capable of distinguishing the applicant's goods or

services and not registrable on the principal register under this

chapter, that is declared to be unregistrable under section

1052(e)(3) of this title, if such mark has been in lawful use in

commerce by the owner thereof, on or in connection with any goods

or services, since before December 8, 1993.''

1988 - Pub. L. 100-667, Sec. 121(6), struck out undesignated

concluding par. which read as follows: ''Upon a proper showing by

the applicant that he requires domestic registration as a basis for

foreign protection of his mark, the Commissioner may waive the

requirement of a full year's use and may grant registration

forthwith.''

Subsec. (a). Pub. L. 100-667, Sec. 121(1), (4), designated first

par. as subsec. (a), made technical amendment to reference in the

original act to subsections (a), (b), (c), and (d) of section 1052

of this title resulting in no change in text, substituted ''are in

lawful use in commerce by the owner thereof, on'' for ''have been

in lawful use in commerce by the proprietor thereof, upon'', struck

out ''for the year preceding the filing of the application'' after

''any goods and services'', and inserted ''subsections (a) and (e)

of'' before ''section 1051''.

Subsec. (b). Pub. L. 100-667, Sec. 121(2), (5), designated second

par. as subsec. (b) and substituted ''prescribed fee'' for ''fee

herein provided''.

Subsec. (c). Pub. L. 100-667, Sec. 121(3), designated third par.

as subsec. (c).

1962 - Pub. L. 87-772 struck out ''has begun the lawful use of

his mark in foreign commerce and that he'' before ''requires

domestic registration'' in last par.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1993 AMENDMENT

Amendment by Pub. L. 103-182 applicable only to trademark

applications filed on or after Dec. 8, 1993, see section 335(c) of

Pub. L. 103-182, set out in a note under section 1052 of this

title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1126 of this title.

-CITE-

15 USC Sec. 1092 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1092. Publication; not subject to opposition; cancellation

-STATUTE-

Marks for the supplemental register shall not be published for or

be subject to opposition, but shall be published on registration in

the Official Gazette of the Patent and Trademark Office. Whenever

any person believes that he is or will be damaged by the

registration of a mark on this register, including as a result of

dilution under section 1125(c) of this title, he may at any time,

upon payment of the prescribed fee and the filing of a petition

stating the ground therefor, apply to the Director to cancel such

registration. The Director shall refer such application to the

Trademark Trial and Appeal Board which shall give notice thereof to

the registrant. If it is found after a hearing before the Board

that the registrant is not entitled to registration, or that the

mark has been abandoned, the registration shall be canceled by the

Director. 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.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 24, 60 Stat. 436; Pub. L.

85-609, Sec. 1(d), Aug. 8, 1958, 72 Stat. 540; Pub. L. 87-772, Sec.

14, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93-596, Sec. 1, Jan. 2,

1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 122, Nov. 16,

1988, 102 Stat. 3943; Pub. L. 106-43, Sec. 2(d), Aug. 5, 1999, 113

Stat. 218; Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title IV,

Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act Mar. 19, 1920, ch. 104, Sec. 2, 41 Stat. 534.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

Pub. L. 106-43 inserted '', including as a result of dilution

under section 1125(c) of this title,'' after ''register'' in second

sentence.

1988 - Pub. L. 100-667 struck out ''verified'' after ''filing of

a'', substituted ''is not entitled to registration,'' for ''was not

entitled to register the mark at the time of his application for

registration thereof,'' struck out ''is not used by the registrant

or'' after ''that the mark'', and inserted provision that no final

judgment be entered before mark is registered if applicant cannot

prevail without establishing constructive use.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

1962 - Pub. L. 87-772 provided for payment of the prescribed fee

and the filing of a verified petition.

1958 - Pub. L. 85-609 substituted provisions requiring the

Commissioner to refer applications to the Trademark Trial and

Appeal Board for provisions which required referral to the examiner

in charge of interferences.

EFFECTIVE DATE OF 1999 AMENDMENTS

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and

applicable only to any application for registration filed on or

after Jan. 16, 1996, see section 2(e) of Pub. L. 106-43, set out as

a note under section 1052 of this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

EFFECTIVE DATE OF 1958 AMENDMENT

For effective date and applicability of amendment by Pub. L.

85-609, see section 3 of Pub. L. 85-609, set out as a note under

section 1067 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

REORGANIZATION PLAN NO. 5 OF 1950

Amendment by Pub. L. 85-609 as subject to Reorganization Plan No.

5 of 1950, see note set out under section 1067 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1052 of this title.

-CITE-

15 USC Sec. 1093 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1093. Registration certificates for marks on principal and

supplemental registers to be different

-STATUTE-

The certificates of registration for marks registered on the

supplemental register shall be conspicuously different from

certificates issued for marks registered on the principal register.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 25, 60 Stat. 436.)

-MISC1-

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1094 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1094. Provisions of chapter applicable to registrations on

supplemental register

-STATUTE-

The provisions of this chapter shall govern so far as applicable

applications for registration and registrations on the supplemental

register as well as those on the principal register, but

applications for and registrations on the supplemental register

shall not be subject to or receive the advantages of sections

1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063 to 1068,

inclusive, 1072, 1115 and 1124 of this title.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 26, 60 Stat. 436; Pub. L.

100-667, title I, Sec. 123, Nov. 16, 1988, 102 Stat. 3943; Pub. L.

105-330, title II, Sec. 201(a)(6), Oct. 30, 1998, 112 Stat. 3070.)

-MISC1-

PRIOR PROVISIONS

Act Mar. 19, 1920, ch. 104, Sec. 6, 41 Stat. 535.

AMENDMENTS

1998 - Pub. L. 105-330 substituted '', 1057(c),'' for

''1057(c),,''.

1988 - Pub. L. 100-667 inserted reference to sections 1051(b) and

1057(c).

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1095 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1095. Registration on principal register not precluded

-STATUTE-

Registration of a mark on the supplemental register, or under the

Act of March 19, 1920, shall not preclude registration by the

registrant on the principal register established by this chapter.

Registration of a mark on the supplemental register shall not

constitute an admission that the mark has not acquired

distinctiveness.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 27, 60 Stat. 436; Pub. L.

100-667, title I, Sec. 124, Nov. 16, 1988, 102 Stat. 3943.)

-REFTEXT-

REFERENCES IN TEXT

Act of March 19, 1920, referred to in text, is act Mar. 19, 1920,

ch. 104, Sec. 1-9, 41 Stat. 533, which was generally classified to

sections 121 to 128 of this title, and which was repealed insofar

as inconsistent with this chapter by act July 5, 1946, ch. 540,

Sec. 46(a), 60 Stat. 444.

-MISC2-

AMENDMENTS

1988 - Pub. L. 100-667 inserted at end ''Registration of a mark

on the supplemental register shall not constitute an admission that

the mark has not acquired distinctiveness.''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1096 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER II - THE SUPPLEMENTAL REGISTER

-HEAD-

Sec. 1096. Registration on supplemental register not used to stop

importations

-STATUTE-

Registration on the supplemental register or under the Act of

March 19, 1920, shall not be filed in the Department of the

Treasury or be used to stop importations.

-SOURCE-

(July 5, 1946, ch. 540, title II, Sec. 28, 60 Stat. 436.)

-REFTEXT-

REFERENCES IN TEXT

Act of March 19, 1920, referred to in text, is act Mar. 19, 1920,

ch. 104, Sec. 1-9, 41 Stat. 533, which was generally classified to

sections 121 to 128 of this title, and which was repealed insofar

as inconsistent with this chapter by act July 5, 1946, ch. 540,

Sec. 46(b), 60 Stat. 444.

-MISC2-

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC SUBCHAPTER III - GENERAL PROVISIONS 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

.

-HEAD-

SUBCHAPTER III - GENERAL PROVISIONS

-CITE-

15 USC Sec. 1111 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1111. Notice of registration; display with mark; recovery of

profits and damages in infringement suit

-STATUTE-

Notwithstanding the provisions of section 1072 of this title, a

registrant of a mark registered in the Patent and Trademark Office,

may give notice that his mark is registered by displaying with the

mark the words ''Registered in U.S. Patent and Trademark Office''

or ''Reg. U.S. Pat. & Tm. Off.'' or the letter R enclosed within a

circle, thus ; and in any suit for infringement under this chapter

by such a registrant failing to give such notice of registration,

no profits and no damages shall be recovered under the provisions

of this chapter unless the defendant had actual notice of the

registration.

-SOURCE-

(July 5, 1946, ch. 540, title III, Sec. 29, 60 Stat. 436; Pub. L.

87-772, Sec. 15, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93-596, Sec.

1, 2, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec.

125, Nov. 16, 1988, 102 Stat. 3943.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 28, 33 Stat. 730; Mar. 19,

1920, ch. 104, Sec. 5, 6, 41 Stat. 534, 535.

AMENDMENTS

1988 - Pub. L. 100-667 struck out ''as used'' after ''with the

mark''.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office,

may give notice that his mark is registered by displaying with the

mark as used the words 'Registered in U.S. Patent and Trademark

Office' or 'Reg. U.S. Pat. & Tm. Off.' '' for ''Patent Office, may

give notice that his mark is registered by displaying with the mark

as used the words 'Registered in U.S. Patent Office' or 'Reg. U.S.

Pat. Off.' ''.

1962 - Pub. L. 87-772 substituted ''in the Patent Office, may''

for ''under the Act of March 3, 1881, or the Act of February 20,

1905, or on the principal register established by this chapter,

shall'', and ''to give such notice of registration,'' for ''so to

mark goods bearing the registered mark, or by a registrant under

the Act of March 19, 1920, or by the registrant of a mark on the

supplemental register provided by this chapter''.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Section 4 of Pub. L. 93-596 provided that: ''This Act (amending

this section, sections 1051, 1052, 1057, 1058, 1060, 1062, 1063,

1065, 1067, 1069, 1071, 1092, 1112, 1113, 1116 to 1120, 1123, and

1127 of this title, and sections 2 to 4, 6 to 8, 10, 11, 21 to 26,

31 to 33, 41, 104, 119, 121, 122, 135, 142 to 144, 146, 152, 153,

253 to 255, 261, 288, and 293 of Title 35, Patents, and enacting

provisions set out as a note under section 1 of title 35) shall

become effective upon enactment (Jan. 2, 1975). However, any

registrant may continue to give notice of his registration in

accordance with section 29 of the Trademark Act of 1946 (60 Stat.

427), as amended Oct. 9, 1962 (76 Stat. 769) (this section), as an

alternative to notice in accordance with section 29 of the

Trademark Act as amended by section 2 of this Act, regardless of

whether his mark was registered before or after the effective date

of this Act.''

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1117 of this title.

-CITE-

15 USC Sec. 1112 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1112. Classification of goods and services; registration in

plurality of classes

-STATUTE-

The Director may establish a classification of goods and

services, for convenience of Patent and Trademark Office

administration, but not to limit or extend the applicant's or

registrant's rights. The applicant may apply to register a mark

for any or all of the goods or services on or in connection with

which he or she is using or has a bona fide intention to use the

mark in commerce: Provided, That if the Director by regulation

permits the filing of an application for the registration of a mark

for goods or services which fall within a plurality of classes, a

fee equaling the sum of the fees for filing an application in each

class shall be paid, and the Director may issue a single

certificate of registration for such mark.

-SOURCE-

(July 5, 1946, ch. 540, title IV, Sec. 30, 60 Stat. 436; Pub. L.

87-772, Sec. 16, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93-596, Sec.

1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 126,

Nov. 16, 1988, 102 Stat. 3943; Pub. L. 106-113, div. B, Sec.

1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat.

1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act May 4, 1906, ch. 2081, Sec. 2, 34 Stat. 169.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

1988 - Pub. L. 100-667 inserted ''or registrant's'' after

''applicant's'' and substituted ''may apply'' for ''may file an

application'', ''goods or services on or in connection with which

he or she is using or has a bona fide intention to use the mark in

commerce:'' for ''goods and services upon or in connection with

which he is actually using the mark:'', and ''Provided, That if the

Commissioner by regulation permits the filing of an application for

the registration of a mark for goods or services which fall'' for

''Provided, That when such goods or services fall''.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

1962 - Pub. L. 87-772, among other changes, substituted ''may''

for ''shall''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-CITE-

15 USC Sec. 1113 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1113. Fees

-STATUTE-

(a) Applications; services; materials

The Director shall establish fees for the filing and processing

of an application for the registration of a trademark or other mark

and for all other services performed by and materials furnished by

the Patent and Trademark Office related to trademarks and other

marks. Fees established under this subsection may be adjusted by

the Director once each year to reflect, in the aggregate, any

fluctuations during the preceding 12 months in the Consumer Price

Index, as determined by the Secretary of Labor. Changes of less

than 1 percent may be ignored. No fee established under this

section shall take effect until at least 30 days after notice of

the fee has been published in the Federal Register and in the

Official Gazette of the Patent and Trademark Office.

(b) Waiver; Indian products

The Director may waive the payment of any fee for any service or

material related to trademarks or other marks in connection with an

occasional request made by a department or agency of the

Government, or any officer thereof. The Indian Arts and Crafts

Board will not be charged any fee to register Government trademarks

of genuineness and quality for Indian products or for products of

particular Indian tribes and groups.

-SOURCE-

(July 5, 1946, ch. 540, title V, Sec. 31, 60 Stat. 437; Pub. L.

85-609, Sec. 1(e), Aug. 8, 1958, 72 Stat. 540; Pub. L. 89-83, Sec.

3, July 24, 1965, 79 Stat. 260; Pub. L. 93-596, Sec. 1, Jan. 2,

1975, 88 Stat. 1949; Pub. L. 96-517, Sec. 5, Dec. 12, 1980, 94

Stat. 3018; Pub. L. 97-247, Sec. 3(f), Aug. 27, 1982, 96 Stat. 319;

Pub. L. 97-256, title I, Sec. 103, Sept. 8, 1982, 96 Stat. 816;

Pub. L. 102-204, Sec. 5(f)(1), Dec. 10, 1991, 105 Stat. 1640; Pub.

L. 105-330, title II, Sec. 201(a)(7), Oct. 30, 1998, 112 Stat.

3070; Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 14, 15, 33 Stat. 728; Mar. 19,

1920, ch. 104, Sec. 8, 41 Stat. 535; Apr. 11, 1930, ch. 132, Sec.

4, 46 Stat. 155.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner'' wherever appearing.

1998 - Pub. L. 105-330 made technical amendment relating to

section catchline.

1991 - Subsec. (a). Pub. L. 102-204 amended subsec. (a)

generally. Prior to amendment, subsec. (a) read as follows: ''The

Commissioner will establish fees for the filing and processing of

an application for the registration of a trademark or other mark

and for all other services performed by and materials furnished by

the Patent and Trademark Office related to trademarks and other

marks. However, no fee for the filing or processing of an

application for the registration of a trademark or other mark or

for the renewal or assignment of a trademark or other mark will be

adjusted more than once every three years. No fee established

under this section will take effect prior to sixty days following

notice in the Federal Register.''

1982 - Subsec. (a). Pub. L. 97-256 struck out ''of Patents''

after ''Commissioner''.

Pub. L. 97-247 struck out provisions directing that fees be set

and adjusted by the Commissioner to recover in aggregate 50 per

centum of the estimated average cost to the Office of processing

and that fees for all other services or materials related to

trademarks and other marks recover the estimated average cost to

the Office of performing the service or furnishing the material.

1980 - Subsec. (a). Pub. L. 96-517 in revising fee provisions

required the Commissioner to establish fees based on recovery of

estimated average cost of processing applications, performing

services and providing material; authorized triennial adjustments;

and prescribed an effective date for fees; deleted prior provisions

containing statutory schedule covering fees for filing:

applications for registration and renewals, affidavits, revival

petitions for abandoned applications, opposition or application for

cancellation, disclaimers, and notice of benefits for a mark to be

published; and fees covering: appeals from examiners in charge of

registration, certificates of amendment, certifying, printed copies

of registered marks, and recordation of documents and papers

relating to property in a registration or application.

Subsec. (b). Pub. L. 96-517 added subsec. (b) and struck out

former subsec. (b) authorizing Commissioner to establish charges

for copies of records, publications, or services of Patent and

Trademark Office. See subsec. (a).

Subsec. (c). Pub. L. 96-517 in revising fee provisions struck out

subsec. (c) authorizing Commissioner to refund any mistaken or

excessive payments.

1975 - Subsec. (a). Pub. L. 93-596 substituted ''Patent and

Trademark Office'' for ''Patent Office''.

Subsec. (b). Pub. L. 93-596 substituted ''Patent and Trademark

Office'' for ''Patent Office''.

1965 - Pub. L. 89-83 increased fees for filing an application for

registration of a mark from $25 to $35; for issuance of a new

certificate of registration following a change of ownership of a

mark or correction of a registrant's mistake from $10 to $15; for a

certificate of correction of registrant's mistake from $10 to $15;

for filing a disclaimer from $10 to $15; and for recording an

assignment, agreement, or other paper relating to the property in a

registration or application from $3 for documents not exceeding six

pages plus $1 for each additional two pages or less and 50 cents

additional for each additional registration or application included

in one writing, to a $20 fee for every document plus an additional

fee of $3 for each additional item where the document relates to

more than one application or registration; eliminated provisions

which established fees for the surrender or cancellation of a

registration, for an abstract of title, for a title report required

for office use, for certificates that marks have not been

registered, and for copies of various specified records and

documents; added the fees for filing and affidavit under section

1058(a) or (b) of this title and for filing a petition for the

revival of an abandoned application; empowered the Commissioner to

establish charges for copies of records, publications or services

furnished by the Patent Office; and made the provisions relating to

refunds of sums paid by mistake permissive.

1958 - Pub. L. 85-609 struck out ''to the Commissioner'' after

''on appeal from an examiner in charge of the registration of

marks'', and provisions which required payment of a $25 fee on

appeals from an examiner in charge of interferences to the

Commissioner.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective Oct. 1, 1982, see section

17(a) of Pub. L. 97-247, set out as a note under section 41 of

Title 35, Patents.

EFFECTIVE DATE OF 1980 AMENDMENT

Amendment by Pub. L. 96-517 effective Dec. 12, 1980, with

provision for continuation of fees in effect as of such date until

corresponding fees are established under this section, see section

8(a), (d) of Pub. L. 96-517, set out as a note under section 41 of

Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

EFFECTIVE DATE OF 1965 AMENDMENT

For effective date and applicability of amendment by Pub. L.

89-83, see section 7(a), (d) of Pub. L. 89-83, set out as a note

under section 41 of Title 35, Patents.

EFFECTIVE DATE OF 1958 AMENDMENT

For effective date and applicability of amendment by Pub. L.

85-609, see section 3 of Pub. L. 85-609, set out as a note under

section 1067 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-MISC5-

APPROPRIATIONS AND FEES AUTHORIZED TO BE CARRIED OVER

For provisions authorizing fees collected under this chapter, and

certain appropriations, to remain available until expended, see

section 2 of Pub. L. 99-607, set out as a note under section 42 of

Title 35, Patents.

TRADEMARK FEES

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title IV, Sec. 4203),

Nov. 29, 1999, 113 Stat. 1536, 1501A-554, as amended by Pub. L.

107-273, div. C, title III, Sec. 13208, Nov. 2, 2002, 116 Stat.

1908, provided that: ''Notwithstanding the second sentence of

section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)), the

Under Secretary of Commerce for Intellectual Property and Director

of the United States Patent and Trademark Office is authorized in

fiscal year 2000 to adjust trademark fees without regard to

fluctuations in the Consumer Price Index during the preceding 12

months.''

Pub. L. 103-179, Sec. 4, Dec. 3, 1993, 107 Stat. 2040, provided

that: ''Effective on the date of the enactment of this Act (Dec. 3,

1993), the fee under section 31(a) of the Trademark Act of 1946 (15

U.S.C. 1113(a)) for filing an application for the registration of a

trademark shall be $245. Any adjustment of such fee under the

second sentence of such section may not be effective before October

1, 1994.''

Pub. L. 102-204, Sec. 5(f)(2), Dec. 10, 1991, 105 Stat. 1640,

provided that fees established by Commissioner of Patents and

Trademarks under 15 U.S.C. 1113(a) during fiscal year 1992 could

reflect fluctuations during the preceding 3 years in the Consumer

Price Index and could take effect on or after 1 day after such fees

are published in the Federal Register and that the last sentence of

31 U.S.C. 31(a) and 5 U.S.C. 553 did not apply to the establishment

of such fees.

Similar provisions were contained in the following prior

appropriation acts:

Pub. L. 100-703, title I, Sec. 103(a), Nov. 19, 1988, 102 Stat.

4674.

Pub. L. 99-607, Sec. 3(a), Nov. 6, 1986, 100 Stat. 3470.

REORGANIZATION PLAN NO. 5 OF 1950

Amendment by Pub. L. 85-609 as subject to Reorganization Plan No.

5 of 1950, see note set out under section 1067 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 35 section 42.

-CITE-

15 USC Sec. 1114 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1114. Remedies; infringement; innocent infringement by

printers and publishers

-STATUTE-

(1) Any person who shall, without the consent of the registrant -

(a) use in commerce any reproduction, counterfeit, copy, or

colorable imitation of a registered mark in connection with the

sale, offering for sale, distribution, or advertising of any

goods or services on or in connection with which such use is

likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a

registered mark and apply such reproduction, counterfeit, copy,

or colorable imitation to labels, signs, prints, packages,

wrappers, receptacles or advertisements intended to be used in

commerce upon or in connection with the sale, offering for sale,

distribution, or advertising of goods or services on or in

connection with which such use is likely to cause confusion, or

to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the

remedies hereinafter provided. Under subsection (b) hereof, the

registrant shall not be entitled to recover profits or damages

unless the acts have been committed with knowledge that such

imitation is intended to be used to cause confusion, or to cause

mistake, or to deceive.

As used in this paragraph, the term ''any person'' includes the

United States, all agencies and instrumentalities thereof, and all

individuals, firms, corporations, or other persons acting for the

United States and with the authorization and consent of the United

States, and any State, any instrumentality of a State, and any

officer or employee of a State or instrumentality of a State acting

in his or her official capacity. The United States, all agencies

and instrumentalities thereof, and all individuals, firms,

corporations, other persons acting for the United States and with

the authorization and consent of the United States, and any State,

and any such instrumentality, officer, or employee, shall be

subject to the provisions of this chapter in the same manner and to

the same extent as any nongovernmental entity.

(2) Notwithstanding any other provision of this chapter, the

remedies given to the owner of a right infringed under this chapter

or to a person bringing an action under section 1125(a) or (d) of

this title shall be limited as follows:

(A) Where an infringer or violator is engaged solely in the

business of printing the mark or violating matter for others and

establishes that he or she was an innocent infringer or innocent

violator, the owner of the right infringed or person bringing the

action under section 1125(a) of this title shall be entitled as

against such infringer or violator only to an injunction against

future printing.

(B) Where the infringement or violation complained of is

contained in or is part of paid advertising matter in a

newspaper, magazine, or other similar periodical or in an

electronic communication as defined in section 2510(12) of title

18, the remedies of the owner of the right infringed or person

bringing the action under section 1125(a) of this title as

against the publisher or distributor of such newspaper, magazine,

or other similar periodical or electronic communication shall be

limited to an injunction against the presentation of such

advertising matter in future issues of such newspapers,

magazines, or other similar periodicals or in future

transmissions of such electronic communications. The limitations

of this subparagraph shall apply only to innocent infringers and

innocent violators.

(C) Injunctive relief shall not be available to the owner of

the right infringed or person bringing the action under section

1125(a) of this title with respect to an issue of a newspaper,

magazine, or other similar periodical or an electronic

communication containing infringing matter or violating matter

where restraining the dissemination of such infringing matter or

violating matter in any particular issue of such periodical or in

an electronic communication would delay the delivery of such

issue or transmission of such electronic communication after the

regular time for such delivery or transmission, and such delay

would be due to the method by which publication and distribution

of such periodical or transmission of such electronic

communication is customarily conducted in accordance with sound

business practice, and not due to any method or device adopted to

evade this section or to prevent or delay the issuance of an

injunction or restraining order with respect to such infringing

matter or violating matter.

(D)(i)(I) A domain name registrar, a domain name registry, or

other domain name registration authority that takes any action

described under clause (ii) affecting a domain name shall not be

liable for monetary relief or, except as provided in subclause

(II), for injunctive relief, to any person for such action,

regardless of whether the domain name is finally determined to

infringe or dilute the mark.

(II) A domain name registrar, domain name registry, or other

domain name registration authority described in subclause (I) may

be subject to injunctive relief only if such registrar, registry,

or other registration authority has -

(aa) not expeditiously deposited with a court, in which an

action has been filed regarding the disposition of the domain

name, documents sufficient for the court to establish the

court's control and authority regarding the disposition of the

registration and use of the domain name;

(bb) transferred, suspended, or otherwise modified the domain

name during the pendency of the action, except upon order of

the court; or

(cc) willfully failed to comply with any such court order.

(ii) An action referred to under clause (i)(I) is any action of

refusing to register, removing from registration, transferring,

temporarily disabling, or permanently canceling a domain name -

(I) in compliance with a court order under section 1125(d) of

this title; or

(II) in the implementation of a reasonable policy by such

registrar, registry, or authority prohibiting the registration

of a domain name that is identical to, confusingly similar to,

or dilutive of another's mark.

(iii) A domain name registrar, a domain name registry, or other

domain name registration authority shall not be liable for

damages under this section for the registration or maintenance of

a domain name for another absent a showing of bad faith intent to

profit from such registration or maintenance of the domain name.

(iv) If a registrar, registry, or other registration authority

takes an action described under clause (ii) based on a knowing

and material misrepresentation by any other person that a domain

name is identical to, confusingly similar to, or dilutive of a

mark, the person making the knowing and material

misrepresentation shall be liable for any damages, including

costs and attorney's fees, incurred by the domain name registrant

as a result of such action. The court may also grant injunctive

relief to the domain name registrant, including the reactivation

of the domain name or the transfer of the domain name to the

domain name registrant.

(v) A domain name registrant whose domain name has been

suspended, disabled, or transferred under a policy described

under clause (ii)(II) may, upon notice to the mark owner, file a

civil action to establish that the registration or use of the

domain name by such registrant is not unlawful under this

chapter. The court may grant injunctive relief to the domain

name registrant, including the reactivation of the domain name or

transfer of the domain name to the domain name registrant.

(E) As used in this paragraph -

(i) the term ''violator'' means a person who violates section

1125(a) of this title; and

(ii) the term ''violating matter'' means matter that is the

subject of a violation under section 1125(a) of this title.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 32, 60 Stat. 437; Pub. L.

87-772, Sec. 17, Oct. 9, 1962, 76 Stat. 773; Pub. L. 100-667, title

I, Sec. 127, Nov. 16, 1988, 102 Stat. 3943; Pub. L. 102-542, Sec.

3(a), Oct. 27, 1992, 106 Stat. 3567; Pub. L. 105-330, title II,

Sec. 201(a)(8), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106-43, Sec.

4(a), Aug. 5, 1999, 113 Stat. 219; Pub. L. 106-113, div. B, Sec.

1000(a)(9) (title III, Sec. 3004), Nov. 29, 1999, 113 Stat. 1536,

1501A-549.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 16, 33 Stat. 728; Mar. 19,

1920, ch. 104, Sec. 4, 41 Stat. 534.

AMENDMENTS

1999 - Par. (1). Pub. L. 106-43, in undesignated par., inserted

after ''includes'' in first sentence ''the United States, all

agencies and instrumentalities thereof, and all individuals, firms,

corporations, or other persons acting for the United States and

with the authorization and consent of the United States, and'' and,

in second sentence, substituted ''The United States, all agencies

and instrumentalities thereof, and all individuals, firms,

corporations, other persons acting for the United States and with

the authorization and consent of the United States, and any'' for

''Any''.

Par. (2). Pub. L. 106-113, Sec. 1000(a)(9) (title III, Sec.

3004(1)), in introductory provisions, substituted ''under section

1125(a) or (d) of this title'' for ''under section 1125(a) of this

title''.

Par. (2)(D), (E). Pub. L. 106-113, Sec. 1000(a)(9) (title III,

Sec. 3004(2)), added subpar. (D) and redesignated former subpar.

(D) as (E).

1998 - Par. (1). Pub. L. 105-330 substituted ''As used in this

paragraph'' for ''As used in this subsection'' in last paragraph.

1992 - Par. (1). Pub. L. 102-542 inserted at end ''As used in

this subsection, the term 'any person' includes any State, any

instrumentality of a State, and any officer or employee of a State

or instrumentality of a State acting in his or her official

capacity. Any State, and any such instrumentality, officer, or

employee, shall be subject to the provisions of this chapter in the

same manner and to the same extent as any nongovernmental entity.''

1988 - Par. (2). Pub. L. 100-667 amended par. (2) generally.

Prior to amendment, par. (2) read as follows: ''Notwithstanding any

other provision of this chapter, the remedies given to the owner of

the right infringed shall be limited as follows: (a) Where an

infringer in engaged solely in the business of printing the mark

for others and establishes that he was an innocent infringer the

owner of the right infringed shall be entitled as against such

infringer only to an injunction against future printing; (b) where

the infringement complained of is contained in or is part of paid

advertising matter in a newspaper, magazine, or other similar

periodical the remedies of the owner of the right infringed as

against the publisher or distributor of such newspaper, magazine,

or other similar periodical shall be confined to an injunction

against the presentation of such advertising matter in future

issues of such newspapers, magazines, or other similar periodical:

Provided, That these limitations shall apply only to innocent

infringers; (c) injunction relief shall not be available to the

owner of the right infringed in respect of an issue of a newspaper,

magazine, or other similar periodical containing infringing matter

when restraining the dissemination of such infringing matter in any

particular issue of such periodical would delay the delivery of

such issue after the regular time therefor, and such delay would be

due to the method by which publication and distribution of such

periodical is customarily conducted in accordance with sound

business practice, and not to any method or device adopted for the

evasion of this section or to prevent or delay the issuance of an

injunction or restraining order with respect to such infringing

matter.''

1962 - Par. (1). Pub. L. 87-772 amended provisions generally, and

among other changes, inserted ''distribution'', and struck out

''purchasers as to the source of origin of such goods or services''

after ''or to deceive'' in subsec. (a), inserted provisions

regarding the likelihood of such use causing confusion, mistake, or

deception, in subsec. (b), and struck out the limitation on

recovery under subsec. (b) to acts committed with knowledge that

such acts would deceive purchasers.

Par. (2)(b). Pub. L. 87-772 substituted ''publisher'' for

''published''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 applicable to all domain names

registered before, on, or after Nov. 29, 1999, see section

1000(a)(9) (title III, Sec. 3010) of Pub. L. 106-113, set out as a

note under section 1117 of this title.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1992 AMENDMENT

Section 4 of Pub. L. 102-542 provided that: ''The amendments made

by this Act (enacting section 1122 of this title and amending this

section and sections 1125 and 1127 of this title) shall take effect

with respect to violations that occur on or after the date of the

enactment of this Act (Oct. 27, 1992).''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1115, 1116, 1117, 1122 of

this title.

-CITE-

15 USC Sec. 1115 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1115. Registration on principal register as evidence of

exclusive right to use mark; defenses

-STATUTE-

(a) Evidentiary value; defenses

Any registration issued under the Act of March 3, 1881, or the

Act of February 20, 1905, or of a mark registered on the principal

register provided by this chapter and owned by a party to an action

shall be admissible in evidence and 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

registration subject to any conditions or limitations stated

therein, but shall not preclude another person from proving any

legal or equitable defense or defect, including those set forth in

subsection (b) of this section, which might have been asserted if

such mark had not been registered.

(b) Incontestability; defenses

To the extent that the right to use the registered mark has

become incontestable under section 1065 of this title, the

registration shall be conclusive 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. Such

conclusive evidence shall relate to the exclusive right to use the

mark on or in connection with the goods or services specified in

the affidavit filed under the provisions of section 1065 of this

title, or in the renewal application filed under the provisions of

section 1059 of this title if the goods or services specified in

the renewal are fewer in number, subject to any conditions or

limitations in the registration or in such affidavit or renewal

application. Such conclusive evidence of the right to use the

registered mark shall be subject to proof of infringement as

defined in section 1114 of this title, and shall be subject to the

following defenses or defects:

(1) That the registration or the incontestable right to use the

mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used by or with the

permission of the registrant or a person in privity with the

registrant, so as to misrepresent the source of the goods or

services on or in connection with which the mark is used; or

(4) That the use of the name, term, or device charged to be an

infringement is a use, otherwise than as a mark, of the party's

individual name in his own business, or of the individual name of

anyone in privity with such party, or of a term or device which

is descriptive of and used fairly and in good faith only to

describe the goods or services of such party, or their geographic

origin; or

(5) That the mark whose use by a party is charged as an

infringement was adopted without knowledge of the registrant's

prior use and has been continuously used by such party or those

in privity with him from a date prior to (A) the date of

constructive use of the mark established pursuant to section

1057(c) of this title, (B) the registration of the mark under

this chapter if the application for registration is filed before

the effective date of the Trademark Law Revision Act of 1988, or

(C) publication of the registered mark under subsection (c) of

section 1062 of this title: Provided, however, That this defense

or defect shall apply only for the area in which such continuous

prior use is proved; or

(6) That the mark whose use is charged as an infringement was

registered and used prior to the registration under this chapter

or publication under subsection (c) of section 1062 of this title

of the registered mark of the registrant, and not abandoned:

Provided, however, That this defense or defect shall apply only

for the area in which the mark was used prior to such

registration or such publication of the registrant's mark; or

(7) That the mark has been or is being used to violate the

antitrust laws of the United States; or

(8) That the mark is functional; or

(9) That equitable principles, including laches, estoppel, and

acquiescence, are applicable.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 33, 60 Stat. 438; Pub. L.

87-772, Sec. 18, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100-667, title

I, Sec. 128(a), (b), Nov. 16, 1988, 102 Stat. 3944; Pub. L.

105-330, title II, Sec. 201(a)(9), Oct. 30, 1998, 112 Stat. 3070;

Pub. L. 107-273, div. C, title III, Sec. 13207(b)(7), Nov. 2,

2002, 116 Stat. 1908.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881, and February 20, 1905, referred to in subsec.

(a), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20,

1905, ch. 592, 33 Stat. 724, which were repealed insofar as

inconsistent with this chapter by act July 5, 1946, ch. 540, Sec.

46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections

81 to 109 of this title.

The effective date of the Trademark Law Revision Act of 1988,

referred to in subsec. (b)(5), is one year after Nov. 16, 1988. See

section 136 of Pub. L. 100-667, set out as an Effective Date of

1988 Amendment note under section 1051 of this title.

The antitrust laws, referred to in subsec. (b)(7), are classified

generally to chapter 1 (Sec. 1 et seq.) of this title.

-MISC2-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 16, 21, 33 Stat. 728, 729.

AMENDMENTS

2002 - Subsec. (b)(8). Pub. L. 107-273 realigned margins.

1998 - Subsec. (b)(8), (9). Pub. L. 105-330 added par. (8) and

redesignated former par. (8) as (9).

1988 - Subsec. (a). Pub. L. 100-667, Sec. 128(a), inserted ''the

validity of the registered mark and of the registration of the

mark, of the registrant's ownership of the mark, and of the'' after

''facie evidence of'', inserted ''or in connection with'' after

''in commerce on'', substituted ''another person'' for ''an

opposing party'', and inserted '', including those set forth in

subsection (b) of this section,'' after ''or defect''.

Subsec. (b). Pub. L. 100-667, Sec. 128(b)(1), amended

introductory provisions generally. Prior to amendment,

introductory provisions read as follows: ''If the right to use the

registered mark has become incontestable under section 1065 of this

title, the registration shall be conclusive evidence 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

affidavit filed under the provisions of said section 1065 subject

to any conditions or limitations stated therein except when one of

the following defenses or defects is established:''.

Subsec. (b)(3). Pub. L. 100-667, Sec. 128(b)(2), inserted ''on

or'' after ''goods or services''.

Subsec. (b)(4). Pub. L. 100-667, Sec. 128(b)(3), struck out

''trade or service'' after ''than as a'' and ''to users'' after

''only to describe''.

Subsec. (b)(5). Pub. L. 100-667, Sec. 128(b)(4), substituted

''(A) the date of constructive use of the mark established pursuant

to section 1057(c) of this title, (B) the registration of the mark

under this chapter if the application for registration is filed

before the effective date of the Trademark Law Revision Act of

1988, or (C)'' for ''registration of the mark under this chapter

or''.

Subsec. (b)(8). Pub. L. 100-667, Sec. 128(b)(5), (6), added par.

(8).

1962 - Subsec. (a). Pub. L. 87-772 substituted ''registration

subject to'' for ''certificate subject to'', and struck out

''certificate of'' before ''registration issued''.

Subsec. (b). Pub. L. 87-772 substituted ''registration shall''

for ''certificate shall'', and ''affidavit filed under the

provisions of said section 1065'' for ''certificate'' in text

preceding par. (1), substituted ''registrant or a person in privity

with the registrant,'' for ''assignee'', and struck out ''has been

assigned and'' after ''registered mark'' in par. (3), substituted

''registration of the mark under this chapter or'' for ''the'', and

struck out ''(a) or'' before ''(c) of section 1062'' in par. (5),

inserted ''registration under this chapter'', substituted ''such

registration or such'' for ''the date of'', and struck out ''(a)

or'' before ''(c) of section 1062'', ''only where the said mark has

been published pursuant to subsections (c) of section 1062 of this

title and shall apply'' after ''defect shall apply'', and ''under

subsection (a) or (c) of section 1062 of this title'' after

''registrant's mark'', in par. (6).

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1094 of this title.

-CITE-

15 USC Sec. 1116 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1116. Injunctive relief

-STATUTE-

(a) Jurisdiction; service

The several courts vested with jurisdiction of civil actions

arising under this chapter shall have power to grant injunctions,

according to the principles of equity and upon such terms as the

court may deem reasonable, to prevent the violation of any right of

the registrant of a mark registered in the Patent and Trademark

Office or to prevent a violation under subsection (a), (c), or (d)

of section 1125 of this title. Any such injunction may include a

provision directing the defendant to file with the court and serve

on the plaintiff within thirty days after the service on the

defendant of such injunction, or such extended period as the court

may direct, a report in writing under oath setting forth in detail

the manner and form in which the defendant has complied with the

injunction. Any such injunction granted upon hearing, after notice

to the defendant, by any district court of the United States, may

be served on the parties against whom such injunction is granted

anywhere in the United States where they may be found, and shall be

operative and may be enforced by proceedings to punish for

contempt, or otherwise, by the court by which such injunction was

granted, or by any other United States district court in whose

jurisdiction the defendant may be found.

(b) Transfer of certified copies of court papers

The said courts shall have jurisdiction to enforce said

injunction, as provided in this chapter, as fully as if the

injunction had been granted by the district court in which it is

sought to be enforced. The clerk of the court or judge granting

the injunction shall, when required to do so by the court before

which application to enforce said injunction is made, transfer

without delay to said court a certified copy of all papers on file

in his office upon which said injunction was granted.

(c) Notice to Director

It shall be the duty of the clerks of such courts within one

month after the filing of any action, suit, or proceeding involving

a mark registered under the provisions of this chapter to give

notice thereof in writing to the Director setting forth in order so

far as known the names and addresses of the litigants and the

designating number or numbers of the registration or registrations

upon which the action, suit, or proceeding has been brought, and in

the event any other registration be subsequently included in the

action, suit, or proceeding by amendment, answer, or other

pleading, the clerk shall give like notice thereof to the Director,

and within one month after the judgment is entered or an appeal is

taken the clerk of the court shall give notice thereof to the

Director, and it shall be the duty of the Director on receipt of

such notice forthwith to endorse the same upon the file wrapper of

the said registration or registrations and to incorporate the same

as a part of the contents of said file wrapper.

(d) Civil actions arising out of use of counterfeit marks

(1)(A) In the case of a civil action arising under section

1114(1)(a) of this title or section 220506 of title 36 with respect

to a violation that consists of using a counterfeit mark in

connection with the sale, offering for sale, or distribution of

goods or services, the court may, upon ex parte application, grant

an order under subsection (a) of this section pursuant to this

subsection providing for the seizure of goods and counterfeit marks

involved in such violation and the means of making such marks, and

records documenting the manufacture, sale, or receipt of things

involved in such violation.

(B) As used in this subsection the term ''counterfeit mark''

means -

(i) a counterfeit of a mark that is registered on the principal

register in the United States Patent and Trademark Office for

such goods or services sold, offered for sale, or distributed and

that is in use, whether or not the person against whom relief is

sought knew such mark was so registered; or

(ii) a spurious designation that is identical with, or

substantially indistinguishable from, a designation as to which

the remedies of this chapter are made available by reason of

section 220506 of title 36;

but such term does not include any mark or designation used on or

in connection with goods or services of which the manufacture or

producer was, at the time of the manufacture or production in

question authorized to use the mark or designation for the type of

goods or services so manufactured or produced, by the holder of the

right to use such mark or designation.

(2) The court shall not receive an application under this

subsection unless the applicant has given such notice of the

application as is reasonable under the circumstances to the United

States attorney for the judicial district in which such order is

sought. Such attorney may participate in the proceedings arising

under such application if such proceedings may affect evidence of

an offense against the United States. The court may deny such

application if the court determines that the public interest in a

potential prosecution so requires.

(3) The application for an order under this subsection shall -

(A) be based on an affidavit or the verified complaint

establishing facts sufficient to support the findings of fact and

conclusions of law required for such order; and

(B) contain the additional information required by paragraph

(5) of this subsection to be set forth in such order.

(4) The court shall not grant such an application unless -

(A) the person obtaining an order under this subsection

provides the security determined adequate by the court for the

payment of such damages as any person may be entitled to recover

as a result of a wrongful seizure or wrongful attempted seizure

under this subsection; and

(B) the court finds that it clearly appears from specific facts

that -

(i) an order other than an ex parte seizure order is not

adequate to achieve the purposes of section 1114 of this title;

(ii) the applicant has not publicized the requested seizure;

(iii) the applicant is likely to succeed in showing that the

person against whom seizure would be ordered used a counterfeit

mark in connection with the sale, offering for sale, or

distribution of goods or services;

(iv) an immediate and irreparable injury will occur if such

seizure is not ordered;

(v) the matter to be seized will be located at the place

identified in the application;

(vi) the harm to the applicant of denying the application

outweighs the harm to the legitimate interests of the person

against whom seizure would be ordered of granting the

application; and

(vii) the person against whom seizure would be ordered, or

persons acting in concert with such person, would destroy,

move, hide, or otherwise make such matter inaccessible to the

court, if the applicant were to proceed on notice to such

person.

(5) An order under this subsection shall set forth -

(A) the findings of fact and conclusions of law required for

the order;

(B) a particular description of the matter to be seized, and a

description of each place at which such matter is to be seized;

(C) the time period, which shall end not later than seven days

after the date on which such order is issued, during which the

seizure is to be made;

(D) the amount of security required to be provided under this

subsection; and

(E) a date for the hearing required under paragraph (10) of

this subsection.

(6) The court shall take appropriate action to protect the person

against whom an order under this subsection is directed from

publicity, by or at the behest of the plaintiff, about such order

and any seizure under such order.

(7) Any materials seized under this subsection shall be taken

into the custody of the court. The court shall enter an

appropriate protective order with respect to discovery by the

applicant of any records that have been seized. The protective

order shall provide for appropriate procedures to assure that

confidential information contained in such records is not

improperly disclosed to the applicant.

(8) An order under this subsection, together with the supporting

documents, shall be sealed until the person against whom the order

is directed has an opportunity to contest such order, except that

any person against whom such order is issued shall have access to

such order and supporting documents after the seizure has been

carried out.

(9) The court shall order that service of a copy of the order

under this subsection shall be made by a Federal law enforcement

officer (such as a United States marshal or an officer or agent of

the United States Customs Service, Secret Service, Federal Bureau

of Investigation, or Post Office) or may be made by a State or

local law enforcement officer, who, upon making service, shall

carry out the seizure under the order. The court shall issue

orders, when appropriate, to protect the defendant from undue

damage from the disclosure of trade secrets or other confidential

information during the course of the seizure, including, when

appropriate, orders restricting the access of the applicant (or any

agent or employee of the applicant) to such secrets or information.

(10)(A) The court shall hold a hearing, unless waived by all the

parties, on the date set by the court in the order of seizure.

That date shall be not sooner than ten days after the order is

issued and not later than fifteen days after the order is issued,

unless the applicant for the order shows good cause for another

date or unless the party against whom such order is directed

consents to another date for such hearing. At such hearing the

party obtaining the order shall have the burden to prove that the

facts supporting findings of fact and conclusions of law necessary

to support such order are still in effect. If that party fails to

meet that burden, the seizure order shall be dissolved or modified

appropriately.

(B) In connection with a hearing under this paragraph, the court

may make such orders modifying the time limits for discovery under

the Rules of Civil Procedure as may be necessary to prevent the

frustration of the purposes of such hearing.

(11) A person who suffers damage by reason of a wrongful seizure

under this subsection has a cause of action against the applicant

for the order under which such seizure was made, and shall be

entitled to recover such relief as may be appropriate, including

damages for lost profits, cost of materials, loss of good will, and

punitive damages in instances where the seizure was sought in bad

faith, and, unless the court finds extenuating circumstances, to

recover a reasonable attorney's fee. The court in its discretion

may award prejudgment interest on relief recovered under this

paragraph, at an annual interest rate established under section

6621(a)(2) of title 26, commencing on the date of service of the

claimant's pleading setting forth the claim under this paragraph

and ending on the date such recovery is granted, or for such

shorter time as the court deems appropriate.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 34, 60 Stat. 439; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98-473, title

II, Sec. 1503(1), Oct. 12, 1984, 98 Stat. 2179; Pub. L. 100-667,

title I, Sec. 128(c)-(e), Nov. 16, 1988, 102 Stat. 3945; Pub. L.

104-153, Sec. 6, July 2, 1996, 110 Stat. 1388; Pub. L. 106-43, Sec.

3(a)(1), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106-113, div. B,

Sec. 1000(a)(9) (title III, Sec. 3003(a)(1), title IV, Sec.

4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536, 1501A-548,

1501A-583; Pub. L. 107-273, div. C, title III, Sec.

13207(b)(8)-(10), Nov. 2, 2002, 116 Stat. 1908.)

-REFTEXT-

REFERENCES IN TEXT

The Rules of Civil Procedure, referred to in subsec. (d)(10)(B),

probably means the Federal Rules of Civil Procedure, which are set

out in the Appendix to Title 28, Judiciary and Judicial Procedure.

-MISC2-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 19, 20, 33 Stat. 729; Mar. 3,

1911, ch. 231, Sec. 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49

Stat. 1921.

AMENDMENTS

2002 - Subsec. (d)(1)(A), (B)(ii). Pub. L. 107-273, Sec.

13207(b)(8), (9), substituted ''section 220506 of title 36'' for

''section 110 of the Act entitled 'An Act to incorporate the United

States Olympic Association', approved September 21, 1950 (36 U.S.C.

380)''.

Subsec. (d)(11). Pub. L. 107-273, Sec. 13207(b)(10), substituted

''6621(a)(2) of title 26'' for ''6621 of title 26''.

1999 - Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) (title III,

Sec. 3003(a)(1)), substituted ''(a), (c), or (d)'' for ''(a) or

(c)'' in first sentence.

Pub. L. 106-43 substituted ''subsection (a) or (c) of section

1125 of this title'' for ''section 1125(a) of this title'' in first

sentence.

Subsec. (c). Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(B)), substituted ''Director'' for ''Commissioner''

wherever appearing.

1996 - Subsec. (d)(9). Pub. L. 104-153 inserted first sentence

and struck out former first sentence which read as follows: ''The

court shall order that a United States marshal or other law

enforcement officer is to serve a copy of the order under this

subsection and then is to carry out the seizure under such order.''

1988 - Subsec. (a). Pub. L. 100-667, Sec. 128(c), inserted ''or

to prevent a violation under section 1125(a) of this title'' after

''Office'' in first sentence.

Subsec. (c). Pub. L. 100-667, Sec. 128(d), substituted

''proceeding involving a mark registered'' for ''proceeding

arising'' and ''judgment is entered or an appeal is taken'' for

''decision is rendered, appeal taken or a decree issued''.

Subsec. (d)(1)(B). Pub. L. 100-667, Sec. 128(e), inserted ''on

or'' after ''or designation used'' in concluding provisions.

1984 - Pub. L. 98-473 designated first, second, and third

undesignated pars. as subsecs. (a), (b), and (c), respectively and

added subsec. (d).

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) (title III, Sec. 3003(a)(1)) of

Pub. L. 106-113 applicable to all domain names registered before,

on, or after Nov. 29, 1999, see section 1000(a)(9) (title III, Sec.

3010) of Pub. L. 106-113, set out as a note under section 1117 of

this title.

Amendment by section 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)) of

Pub. L. 106-113 effective 4 months after Nov. 29, 1999, see section

1000(a)(9) (title IV, Sec. 4731) of Pub. L. 106-113, set out as a

note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions, personnel, assets, and liabilities of

the United States Customs Service of the Department of the

Treasury, including functions of the Secretary of the Treasury

relating thereto, to the Secretary of Homeland Security, and for

treatment of related references, see sections 203(1), 551(d),

552(d), and 557 of Title 6, Domestic Security, and the Department

of Homeland Security Reorganization Plan of November 25, 2002, as

modified, set out as a note under section 542 of Title 6.

For transfer of the functions, personnel, assets, and obligations

of the United States Secret Service, including the functions of the

Secretary of the Treasury relating thereto, to the Secretary of

Homeland Security, and for treatment of related references, see

sections 381, 551(d), 552(d), and 557 of Title 6, Domestic

Security, and the Department of Homeland Security Reorganization

Plan of November 25, 2002, as modified, set out as a note under

section 542 of Title 6.

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1117, 1118, 1122, 1125 of

this title.

-CITE-

15 USC Sec. 1117 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1117. Recovery for violation of rights

-STATUTE-

(a) Profits; damages and costs; attorney fees

When a violation of any right of the registrant of a mark

registered in the Patent and Trademark Office, a violation under

section 1125(a) or (d) of this title, or a willful violation under

section 1125(c) of this title, shall have been established in any

civil action arising under this chapter, the plaintiff shall be

entitled, subject to the provisions of sections 1111 and 1114 of

this title, and subject to the principles of equity, to recover (1)

defendant's profits, (2) any damages sustained by the plaintiff,

and (3) the costs of the action. The court shall assess such

profits and damages or cause the same to be assessed under its

direction. In assessing profits the plaintiff shall be required to

prove defendant's sales only; defendant must prove all elements of

cost or deduction claimed. In assessing damages the court may

enter judgment, according to the circumstances of the case, for any

sum above the amount found as actual damages, not exceeding three

times such amount. If the court shall find that the amount of the

recovery based on profits is either inadequate or excessive the

court may in its discretion enter judgment for such sum as the

court shall find to be just, according to the circumstances of the

case. Such sum in either of the above circumstances shall

constitute compensation and not a penalty. The court in

exceptional cases may award reasonable attorney fees to the

prevailing party.

(b) Treble damages for use of counterfeit mark

In assessing damages under subsection (a) of this section, the

court shall, unless the court finds extenuating circumstances,

enter judgment for three times such profits or damages, whichever

is greater, together with a reasonable attorney's fee, in the case

of any violation of section 1114(1)(a) of this title or section

220506 of title 36 that consists of intentionally using a mark or

designation, knowing such mark or designation is a counterfeit mark

(as defined in section 1116(d) of this title), in connection with

the sale, offering for sale, or distribution of goods or services.

In such cases, the court may in its discretion award prejudgment

interest on such amount at an annual interest rate established

under section 6621(a)(2) of title 26, commencing on the date of the

service of the claimant's pleadings setting forth the claim for

such entry and ending on the date such entry is made, or for such

shorter time as the court deems appropriate.

(c) Statutory damages for use of counterfeit marks

In a case involving the use of a counterfeit mark (as defined in

section 1116(d) of this title) in connection with the sale,

offering for sale, or distribution of goods or services, the

plaintiff may elect, at any time before final judgment is rendered

by the trial court, to recover, instead of actual damages and

profits under subsection (a) of this section, an award of statutory

damages for any such use in connection with the sale, offering for

sale, or distribution of goods or services in the amount of -

(1) not less than $500 or more than $100,000 per counterfeit

mark per type of goods or services sold, offered for sale, or

distributed, as the court considers just; or

(2) if the court finds that the use of the counterfeit mark was

willful, not more than $1,000,000 per counterfeit mark per type

of goods or services sold, offered for sale, or distributed, as

the court considers just.

(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this

title, the plaintiff may elect, at any time before final judgment

is rendered by the trial court, to recover, instead of actual

damages and profits, an award of statutory damages in the amount of

not less than $1,000 and not more than $100,000 per domain name, as

the court considers just.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 35, 60 Stat. 439; Pub. L.

87-772, Sec. 19, Oct. 9, 1962, 76 Stat. 774; Pub. L. 93-596, Sec.

1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93-600, Sec. 3, Jan. 2,

1975, 88 Stat. 1955; Pub. L. 98-473, title II, Sec. 1503(2), Oct.

12, 1984, 98 Stat. 2182; Pub. L. 99-514, Sec. 2, Oct. 22, 1986, 100

Stat. 2095; Pub. L. 100-667, title I, Sec. 129, Nov. 16, 1988, 102

Stat. 3945; Pub. L. 104-153, Sec. 7, July 2, 1996, 110 Stat. 1388;

Pub. L. 106-43, Sec. 3(b), Aug. 5, 1999, 113 Stat. 219; Pub. L.

106-113, div. B, Sec. 1000(a)(9) (title III, Sec. 3003(a)(2),

(b)), Nov. 29, 1999, 113 Stat. 1536, 1501A-549; Pub. L. 107-273,

div. C, title III, Sec. 13207(a), (b)(11), Nov. 2, 2002, 116 Stat.

1906, 1908.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 16, 19, 33 Stat. 728, 729; Mar.

19, 1920, ch. 104, Sec. 4, 41 Stat. 534.

AMENDMENTS

2002 - Subsec. (a). Pub. L. 107-273, Sec. 13207(a), substituted

''a violation under section 1125(a) or (d) of this title,'' for ''a

violation under section 1125(a), (c), or (d) of this title,''.

Subsec. (b). Pub. L. 107-273, Sec. 13207(b)(11), substituted

''section 220506 of title 36'' for ''section 110 of the Act

entitled 'An Act to incorporate the United States Olympic

Association', approved September 21, 1950 (36 U.S.C. 380)'' and

''6621(a)(2) of title 26'' for ''6621 of title 26''.

1999 - Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) (title III,

Sec. 3003(a)(2)), inserted '', (c), or (d)'' after ''section

1125(a)'' in first sentence.

Pub. L. 106-43 substituted ''a violation under section 1125(a) of

this title, or a willful violation under section 1125(c) of this

title,'' for ''or a violation under section 1125(a) of this

title,'' in first sentence.

Subsec. (d). Pub. L. 106-113, Sec. 1000(a)(9) (title III, Sec.

3003(b)), added subsec. (d).

1996 - Subsec. (c). Pub. L. 104-153 added subsec. (c).

1988 - Subsec. (a). Pub. L. 100-667 inserted '', or a violation

under section 1125(a) of this title,'' after ''Office'' in first

sentence.

1986 - Subsec. (b). Pub. L. 99-514 substituted ''Internal Revenue

Code of 1986'' for ''Internal Revenue Code of 1954'', which for

purposes of codification was translated as ''title 26'' thus

requiring no change in text.

1984 - Pub. L. 98-473 designated existing provisions as subsec.

(a) and added subsec. (b).

1975 - Pub. L. 93-600 inserted provisions relating to awarding of

attorney fees in exceptional cases.

Pub. L. 93-596 substituted ''Patent and Trademark Office'' for

''Patent Office''.

1962 - Pub. L. 87-772 substituted ''1114'' for ''1113(1)(b)''.

EFFECTIVE DATE OF 1999 AMENDMENT

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III, Sec. 3010),

Nov. 29, 1999, 113 Stat. 1536, 1501A-552, provided that: ''Sections

3002(a), 3003, 3004, 3005, and 3008 of this title (amending this

section and sections 1114, 1116, 1125, and 1127 of this title, and

enacting provisions set out as a note under section 1051 of this

title) shall apply to all domain names registered before, on, or

after the date of the enactment of this Act (Nov. 29, 1999), except

that damages under subsection (a) or (d) of section 35 of the

Trademark Act of 1946 (15 U.S.C. 1117), as amended by section 3003

of this title, shall not be available with respect to the

registration, trafficking, or use of a domain name that occurs

before the date of the enactment of this Act.''

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENTS

Amendment by Pub. L. 93-600 effective Jan. 2, 1975, but not to

affect any suit, proceeding, or appeal then pending, see section 4

of Pub. L. 93-600, set out as a note under section 1063 of this

title.

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1122, 1125 of this title.

-CITE-

15 USC Sec. 1118 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1118. Destruction of infringing articles

-STATUTE-

In any action arising under this chapter, in which a violation of

any right of the registrant of a mark registered in the Patent and

Trademark Office, a violation under section 1125(a) of this title,

or a willful violation under section 1125(c) of this title, shall

have been established, the court may order that all labels, signs,

prints, packages, wrappers, receptacles, and advertisements in the

possession of the defendant, bearing the registered mark or, in the

case of a violation of section 1125(a) of this title or a willful

violation under section 1125(c) of this title, the word, term,

name, symbol, device, combination thereof, designation,

description, or representation that is the subject of the

violation, or any reproduction, counterfeit, copy, or colorable

imitation thereof, and all plates, molds, matrices, and other means

of making the same, shall be delivered up and destroyed. The party

seeking an order under this section for destruction of articles

seized under section 1116(d) of this title shall give ten days'

notice to the United States attorney for the judicial district in

which such order is sought (unless good cause is shown for lesser

notice) and such United States attorney may, if such destruction

may affect evidence of an offense against the United States, seek a

hearing on such destruction or participate in any hearing otherwise

to be held with respect to such destruction.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 36, 60 Stat. 440; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98-473, title

II, Sec. 1503(3), Oct. 12, 1984, 98 Stat. 2182; Pub. L. 100-667,

title I, Sec. 130, Nov. 16, 1988, 102 Stat. 3945; Pub. L. 106-43,

Sec. 3(c), Aug. 5, 1999, 113 Stat. 219.)

-MISC1-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 20, 33 Stat. 729; Mar. 3, 1911,

ch. 231, Sec. 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49 Stat.

1921.

AMENDMENTS

1999 - Pub. L. 106-43, in first sentence, substituted ''a

violation under section 1125(a) of this title, or a willful

violation under section 1125(c) of this title,'' for ''or a

violation under section 1125(a) of this title,'' and inserted ''or

a willful violation under section 1125(c) of this title'' before

'', the word,''.

1988 - Pub. L. 100-667 inserted in first sentence '', or a

violation under section 1125(a) of this title,'' after ''Office''

and ''or, in the case of a violation of section 1125(a) of this

title, the word, term, name, symbol, device, combination thereof,

designation, description, or representation that is the subject of

the violation,'' after ''registered mark''.

1984 - Pub. L. 98-473 inserted ''The party seeking an order under

this section for destruction of articles seized under section

1116(d) of this title shall give ten days' notice to the United

States attorney for the judicial district in which such order is

sought (unless good cause is shown for lesser notice) and such

United States attorney may, if such destruction may affect evidence

of an offense against the United States, seek a hearing on such

destruction or participate in any hearing otherwise to be held with

respect to such destruction.''

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1122, 1125 of this title.

-CITE-

15 USC Sec. 1119 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1119. Power of court over registration

-STATUTE-

In any action involving a registered mark the court may determine

the right to registration, order the cancelation of registrations,

in whole or in part, restore canceled registrations, and otherwise

rectify the register with respect to the registrations of any party

to the action. Decrees and orders shall be certified by the court

to the Director, who shall make appropriate entry upon the records

of the Patent and Trademark Office, and shall be controlled

thereby.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 37, 60 Stat. 440; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999,

113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 22, 33 Stat. 729.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1122 of this title.

-CITE-

15 USC Sec. 1120 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1120. Civil liability for false or fraudulent registration

-STATUTE-

Any person who shall procure registration in the Patent and

Trademark Office of a mark by a false or fraudulent declaration or

representation, oral or in writing, or by any false means, shall be

liable in a civil action by any person injured thereby for any

damages sustained in consequence thereof.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 38, 60 Stat. 440; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 25, 33 Stat. 730.

AMENDMENTS

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1122 of this title.

-CITE-

15 USC Sec. 1121 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1121. Jurisdiction of Federal courts; State and local

requirements that registered trademarks be altered or displayed

differently; prohibition

-STATUTE-

(a) The district and territorial courts of the United States

shall have original jurisdiction and the courts of appeal of the

United States (other than the United States Court of Appeals for

the Federal Circuit) shall have appellate jurisdiction, of all

actions arising under this chapter, without regard to the amount in

controversy or to diversity or lack of diversity of the citizenship

of the parties.

(b) No State or other jurisdiction of the United States or any

political subdivision or any agency thereof may require alteration

of a registered mark, or require that additional trademarks,

service marks, trade names, or corporate names that may be

associated with or incorporated into the registered mark be

displayed in the mark in a manner differing from the display of

such additional trademarks, service marks, trade names, or

corporate names contemplated by the registered mark as exhibited in

the certificate of registration issued by the United States Patent

and Trademark Office.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 39, formerly Sec. 39 and

39a, 60 Stat. 440; Pub. L. 97-164, title I, Sec. 148, Apr. 2, 1982,

96 Stat. 46; Pub. L. 97-296, Oct. 12, 1982, 96 Stat. 1316; Pub. L.

100-667, title I, Sec. 131, Nov. 16, 1988, 102 Stat. 3946; Pub. L.

105-330, title II, Sec. 201(a)(10), Oct. 30, 1998, 112 Stat. 3070.)

-COD-

CODIFICATION

Pub. L. 100-667, Sec. 131(b)(1), transferred section 39a of act

July 5, 1946, which was classified to section 1121a of this title,

to subsec. (b) of this section.

In subsec. (a), the words ''and the United States Court of

Appeals for the District of Columbia'' following ''the Courts of

Appeal of the United States'' have been deleted as superfluous in

view of section 41 of Title 28, Judiciary and Judicial Procedure,

which includes the District of Columbia within the eleven judicial

circuits of the United States. The word ''and'' has been inserted

preceding ''the courts of appeal of the United States'' to preserve

the conjunctive sense of the sentence.

-MISC3-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 17, 33 Stat. 728; Mar. 3, 1911,

ch. 231, Sec. 291, 36 Stat. 1167; June 7, 1934, ch. 426, 48 Stat.

926; June 25, 1936, ch. 804, 49 Stat. 1921.

AMENDMENTS

1998 - Subsec. (a). Pub. L. 105-330 substituted ''courts'' for

''circuit courts'' before ''of appeal of the United States''.

1988 - Subsec. (a). Pub. L. 100-667, Sec. 131(a), designated

existing provisions as subsec. (a).

Subsec. (b). Pub. L. 100-667, Sec. 131(b), redesignated section

1121a of this title as subsec. (b) of this section and substituted

''service marks'' for ''servicemarks'' in two places.

1982 - Pub. L. 97-164 inserted ''(other than the United States

Court of Appeals for the Federal Circuit)''.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-164 effective Oct. 1, 1982, see section

402 of Pub. L. 97-164, set out as a note under section 171 of Title

28, Judiciary and Judicial Procedure.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-CITE-

15 USC Sec. 1121a 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1121a. Transferred

-COD-

CODIFICATION

Section, act July 5, 1946, ch. 540, title VI, Sec. 39a, as added

Oct. 12, 1982, Pub. L. 97-296, 96 Stat. 1316, which prohibited

State and local requirements that registered trademarks be altered

or displayed differently, was transferred to subsec. (b) of section

39 of act July 5, 1946, by section 131(b)(1) of Pub. L. 100-667 and

is classified to section 1121(b) of this title.

-CITE-

15 USC Sec. 1122 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1122. Liability of United States and States, and

instrumentalities and officials thereof

-STATUTE-

(a) Waiver of sovereign immunity by the United States

The United States, all agencies and instrumentalities thereof,

and all individuals, firms, corporations, other persons acting for

the United States and with the authorization and consent of the

United States, shall not be immune from suit in Federal or State

court by any person, including any governmental or nongovernmental

entity, for any violation under this chapter.

(b) Waiver of sovereign immunity by States

Any State, instrumentality of a State or any officer or employee

of a State or instrumentality of a State acting in his or her

official capacity, shall not be immune, under the eleventh

amendment of the Constitution of the United States or under any

other doctrine of sovereign immunity, from suit in Federal court by

any person, including any governmental or nongovernmental entity

for any violation under this chapter.

(c) Remedies

In a suit described in subsection (a) or (b) of this section for

a violation described therein, remedies (including remedies both at

law and in equity) are available for the violation to the same

extent as such remedies are available for such a violation in a

suit against any person other than the United States or any agency

or instrumentality thereof, or any individual, firm, corporation,

or other person acting for the United States and with authorization

and consent of the United States, or a State, instrumentality of a

State, or officer or employee of a State or instrumentality of a

State acting in his or her official capacity. Such remedies

include injunctive relief under section 1116 of this title, actual

damages, profits, costs and attorney's fees under section 1117 of

this title, destruction of infringing articles under section 1118

of this title, the remedies provided for under sections 1114, 1119,

1120, 1124 and 1125 of this title, and for any other remedies

provided under this chapter.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 40, as added Pub. L.

102-542, Sec. 3(b), Oct. 27, 1992, 106 Stat. 3567; amended Pub. L.

106-43, Sec. 4(b), Aug. 5, 1999, 113 Stat. 219.)

-MISC1-

PRIOR PROVISIONS

A prior section 1122, act July 5, 1946, ch. 540, title VI, Sec.

40, 60 Stat. 440, related to review of cases by the Supreme Court,

prior to repeal by act May 24, 1949, ch. 139, Sec. 142, 63 Stat.

109. See section 1254 of Title 28, Judiciary and Judicial

Procedure.

AMENDMENTS

1999 - Subsec. (a). Pub. L. 106-43, Sec. 4(b)(2), added subsec.

(a). Former subsec. (a) redesignated (b).

Subsec. (b). Pub. L. 106-43, Sec. 4(b)(1), (2), redesignated

subsec. (a) as (b) and inserted heading. Former subsec. (b)

redesignated (c).

Subsec. (c). Pub. L. 106-43, Sec. 4(b)(1), (3), redesignated

subsec. (b) as (c) and in first sentence substituted ''subsection

(a) or (b) of this section for a violation described therein'' for

''subsection (a) of this section for a violation described in that

subsection'' and inserted ''the United States or any agency or

instrumentality thereof, or any individual, firm, corporation, or

other person acting for the United States and with authorization

and consent of the United States, or'' after ''other than''.

EFFECTIVE DATE

Section effective with respect to violations that occur on or

after Oct. 27, 1992, see section 4 of Pub. L. 102-542, set out as

an Effective Date of 1992 Amendment note under section 1114 of this

title.

-CITE-

15 USC Sec. 1123 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1123. Rules and regulations for conduct of proceedings in

Patent and Trademark Office

-STATUTE-

The Director shall make rules and regulations, not inconsistent

with law, for the conduct of proceedings in the Patent and

Trademark Office under this chapter.

-SOURCE-

(July 5, 1946, ch. 540, title VI, Sec. 41, 60 Stat. 440; Pub. L.

93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) (title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999,

113 Stat. 1536, 1501A-583.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 26, 33 Stat. 730.

AMENDMENTS

1999 - Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5, of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-CITE-

15 USC Sec. 1124 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1124. Importation of goods bearing infringing marks or names

forbidden

-STATUTE-

Except as provided in subsection (d) of section 1526 of title 19,

no article of imported merchandise which shall copy or simulate the

name of any domestic manufacture, or manufacturer, or trader, or of

any manufacturer or trader located in any foreign country which, by

treaty, convention, or law affords similar privileges to citizens

of the United States, or which shall copy or simulate a trademark

registered in accordance with the provisions of this chapter or

shall bear a name or mark calculated to induce the public to

believe that the article is manufactured in the United States, or

that it is manufactured in any foreign country or locality other

than the country or locality in which it is in fact manufactured,

shall be admitted to entry at any customhouse of the United States;

and, in order to aid the officers of the customs in enforcing this

prohibition, any domestic manufacturer or trader, and any foreign

manufacturer or trader, who is entitled under the provisions of a

treaty, convention, declaration, or agreement between the United

States and any foreign country to the advantages afforded by law to

citizens of the United States in respect to trademarks and

commercial names, may require his name and residence, and the name

of the locality in which his goods are manufactured, and a copy of

the certificate of registration of his trademark, issued in

accordance with the provisions of this chapter, to be recorded in

books which shall be kept for this purpose in the Department of the

Treasury, under such regulations as the Secretary of the Treasury

shall prescribe, and may furnish to the Department facsimiles of

his name, the name of the locality in which his goods are

manufactured, or of his registered trademark, and thereupon the

Secretary of the Treasury shall cause one or more copies of the

same to be transmitted to each collector or other proper officer of

customs.

-SOURCE-

(July 5, 1946, ch. 540, title VII, Sec. 42, 60 Stat. 440; Pub. L.

95-410, title II, Sec. 211(b), Oct. 3, 1978, 92 Stat. 903; Pub. L.

105-330, title II, Sec. 201(a)(11), (12), Oct. 30, 1998, 112 Stat.

3070; Pub. L. 106-43, Sec. 6(b), Aug. 5, 1999, 113 Stat. 220.)

-MISC1-

PRIOR PROVISIONS

Act Feb. 20, 1905, ch. 592, Sec. 27, 33 Stat. 730.

AMENDMENTS

1999 - Pub. L. 106-43 substituted ''trademarks'' for

''trade-marks''.

1998 - Pub. L. 105-330, Sec. 201(a)(11), substituted ''name of

any domestic'' for ''name of the any domestic''.

Pub. L. 105-330, Sec. 201(a)(12), substituted ''trademark'' for

''trade-mark'' wherever appearing.

1978 - Pub. L. 95-410 substituted ''Except as provided in

subsection (d) of section 1526 of title 19, no article'' for ''No

article''.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and

applicable only to any civil action filed or proceeding before the

United States Patent and Trademark Office commenced on or after

such date relating to the registration of a mark, see section

201(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

Offices of collector of customs, comptroller of customs, surveyor

of customs, and appraiser of merchandise of Bureau of Customs of

Department of the Treasury to which appointments were required to

be made by President with advice and consent of Senate ordered

abolished, with such offices to be terminated not later than Dec.

31, 1966, by Reorg. Plan No. 1 of 1965, eff. May 25, 1965, 30 F.R.

7035, 79 Stat. 1317, set out in the Appendix to Title 5, Government

Organization and Employees. Functions of offices eliminated were

already vested in Secretary of the Treasury by Reorg. Plan No. 26

of 1950, eff. July 31, 1950, 15 F.R. 4935, 64 Stat. 1280, set out

in the Appendix to Title 5.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1094, 1122 of this title;

title 19 sections 1484, 1526, 1595a; title 48 section 1643.

-CITE-

15 USC Sec. 1125 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1125. False designations of origin, false descriptions, and

dilution forbidden

-STATUTE-

(a) Civil action

(1) Any person who, on or in connection with any goods or

services, or any container for goods, uses in commerce any word,

term, name, symbol, or device, or any combination thereof, or any

false designation of origin, false or misleading description of

fact, or false or misleading representation of fact, which -

(A) is likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association of such

person with another person, or as to the origin, sponsorship, or

approval of his or her goods, services, or commercial activities

by another person, or

(B) in commercial advertising or promotion, misrepresents the

nature, characteristics, qualities, or geographic origin of his

or her or another person's goods, services, or commercial

activities,

shall be liable in a civil action by any person who believes that

he or she is or is likely to be damaged by such act.

(2) As used in this subsection, the term ''any person'' includes

any State, instrumentality of a State or employee of a State or

instrumentality of a State acting in his or her official capacity.

Any State, and any such instrumentality, officer, or employee,

shall be subject to the provisions of this chapter in the same

manner and to the same extent as any nongovernmental entity.

(3) In a civil action for trade dress infringement under this

chapter for trade dress not registered on the principal register,

the person who asserts trade dress protection has the burden of

proving that the matter sought to be protected is not functional.

(b) Importation

Any goods marked or labeled in contravention of the provisions of

this section shall not be imported into the United States or

admitted to entry at any customhouse of the United States. The

owner, importer, or consignee of goods refused entry at any

customhouse under this section may have any recourse by protest or

appeal that is given under the customs revenue laws or may have the

remedy given by this chapter in cases involving goods refused entry

or seized.

(c) Remedies for dilution of famous marks

(1) The owner of a famous mark shall be entitled, subject to the

principles of equity and upon such terms as the court deems

reasonable, to an injunction against another person's commercial

use in commerce of a mark or trade name, if such use begins after

the mark has become famous and causes dilution of the distinctive

quality of the mark, and to obtain such other relief as is provided

in this subsection. In determining whether a mark is distinctive

and famous, a court may consider factors such as, but not limited

to -

(A) the degree of inherent or acquired distinctiveness of the

mark;

(B) the duration and extent of use of the mark in connection

with the goods or services with which the mark is used;

(C) the duration and extent of advertising and publicity of the

mark;

(D) the geographical extent of the trading area in which the

mark is used;

(E) the channels of trade for the goods or services with which

the mark is used;

(F) the degree of recognition of the mark in the trading areas

and channels of trade used by the marks' owner and the person

against whom the injunction is sought;

(G) the nature and extent of use of the same or similar marks

by third parties; and

(H) whether the mark was registered under the Act of March 3,

1881, or the Act of February 20, 1905, or on the principal

register.

(2) In an action brought under this subsection, the owner of the

famous mark shall be entitled only to injunctive relief as set

forth in section 1116 of this title unless the person against whom

the injunction is sought willfully intended to trade on the owner's

reputation or to cause dilution of the famous mark. If such

willful intent is proven, the owner of the famous mark shall also

be entitled to the remedies set forth in sections 1117(a) and 1118

of this title, subject to the discretion of the court and the

principles of equity.

(3) The ownership by a person of a valid registration under the

Act of March 3, 1881, or the Act of February 20, 1905, or on the

principal register shall be a complete bar to an action against

that person, with respect to that mark, that is brought by another

person under the common law or a statute of a State and that seeks

to prevent dilution of the distinctiveness of a mark, label, or

form of advertisement.

(4) The following shall not be actionable under this section:

(A) Fair use of a famous mark by another person in comparative

commercial advertising or promotion to identify the competing

goods or services of the owner of the famous mark.

(B) Noncommercial use of a mark.

(C) All forms of news reporting and news commentary.

(d) Cyberpiracy prevention

(1)(A) A person shall be liable in a civil action by the owner of

a mark, including a personal name which is protected as a mark

under this section, if, without regard to the goods or services of

the parties, that person -

(i) has a bad faith intent to profit from that mark, including

a personal name which is protected as a mark under this section;

and

(ii) registers, traffics in, or uses a domain name that -

(I) in the case of a mark that is distinctive at the time of

registration of the domain name, is identical or confusingly

similar to that mark;

(II) in the case of a famous mark that is famous at the time

of registration of the domain name, is identical or confusingly

similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of

section 706 of title 18 or section 220506 of title 36.

(B)(i) In determining whether a person has a bad faith intent

described under subparagraph (A), a court may consider factors such

as, but not limited to -

(I) the trademark or other intellectual property rights of the

person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal

name of the person or a name that is otherwise commonly used to

identify that person;

(III) the person's prior use, if any, of the domain name in

connection with the bona fide offering of any goods or services;

(IV) the person's bona fide noncommercial or fair use of the

mark in a site accessible under the domain name;

(V) the person's intent to divert consumers from the mark

owner's online location to a site accessible under the domain

name that could harm the goodwill represented by the mark, either

for commercial gain or with the intent to tarnish or disparage

the mark, by creating a likelihood of confusion as to the source,

sponsorship, affiliation, or endorsement of the site;

(VI) the person's offer to transfer, sell, or otherwise assign

the domain name to the mark owner or any third party for

financial gain without having used, or having an intent to use,

the domain name in the bona fide offering of any goods or

services, or the person's prior conduct indicating a pattern of

such conduct;

(VII) the person's provision of material and misleading false

contact information when applying for the registration of the

domain name, the person's intentional failure to maintain

accurate contact information, or the person's prior conduct

indicating a pattern of such conduct;

(VIII) the person's registration or acquisition of multiple

domain names which the person knows are identical or confusingly

similar to marks of others that are distinctive at the time of

registration of such domain names, or dilutive of famous marks of

others that are famous at the time of registration of such domain

names, without regard to the goods or services of the parties;

and

(IX) the extent to which the mark incorporated in the person's

domain name registration is or is not distinctive and famous

within the meaning of subsection (c)(1) of this section.

(ii) Bad faith intent described under subparagraph (A) shall not

be found in any case in which the court determines that the person

believed and had reasonable grounds to believe that the use of the

domain name was a fair use or otherwise lawful.

(C) In any civil action involving the registration, trafficking,

or use of a domain name under this paragraph, a court may order the

forfeiture or cancellation of the domain name or the transfer of

the domain name to the owner of the mark.

(D) A person shall be liable for using a domain name under

subparagraph (A) only if that person is the domain name registrant

or that registrant's authorized licensee.

(E) As used in this paragraph, the term ''traffics in'' refers to

transactions that include, but are not limited to, sales,

purchases, loans, pledges, licenses, exchanges of currency, and any

other transfer for consideration or receipt in exchange for

consideration.

(2)(A) The owner of a mark may file an in rem civil action

against a domain name in the judicial district in which the domain

name registrar, domain name registry, or other domain name

authority that registered or assigned the domain name is located if

-

(i) the domain name violates any right of the owner of a mark

registered in the Patent and Trademark Office, or protected under

subsection (a) or (c) of this section; and

(ii) the court finds that the owner -

(I) is not able to obtain in personam jurisdiction over a

person who would have been a defendant in a civil action under

paragraph (1); or

(II) through due diligence was not able to find a person who

would have been a defendant in a civil action under paragraph

(1) by -

(aa) sending a notice of the alleged violation and intent

to proceed under this paragraph to the registrant of the

domain name at the postal and e-mail address provided by the

registrant to the registrar; and

(bb) publishing notice of the action as the court may

direct promptly after filing the action.

(B) The actions under subparagraph (A)(ii) shall constitute

service of process.

(C) In an in rem action under this paragraph, a domain name shall

be deemed to have its situs in the judicial district in which -

(i) the domain name registrar, registry, or other domain name

authority that registered or assigned the domain name is located;

or

(ii) documents sufficient to establish control and authority

regarding the disposition of the registration and use of the

domain name are deposited with the court.

(D)(i) The remedies in an in rem action under this paragraph

shall be limited to a court order for the forfeiture or

cancellation of the domain name or the transfer of the domain name

to the owner of the mark. Upon receipt of written notification of

a filed, stamped copy of a complaint filed by the owner of a mark

in a United States district court under this paragraph, the domain

name registrar, domain name registry, or other domain name

authority shall -

(I) expeditiously deposit with the court documents sufficient

to establish the court's control and authority regarding the

disposition of the registration and use of the domain name to the

court; and

(II) not transfer, suspend, or otherwise modify the domain name

during the pendency of the action, except upon order of the

court.

(ii) The domain name registrar or registry or other domain name

authority shall not be liable for injunctive or monetary relief

under this paragraph except in the case of bad faith or reckless

disregard, which includes a willful failure to comply with any such

court order.

(3) The civil action established under paragraph (1) and the in

rem action established under paragraph (2), and any remedy

available under either such action, shall be in addition to any

other civil action or remedy otherwise applicable.

(4) The in rem jurisdiction established under paragraph (2) shall

be in addition to any other jurisdiction that otherwise exists,

whether in rem or in personam.

-SOURCE-

(July 5, 1946, ch. 540, title VIII, Sec. 43, 60 Stat. 441; Pub. L.

100-667, title I, Sec. 132, Nov. 16, 1988, 102 Stat. 3946; Pub. L.

102-542, Sec. 3(c), Oct. 27, 1992, 106 Stat. 3568; Pub. L. 104-98,

Sec. 3(a), Jan. 16, 1996, 109 Stat. 985; Pub. L. 106-43, Sec.

3(a)(2), 5, Aug. 5, 1999, 113 Stat. 219, 220; Pub. L. 106-113,

div. B, Sec. 1000(a)(9) (title III, Sec. 3002(a)), Nov. 29, 1999,

113 Stat. 1536, 1501A-545.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881, and February 20, 1905, referred to in subsec.

(c)(1)(H), (3), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and

Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar

as inconsistent with this chapter by act July 5, 1946, ch. 540,

Sec. 46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to

sections 81 to 109 of this title.

-MISC2-

PRIOR PROVISIONS

Act Mar. 19, 1920, ch. 104, Sec. 3, 41 Stat. 534.

AMENDMENTS

1999 - Subsec. (a)(3). Pub. L. 106-43, Sec. 5, added par. (3).

Subsec. (c)(2). Pub. L. 106-43, Sec. 3(a)(2), inserted ''as set

forth in section 1116 of this title'' after ''relief'' in first

sentence.

Subsec. (d). Pub. L. 106-113 added subsec. (d).

1996 - Subsec. (c). Pub. L. 104-98 added subsec. (c).

1992 - Subsec. (a). Pub. L. 102-542 designated existing

provisions as par. (1), redesignated former pars. (1) and (2) as

subpars. (A) and (B), respectively, and added par. (2).

1988 - Subsec. (a). Pub. L. 100-667 amended subsec. (a)

generally. Prior to amendment, subsec. (a) read as follows: ''Any

person who shall affix, apply, or annex, or use in connection with

any goods or services, or any container or containers for goods, a

false designation of origin, or any false description or

representation, including words or other symbols tending falsely to

describe or represent the same, and shall cause such goods or

services to enter into commerce, and any person who shall with

knowledge of the falsity of such designation of origin or

description or representation cause or procure the same to be

transported or used in commerce or deliver the same to any carrier

to be transported or used, shall be liable to a civil action by any

person doing business in the locality falsely indicated as that of

origin or in the region in which said locality is situated, or by

any person who believes that he is or is likely to be damaged by

the use of any such false description or representation.''

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 applicable to all domain names

registered before, on, or after Nov. 29, 1999, see section

1000(a)(9) (title III, Sec. 3010) of Pub. L. 106-113, set out as a

note under section 1117 of this title.

EFFECTIVE DATE OF 1996 AMENDMENT

Section 5 of Pub. L. 104-98 provided that: ''This Act (amending

this section and section 1127 of this title and enacting provisions

set out as a note under section 1051 of this title) and the

amendments made by this Act shall take effect on the date of the

enactment of this Act (Jan. 16, 1996).''

EFFECTIVE DATE OF 1992 AMENDMENT

Amendment by Pub. L. 102-542 effective with respect to violations

that occur on or after Oct. 27, 1992, see section 4 of Pub. L.

102-542, set out as a note under section 1114 of this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

STUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING PERSONAL NAMES

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III, Sec. 3006),

Nov. 29, 1999, 113 Stat. 1536, 1501A-550, provided that:

''(a) In General. - Not later than 180 days after the date of the

enactment of this Act (Nov. 29, 1999), the Secretary of Commerce,

in consultation with the Patent and Trademark Office and the

Federal Election Commission, shall conduct a study and report to

Congress with recommendations on guidelines and procedures for

resolving disputes involving the registration or use by a person of

a domain name that includes the personal name of another person, in

whole or in part, or a name confusingly similar thereto, including

consideration of and recommendations for -

''(1) protecting personal names from registration by another

person as a second level domain name for purposes of selling or

otherwise transferring such domain name to such other person or

any third party for financial gain;

''(2) protecting individuals from bad faith uses of their

personal names as second level domain names by others with

malicious intent to harm the reputation of the individual or the

goodwill associated with that individual's name;

''(3) protecting consumers from the registration and use of

domain names that include personal names in the second level

domain in manners which are intended or are likely to confuse or

deceive the public as to the affiliation, connection, or

association of the domain name registrant, or a site accessible

under the domain name, with such other person, or as to the

origin, sponsorship, or approval of the goods, services, or

commercial activities of the domain name registrant;

''(4) protecting the public from registration of domain names

that include the personal names of government officials, official

candidates, and potential official candidates for Federal, State,

or local political office in the United States, and the use of

such domain names in a manner that disrupts the electoral process

or the public's ability to access accurate and reliable

information regarding such individuals;

''(5) existing remedies, whether under State law or otherwise,

and the extent to which such remedies are sufficient to address

the considerations described in paragraphs (1) through (4); and

''(6) the guidelines, procedures, and policies of the Internet

Corporation for Assigned Names and Numbers and the extent to

which they address the considerations described in paragraphs (1)

through (4).

''(b) Guidelines and Procedures. - The Secretary of Commerce

shall, under its Memorandum of Understanding with the Internet

Corporation for Assigned Names and Numbers, collaborate to develop

guidelines and procedures for resolving disputes involving the

registration or use by a person of a domain name that includes the

personal name of another person, in whole or in part, or a name

confusingly similar thereto.''

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1052, 1063, 1064, 1092,

1114, 1116, 1117, 1118, 1122 of this title; title 16 section 470a;

title 19 section 1595a.

-CITE-

15 USC Sec. 1126 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1126. International conventions

-STATUTE-

(a) Register of marks communicated by international bureaus

The Director shall keep a register of all marks communicated to

him by the international bureaus provided for by the conventions

for the protection of industrial property, trademarks, trade and

commercial names, and the repression of unfair competition to which

the United States is or may become a party, and upon the payment of

the fees required by such conventions and the fees required in this

chapter may place the marks so communicated upon such register.

This register shall show a facsimile of the mark or trade or

commercial name; the name, citizenship, and address of the

registrant; the number, date, and place of the first registration

of the mark, including the dates on which application for such

registration was filed and granted and the term of such

registration; a list of goods or services to which the mark is

applied as shown by the registration in the country of origin, and

such other data as may be useful concerning the mark. This

register shall be a continuation of the register provided in

section 1(a) of the Act of March 19, 1920.

(b) Benefits of section to persons whose country of origin is party

to convention or treaty

Any person whose country of origin is a party to any convention

or treaty relating to trademarks, trade or commercial names, or the

repression of unfair competition, to which the United States is

also a party, or extends reciprocal rights to nationals of the

United States by law, shall be entitled to the benefits of this

section under the conditions expressed herein to the extent

necessary to give effect to any provision of such convention,

treaty or reciprocal law, in addition to the rights to which any

owner of a mark is otherwise entitled by this chapter.

(c) Prior registration in country of origin; country of origin

defined

No registration of a mark in the United States by a person

described in subsection (b) of this section shall be granted until

such mark has been registered in the country of origin of the

applicant, unless the applicant alleges use in commerce.

For the purposes of this section, the country of origin of the

applicant is the country in which he has a bona fide and effective

industrial or commercial establishment, or if he has not such an

establishment the country in which he is domiciled, or if he has

not a domicile in any of the countries described in subsection (b)

of this section, the country of which he is a national.

(d) Right of priority

An application for registration of a mark under section 1051,

1053, 1054, or 1091 of this title or under subsection (e) of this

section, filed by a person described in subsection (b) of this

section who has previously duly filed an application for

registration of the same mark in one of the countries described in

subsection (b) of this section shall be accorded the same force and

effect as would be accorded to the same application if filed in the

United States on the same date on which the application was first

filed in such foreign country: Provided, That -

(1) the application in the United States is filed within six

months from the date on which the application was first filed in

the foreign country;

(2) the application conforms as nearly as practicable to the

requirements of this chapter, including a statement that the

applicant has a bona fide intention to use the mark in commerce;

(3) the rights acquired by third parties before the date of the

filing of the first application in the foreign country shall in

no way be affected by a registration obtained on an application

filed under this subsection;

(4) nothing in this subsection shall entitle the owner of a

registration granted under this section to sue for acts committed

prior to the date on which his mark was registered in this

country unless the registration is based on use in commerce.

In like manner and subject to the same conditions and

requirements, the right provided in this section may be based upon

a subsequent regularly filed application in the same foreign

country, instead of the first filed foreign application: Provided,

That any foreign application filed prior to such subsequent

application has been withdrawn, abandoned, or otherwise disposed

of, without having been laid open to public inspection and without

leaving any rights outstanding, and has not served, nor thereafter

shall serve, as a basis for claiming a right of priority.

(e) Registration on principal or supplemental register; copy of

foreign registration

A mark duly registered in the country of origin of the foreign

applicant may be registered on the principal register if eligible,

otherwise on the supplemental register in this chapter provided.

Such applicant shall submit, within such time period as may be

prescribed by the Director, a true copy, a photocopy, a

certification, or a certified copy of the registration in the

country of origin of the applicant. The application must state the

applicant's bona fide intention to use the mark in commerce, but

use in commerce shall not be required prior to registration.

(f) Domestic registration independent of foreign registration

The registration of a mark under the provisions of subsections

(c), (d), and (e) of this section by a person described in

subsection (b) of this section shall be independent of the

registration in the country of origin and the duration, validity,

or transfer in the United States of such registration shall be

governed by the provisions of this chapter.

(g) Trade or commercial names of foreign nationals protected

without registration

Trade names or commercial names of persons described in

subsection (b) of this section shall be protected without the

obligation of filing or registration whether or not they form parts

of marks.

(h) Protection of foreign nationals against unfair competition

Any person designated in subsection (b) of this section as

entitled to the benefits and subject to the provisions of this

chapter shall be entitled to effective protection against unfair

competition, and the remedies provided in this chapter for

infringement of marks shall be available so far as they may be

appropriate in repressing acts of unfair competition.

(i) Citizens or residents of United States entitled to benefits of

section

Citizens or residents of the United States shall have the same

benefits as are granted by this section to persons described in

subsection (b) of this section.

-SOURCE-

(July 5, 1946, ch. 540, title IX, Sec. 44, 60 Stat. 441; Pub. L.

87-333, Sec. 2, Oct. 3, 1961, 75 Stat. 748; Pub. L. 87-772, Sec.

20, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100-667, title I, Sec. 133,

Nov. 16, 1988, 102 Stat. 3946; Pub. L. 105-330, title I, Sec. 108,

Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106-43, Sec. 6(b), Aug. 5,

1999, 113 Stat. 220; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

(title IV, Sec. 4732(b)(1)(B)), Nov. 29, 1999, 113 Stat. 1536,

1501A-583; Pub. L. 107-273, div. C, title III, Sec. 13207(b)(12),

Nov. 2, 2002, 116 Stat. 1908.)

-REFTEXT-

REFERENCES IN TEXT

Section 1(a) of the Act of March 19, 1920, referred to in subsec.

(a), is section 1(a) of act Mar. 19, 1920, ch. 104, 41 Stat. 533,

which was classified to section 121(a) of this title, and repealed

by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat. 444, insofar as

inconsistent with this chapter.

-MISC2-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 1, 2, 4, 33 Stat. 724, 725; May

4, 1906, ch. 2081, Sec. 1, 3, 34 Stat. 168, 169; Feb. 18, 1909, ch.

144, 35 Stat. 628; Mar. 19, 1920, ch. 104, Sec. 1, 6, 41 Stat. 533,

535; Apr. 11, 1930, ch. 132, Sec. 4, 46 Stat. 155; June 20, 1936,

ch. 617, 49 Stat. 1539; June 10, 1938, ch. 332, Sec. 1, 2, 3, 52

Stat. 638, 639.

AMENDMENTS

2002 - Subsec. (e). Pub. L. 107-273 substituted ''a true copy, a

photocopy, a certification,'' for ''a certification''.

1999 - Subsec. (a). Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

Pub. L. 106-43 substituted ''trademarks'' for ''trade-marks''.

Subsec. (e). Pub. L. 106-113 substituted ''Director'' for

''Commissioner''.

1998 - Subsec. (d). Pub. L. 105-330, Sec. 108(1)(A), in

introductory provisions, substituted ''or 1091 of this title or

under subsection (e) of this section'' for ''1091 of this title, or

subsection (e) of this section''.

Subsec. (d)(3), (4). Pub. L. 105-330, Sec. 108(1)(B), made

technical amendment to reference in original act which appears in

text as reference to this subsection.

Subsec. (e). Pub. L. 105-330, Sec. 108(2), substituted ''Such

applicant shall submit, within such time period as may be

prescribed by the Commissioner, a certification or a certified copy

of the registration in the country of origin of the applicant'' for

''The application therefor shall be accompanied by a certification

or a certified copy of the registration in the country of origin of

the applicant''.

1988 - Subsec. (a). Pub. L. 100-667, Sec. 133(2), substituted

''required in this chapter'' for ''herein prescribed''.

Subsec. (c). Pub. L. 100-667, Sec. 133(1), made technical

amendment in two places to references in the original act to

subsection (b) of this section, resulting in no change in text.

Subsec. (d). Pub. L. 100-667, Sec. 133(1), (3), (4), (5), in

introductory provisions, made technical amendment in two places to

references in the original act to subsection (b) of this section,

resulting in no change in text, and substituted ''section 1051,

1053, 1054, or 1091 of this title, or subsection (e) of this

section'' for ''sections 1051, 1052, 1053, 1054, or 1091 of this

title'', in par. (2), substituted ''including a statement that the

applicant has a bona fide intention to use the mark in commerce''

for ''but use in commerce need not be alleged'', and in par. (3),

substituted ''foreign'' for ''foreing''.

Subsec. (e). Pub. L. 100-667, Sec. 133(6), inserted at end ''The

application must state the applicant's bona fide intention to use

the mark in commerce, but use in commerce shall not be required

prior to registration.''

Subsec. (f). Pub. L. 100-667, Sec. 133(1), (7), made technical

amendment to references in the original act to subsections (c),

(d), and (e) of this section and to subsection (b) of this section,

resulting in no change in text.

Subsecs. (g) to (i). Pub. L. 100-667, Sec. 133(1), (8), made

technical amendment to references in the original act to subsection

(b) of this section, resulting in no change in text.

1962 - Subsec. (b). Pub. L. 87-772 inserted ''or extends

reciprocal rights to nationals of the United States by law,'' and

substituted provisions requiring the person's country of origin to

be a party to any convention or treaty, for provisions which

required such persons to be nationals of, domiciled in, or have a

bona fide and effective business or commercial establishment in a

foreign country which was a party to the International Convention

for the Protection of Industrial Property, or the General

Inter-American Convention for Trade Mark and Commercial Protection,

or any other convention or treaty relating to trademarks, trade, or

commercial names.

Subsec. (e). Pub. L. 87-772 inserted ''certification or a'' after

''accompanied by a'' and struck out ''application for or'' before

''registration''.

1961 - Subsec. (d). Pub. L. 87-333 inserted par. at end

authorizing the right provided by this section to be based upon a

subsequent application in the same foreign country, instead of the

first application, provided that any foreign application filed

prior to such subsequent one was withdrawn, or otherwise disposed

of, without having been open to public inspection and without

leaving any rights outstanding, nor any basis for claiming

priority.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1998 AMENDMENT

Amendment by Pub. L. 105-330 effective on the date that is 1 year

after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as

a note under section 1051 of this title.

For provisions relating to applicability of amendment by Pub. L.

105-330 to applications for registration of trademarks, see section

109(b) of Pub. L. 105-330, set out as a note under section 1051 of

this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1961 AMENDMENT

Section 3 of Pub. L. 87-333 provided that: ''This Act (amending

this section and section 119 of Title 35, Patents) shall take

effect on the date when the Convention of Paris for the Protection

of Industrial Property of March 20, 1883, as revised at Lisbon,

October 31, 1958, comes into force with respect to the United

States and shall apply only to applications thereafter filed in the

United States by persons entitled to the benefit of said

convention, as revised at the time of such filing.''

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1051, 1057, 1063, 1141j

of this title.

-CITE-

15 USC Sec. 1127 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1127. Construction and definitions; intent of chapter

-STATUTE-

In the construction of this chapter, unless the contrary is

plainly apparent from the context -

The United States includes and embraces all territory which is

under its jurisdiction and control.

The word ''commerce'' means all commerce which may lawfully be

regulated by Congress.

The term ''principal register'' refers to the register provided

for by sections 1051 to 1072 of this title, and the term

''supplemental register'' refers to the register provided for by

sections 1091 to 1096 of this title.

The term ''person'' and any other word or term used to designate

the applicant or other entitled to a benefit or privilege or

rendered liable under the provisions of this chapter includes a

juristic person as well as a natural person. The term ''juristic

person'' includes a firm, corporation, union, association, or other

organization capable of suing and being sued in a court of law.

The term ''person'' also includes the United States, any agency

or instrumentality thereof, or any individual, firm, or corporation

acting for the United States and with the authorization and consent

of the United States. The United States, any agency or

instrumentality thereof, and any individual, firm, or corporation

acting for the United States and with the authorization and consent

of the United States, shall be subject to the provisions of this

chapter in the same manner and to the same extent as any

nongovernmental entity.

The term ''person'' also includes any State, any instrumentality

of a State, and any officer or employee of a State or

instrumentality of a State acting in his or her official capacity.

Any State, and any such instrumentality, officer, or employee,

shall be subject to the provisions of this chapter in the same

manner and to the same extent as any nongovernmental entity.

The terms ''applicant'' and ''registrant'' embrace the legal

representatives, predecessors, successors and assigns of such

applicant or registrant.

The term ''Director'' means the Under Secretary of Commerce for

Intellectual Property and Director of the United States Patent and

Trademark Office.

The term ''related company'' means any person whose use of a mark

is controlled by the owner of the mark with respect to the nature

and quality of the goods or services on or in connection with which

the mark is used.

The terms ''trade name'' and ''commercial name'' mean any name

used by a person to identify his or her business or vocation.

The term ''trademark'' includes any word, name, symbol, or

device, or any combination thereof -

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce

and applies to register on the principal register established by

this chapter,

to identify and distinguish his or her goods, including a unique

product, from those manufactured or sold by others and to indicate

the source of the goods, even if that source is unknown.

The term ''service mark'' means any word, name, symbol, or

device, or any combination thereof -

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce

and applies to register on the principal register established by

this chapter,

to identify and distinguish the services of one person, including a

unique service, from the services of others and to indicate the

source of the services, even if that source is unknown. Titles,

character names, and other distinctive features of radio or

television programs may be registered as service marks

notwithstanding that they, or the programs, may advertise the goods

of the sponsor.

The term ''certification mark'' means any word, name, symbol, or

device, or any combination thereof -

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a

person other than the owner to use in commerce and files an

application to register on the principal register established by

this chapter,

to certify regional or other origin, material, mode of manufacture,

quality, accuracy, or other characteristics of such person's goods

or services or that the work or labor on the goods or services was

performed by members of a union or other organization.

The term ''collective mark'' means a trademark or service mark -

(1) used by the members of a cooperative, an association, or

other collective group or organization, or

(2) which such cooperative, association, or other collective

group or organization has a bona fide intention to use in

commerce and applies to register on the principal register

established by this chapter,

and includes marks indicating membership in a union, an

association, or other organization.

The term ''mark'' includes any trademark, service mark,

collective mark, or certification mark.

The term ''use in commerce'' means the bona fide use of a mark in

the ordinary course of trade, and not made merely to reserve a

right in a mark. For purposes of this chapter, a mark shall be

deemed to be in use in commerce -

(1) on goods when -

(A) it is placed in any manner on the goods or their

containers or the displays associated therewith or on the tags

or labels affixed thereto, or if the nature of the goods makes

such placement impracticable, then on documents associated with

the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or

advertising of services and the services are rendered in

commerce, or the services are rendered in more than one State or

in the United States and a foreign country and the person

rendering the services is engaged in commerce in connection with

the services.

A mark shall be deemed to be ''abandoned'' if either of the

following occurs:

(1) When its use has been discontinued with intent not to

resume such use. Intent not to resume may be inferred from

circumstances. Nonuse for 3 consecutive years shall be prima

facie evidence of abandonment. ''Use'' of a mark means the bona

fide use of such mark made in the ordinary course of trade, and

not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of

omission as well as commission, causes the mark to become the

generic name for the goods or services on or in connection with

which it is used or otherwise to lose its significance as a

mark. Purchaser motivation shall not be a test for determining

abandonment under this paragraph.

The term ''dilution'' means the lessening of the capacity of a

famous mark to identify and distinguish goods or services,

regardless of the presence or absence of -

(1) competition between the owner of the famous mark and other

parties, or

(2) likelihood of confusion, mistake, or deception.

The term ''colorable imitation'' includes any mark which so

resembles a registered mark as to be likely to cause confusion or

mistake or to deceive.

The term ''registered mark'' means a mark registered in the

United States Patent and Trademark Office under this chapter or

under the Act of March 3, 1881, or the Act of February 20, 1905, or

the Act of March 19, 1920. The phrase ''marks registered in the

Patent and Trademark Office'' means registered marks.

The term ''Act of March 3, 1881'', ''Act of February 20, 1905'',

or ''Act of March 19, 1920'', means the respective Act as amended.

A ''counterfeit'' is a spurious mark which is identical with, or

substantially indistinguishable from, a registered mark.

The term ''domain name'' means any alphanumeric designation which

is registered with or assigned by any domain name registrar, domain

name registry, or other domain name registration authority as part

of an electronic address on the Internet.

The term ''Internet'' has the meaning given that term in section

230(f)(1) of title 47.

Words used in the singular include the plural and vice versa.

The intent of this chapter is to regulate commerce within the

control of Congress by making actionable the deceptive and

misleading use of marks in such commerce; to protect registered

marks used in such commerce from interference by State, or

territorial legislation; to protect persons engaged in such

commerce against unfair competition; to prevent fraud and deception

in such commerce by the use of reproductions, copies, counterfeits,

or colorable imitations of registered marks; and to provide rights

and remedies stipulated by treaties and conventions respecting

trademarks, trade names, and unfair competition entered into

between the United States and foreign nations.

-SOURCE-

(July 5, 1946, ch. 540, title X, Sec. 45, 60 Stat. 443; Pub. L.

87-772, Sec. 21, Oct. 9, 1962, 76 Stat. 774; Pub. L. 93-596, Sec.

1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98-620, title I, Sec. 103,

Nov. 8, 1984, 98 Stat. 3335; Pub. L. 100-667, title I, Sec. 134,

Nov. 16, 1988, 102 Stat. 3946; Pub. L. 102-542, Sec. 3(d), Oct. 27,

1992, 106 Stat. 3568; Pub. L. 103-465, title V, Sec. 521, Dec. 8,

1994, 108 Stat. 4981; Pub. L. 104-98, Sec. 4, Jan. 16, 1996, 109

Stat. 986; Pub. L. 106-43, Sec. 4(c), 6(b), Aug. 5, 1999, 113 Stat.

219, 220; Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III,

Sec. 3005, title IV, Sec. 4732(b)(1)(A)), Nov. 29, 1999, 113 Stat.

1536, 1501A-550, 1501A-583.)

-REFTEXT-

REFERENCES IN TEXT

Acts March 3, 1881, February 20, 1905, and March 19, 1920,

referred to in text, are acts Mar. 3, 1881, ch. 138, 21 Stat. 502;

Feb. 20, 1905, ch. 592, 33 Stat. 724; and Mar. 19, 1920, ch. 104,

41 Stat. 533, which were repealed insofar as inconsistent with this

chapter by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat. 444. Act

Feb. 20, 1905, was classified to sections 81 to 109 of this title.

Act Mar. 19, 1920, had been generally classified to sections 121 to

128 of this title.

-MISC2-

PRIOR PROVISIONS

Acts Feb. 20, 1905, ch. 592, Sec. 29, 33 Stat. 731; June 10,

1938, ch. 332, Sec. 5, 52 Stat. 639.

AMENDMENTS

1999 - Pub. L. 106-113, Sec. 1000(a)(9) (title IV, Sec.

4732(b)(1)(A)), substituted par. defining ''Director'' for par.

which read as follows: ''The term 'Commissioner' means the

Commissioner of Patents and Trademarks.''

Pub. L. 106-113, Sec. 1000(a)(9) (title III, Sec. 3005), inserted

pars. defining ''domain name'' and ''Internet'' after par. defining

''counterfeit''.

Pub. L. 106-43, Sec. 6(b), substituted ''trademarks'' for

''trade-marks'' in last undesignated par.

Pub. L. 106-43, Sec. 4(c), between pars. defining ''person''

inserted: ''The term 'person' also includes the United States, any

agency or instrumentality thereof, or any individual, firm, or

corporation acting for the United States and with the authorization

and consent of the United States. The United States, any agency or

instrumentality thereof, and any individual, firm, or corporation

acting for the United States and with the authorization and consent

of the United States, shall be subject to the provisions of this

chapter in the same manner and to the same extent as any

nongovernmental entity.''

1996 - Pub. L. 104-98 inserted par. defining ''dilution'' after

par. defining ''abandoned''.

1994 - Pub. L. 103-465 amended par. defining ''abandoned''

generally. Prior to amendment, par. read as follows: ''A mark

shall be deemed to be 'abandoned' when either of the following

occurs:

''(1) When its use has been discontinued with intent not to

resume such use. Intent not to resume may be inferred from

circumstances. Nonuse for two consecutive years shall be prima

facie evidence of abandonment. 'Use' of a mark means the bona

fide use of that mark made in the ordinary course of trade, and

not made merely to reserve a right in a mark.

''(2) When any course of conduct of the owner, including acts

of omission as well as commission, causes the mark to become the

generic name for the goods or services on or in connection with

which it is used or otherwise to lose its significance as a

mark. Purchaser motivation shall not be a test for determining

abandonment under this paragraph.''

1992 - Pub. L. 102-542 inserted after fourth undesignated par.

''The term 'person' also includes any State, any instrumentality of

a State, and any officer or employee of a State or instrumentality

of a State acting in his or her official capacity. Any State, and

any such instrumentality, officer, or employee, shall be subject to

the provisions of this chapter in the same manner and to the same

extent as any nongovernmental entity.''

1988 - Pub. L. 100-667, Sec. 134(1), amended par. defining

''related company'' generally. Prior to amendment, par. read as

follows: ''The term 'related company' means any person who

legitimately controls or is controlled by the registrant or

applicant for registration in respect to the nature and quality of

the goods or services in connection with which the mark is used.''

Pub. L. 100-667, Sec. 134(2), amended par. defining ''trade

name'' and ''commercial name'' generally. Prior to amendment, par.

read as follows: ''The terms 'trade name' and 'commercial name'

include individual names and surnames, firm names and trade names

used by manufacturers, industrialists, merchants, agriculturists,

and others to identify their businesses, vocations, or occupations;

the names or titles lawfully adopted and used by persons, firms,

associations, corporations, companies, unions, and any

manufacturing, industrial, commercial, agricultural, or other

organizations engaged in trade or commerce and capable of suing and

being sued in a court of law.''

Pub. L. 100-667, Sec. 134(3), amended par. defining ''trademark''

generally. Prior to amendment, par. read as follows: ''The term

'trademark' includes any word, name, symbol, or device or any

combination thereof adopted and used by a manufacturer or merchant

to identify and distinguish his goods, including a unique product,

from those manufactured or sold by others and to indicate the

source of the goods, even if that source is unknown.''

Pub. L. 100-667, Sec. 134(4), amended par. defining ''service

mark'' generally. Prior to amendment, par. read as follows: ''The

term 'service mark' means a mark used in the sale or advertising of

services to identify and distinguish the services of one person,

including a unique service, from the services of others and to

indicate the source of the services, even if that source is

unknown. Titles, character names and other distinctive features of

radio or television programs may be registered as service marks

notwithstanding that they, or the programs, may advertise the goods

of the sponsor.''

Pub. L. 100-667, Sec. 134(5), amended par. defining

''certification mark'' generally. Prior to amendment, par. read as

follows: ''The term 'certification mark' means a mark used upon or

in connection with the products or services of one or more persons

other than the owner of the mark to certify regional or other

origin, material, mode of manufacture, quality, accuracy or other

characteristics of such goods or services or that the work or labor

on the goods or services was performed by members of a union or

other organization.''

Pub. L. 100-667, Sec. 134(6), amended par. defining ''collective

mark'' generally. Prior to amendment, par. read as follows: ''The

term 'collective mark' means a trade-mark or service mark used by

the members of a cooperative, an association or other collective

group or organization and includes marks used to indicate

membership in a union, an association or other organization.''

Pub. L. 100-667, Sec. 134(7), amended par. defining ''mark''

generally. Prior to amendment, par. read as follows: ''The term

'mark' includes any trade-mark, service mark, collective mark, or

certification mark entitled to registration under this chapter

whether registered or not.''

Pub. L. 100-667, Sec. 134(8), substituted par. defining ''use in

commerce'' for former par. which read as follows: ''For the

purposes of this chapter a mark shall be deemed to be used in

commerce (a) on goods when it is placed in any manner on the goods

or their containers or the displays associated therewith or on the

tags or labels affixed thereto and the goods are sold or

transported in commerce and (b) on services when it is used or

displayed in the sale or advertising of services and the services

are rendered in commerce, or the services are rendered in more than

one State or in this and a foreign country and the person rendering

the services is engaged in commerce in connection therewith.'' and

par. providing when a mark is deemed abandoned for former par.

which read as follows: ''A mark shall be deemed to be 'abandoned' -

''(a) When its use has been discontinued with intent not to

resume. Intent not to resume may be inferred from circumstances.

Nonuse for two consecutive years shall be prima facie abandonment.

''(b) When any course of conduct of the registrant, including

acts of omission as well as commission, causes the mark to lose its

significance as an indication of origin. Purchaser motivation

shall not be a test for determining abandonment under this

subparagraph.''

1984 - Pub. L. 98-620, Sec. 103(1), in definition of

''trademark'' substituted ''trademark'' for ''trade-mark'', and

substituted ''identify and distinguish his goods, including a

unique product, from those manufactured or sold by others and to

indicate the source of the goods, even if that source is unknown''

for ''identify his goods and distinguish them from those

manufactured or sold by others''.

Pub. L. 98-620, Sec. 103(2), in definition of ''service mark''

substituted ''The term 'service mark' means a mark used in the sale

or advertising of services to identify and distinguish the services

of one person, including a unique service, from the services of

others and to indicate the source of the services, even if that

source is unknown'' for ''The term 'service mark' means a mark used

in the sale or advertising of services to identify the services of

one person and distinguish them from the services of others''.

Pub. L. 98-620, Sec. 103(3), in subpar. (b) of par. relating to

when a mark shall be deemed to be ''abandoned'', inserted

''Purchaser motivation shall not be a test for determining

abandonment under this subparagraph.''

1975 - Pub. L. 93-596 substituted ''Patent and Trademark Office''

for ''Patent Office'' in two places and ''Commissioner of Patents

and Trademarks'' for ''Commissioner of Patents'' in definition of

''Commissioner''.

1962 - Pub. L. 87-772 substituted, ''predecessors,'' for ''and''

in definition of ''applicant'' and ''registrant'', ''Titles,

character names and other distinctive features of radio or

television programs may be registered as service marks

notwithstanding that they, or the programs, may advertise the goods

of the sponsor'' for ''and includes without limitation the marks,

names, symbols, titles, designations, slogans, character names, and

distinctive features of radio or other advertising used in

commerce'', in definition of ''service mark'', inserted ''or the

services are rendered in more than one State or in this and a

foreign country and the person rendering the services is engaged in

commerce in connection therewith'' in fifteenth paragraph relating

to use in commerce, struck out ''purchasers'' after ''deceive'' in

definition of ''colorable imitation'', and substituted ''commerce''

for ''commence'' in last par. relating to the intent of the

chapter.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) (title III, Sec. 3005) of Pub. L.

106-113 applicable to all domain names registered before, on, or

after Nov. 29, 1999, see section 1000(a)(9) (title III, Sec. 3010)

of Pub. L. 106-113, set out as a note under section 1117 of this

title.

Amendment by section 1000(a)(9) (title IV, Sec. 4732(b)(1)(A)) of

Pub. L. 106-113 effective 4 months after Nov. 29, 1999, see section

1000(a)(9) (title IV, Sec. 4731) of Pub. L. 106-113, set out as a

note under section 1 of Title 35, Patents.

EFFECTIVE DATE OF 1994 AMENDMENT

Amendment by Pub. L. 103-465 effective one year after the date on

which the WTO Agreement enters into force with respect to the

United States (Jan. 1, 1995), see section 523 of Pub. L. 103-465,

set out as a note under section 1052 of this title.

EFFECTIVE DATE OF 1992 AMENDMENT

Amendment by Pub. L. 102-542 effective with respect to violations

that occur on or after Oct. 27, 1992, see section 4 of Pub. L.

102-542, set out as a note under section 1114 of this title.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-667 effective one year after Nov. 16,

1988, see section 136 of Pub. L. 100-667, set out as a note under

section 1051 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of this

title.

REPEAL AND EFFECT ON EXISTING RIGHTS

Repeal of inconsistent provisions, effect of this chapter on

pending proceedings and existing registrations and rights under

prior acts, see notes set out under section 1051 of this title.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions of other officers, employees, and

agencies of Department of Commerce, with certain exceptions, to

Secretary of Commerce, with power to delegate, see Reorg. Plan No.

5 of 1950, Sec. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat.

1263, set out in the Appendix to Title 5, Government Organization

and Employees.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1129 of this title; title

19 sections 1526, 1595a.

-CITE-

15 USC Sec. 1128 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1128. National Intellectual Property Law Enforcement

Coordination Council

-STATUTE-

(a) Establishment

There is established the National Intellectual Property Law

Enforcement Coordination Council (in this section referred to as

the ''Council''). The Council shall consist of the following

members -

(1) The Assistant Secretary of Commerce and Under Secretary of

Commerce for Intellectual Property and Director of the United

States Patent and Trademark Office, who shall serve as co-chair

of the Council.

(2) The Assistant Attorney General, Criminal Division, who

shall serve as co-chair of the Council.

(3) The Under Secretary of State for Economic and Agricultural

Affairs.

(4) The Ambassador, Deputy United States Trade Representative.

(5) The Commissioner of Customs.

(6) The Under Secretary of Commerce for International Trade.

(b) Duties

The Council established in subsection (a) of this section shall

coordinate domestic and international intellectual property law

enforcement among federal (FOOTNOTE 1) and foreign entities.

(FOOTNOTE 1) So in original. Probably should be capitalized.

(c) Consultation required

The Council shall consult with the Register of Copyrights on law

enforcement matters relating to copyright and related rights and

matters.

(d) Non-derogation

Nothing in this section shall derogate from the duties of the

Secretary of State or from the duties of the United States Trade

Representative as set forth in section 2171 of title 19, or from

the duties and functions of the Register of Copyrights, or

otherwise alter current authorities relating to copyright matters.

(e) Report

The Council shall report annually on its coordination activities

to the President, and to the Committees on Appropriations and on

the Judiciary of the Senate and the House of Representatives.

(f) Funding

Notwithstanding section 1346 of title 31 or section 610 of this

Act, funds made available for fiscal year 2000 and hereafter by

this or any other Act shall be available for interagency funding of

the National Intellectual Property Law Enforcement Coordination

Council.

-SOURCE-

(Pub. L. 106-58, title VI, Sec. 653, Sept. 29, 1999, 113 Stat. 480;

Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title IV, Sec.

4741(b)(1)), Nov. 29, 1999, 113 Stat. 1536, 1501A-586.)

-REFTEXT-

REFERENCES IN TEXT

This Act, referred to in subsec. (f), is Pub. L. 106-58, Sept.

29, 1999, 113 Stat. 430, known as the Treasury and General

Government Appropriations Act, 2000. Section 610 of the Act is not

classified to the Code. For complete classification of this Act to

the Code, see Tables.

-COD-

CODIFICATION

Section was enacted as part of the Treasury and General

Government Appropriations Act, 2000, and not as part of the

Trademark Act of 1946, also known as the Lanham Act, which

comprises this chapter.

-MISC3-

AMENDMENTS

1999 - Subsec. (a)(1). Pub. L. 106-113 substituted ''Under

Secretary of Commerce for Intellectual Property and Director of the

United States Patent and Trademark Office'' for ''Commissioner of

Patents and Trademarks''.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) (title IV, Sec. 4731) of Pub. L.

106-113, set out as a note under section 1 of Title 35, Patents.

-TRANS-

TRANSFER OF FUNCTIONS

For transfer of functions, personnel, assets, and liabilities of

the United States Customs Service of the Department of the

Treasury, including functions of the Secretary of the Treasury

relating thereto, to the Secretary of Homeland Security, and for

treatment of related references, see sections 203(1), 551(d),

552(d), and 557 of Title 6, Domestic Security, and the Department

of Homeland Security Reorganization Plan of November 25, 2002, as

modified, set out as a note under section 542 of Title 6.

-CITE-

15 USC Sec. 1129 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER III - GENERAL PROVISIONS

-HEAD-

Sec. 1129. Cyberpiracy protections for individuals

-STATUTE-

(1) In general

(A) Civil liability

Any person who registers a domain name that consists of the

name of another living person, or a name substantially and

confusingly similar thereto, without that person's consent, with

the specific intent to profit from such name by selling the

domain name for financial gain to that person or any third party,

shall be liable in a civil action by such person.

(B) Exception

A person who in good faith registers a domain name consisting

of the name of another living person, or a name substantially and

confusingly similar thereto, shall not be liable under this

paragraph if such name is used in, affiliated with, or related to

a work of authorship protected under title 17, including a work

made for hire as defined in section 101 of title 17, and if the

person registering the domain name is the copyright owner or

licensee of the work, the person intends to sell the domain name

in conjunction with the lawful exploitation of the work, and such

registration is not prohibited by a contract between the

registrant and the named person. The exception under this

subparagraph shall apply only to a civil action brought under

paragraph (1) and shall in no manner limit the protections

afforded under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.)

or other provision of Federal or State law.

(2) Remedies

In any civil action brought under paragraph (1), a court may

award injunctive relief, including the forfeiture or cancellation

of the domain name or the transfer of the domain name to the

plaintiff. The court may also, in its discretion, award costs and

attorneys fees to the prevailing party.

(3) Definition

In this section, the term ''domain name'' has the meaning given

that term in section 45 of the Trademark Act of 1946 (15 U.S.C.

1127).

(4) Effective date

This section shall apply to domain names registered on or after

November 29, 1999.

-SOURCE-

(Pub. L. 106-113, div. B, Sec. 1000(a)(9) (title III, Sec.

3002(b)), Nov. 29, 1999, 113 Stat. 1536, 1501A-548.)

-REFTEXT-

REFERENCES IN TEXT

The Trademark Act of 1946, referred to in par. (1)(B), is act

July 5, 1946, ch. 540, 60 Stat. 427, as amended, also popularly

known as the Lanham Act, which is classified generally to this

chapter. For complete classification of this Act to the Code, see

Short Title note set out under section 1051 of this title and

Tables.

-COD-

CODIFICATION

Section was enacted as part of the Anticybersquatting Consumer

Protection Act, and not as part of the Trademark Act of 1946, also

known as the Lanham Act, which comprises this chapter.

-CITE-

15 USC SUBCHAPTER IV - THE MADRID PROTOCOL 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

.

-HEAD-

SUBCHAPTER IV - THE MADRID PROTOCOL

-CITE-

15 USC Sec. 1141 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141. Definitions

-STATUTE-

In this subchapter:

(1) Basic application

The term ''basic application'' means the application for the

registration of a mark that has been filed with an Office of a

Contracting Party and that constitutes the basis for an

application for the international registration of that mark.

(2) Basic registration

The term ''basic registration'' means the registration of a

mark that has been granted by an Office of a Contracting Party

and that constitutes the basis for an application for the

international registration of that mark.

(3) Contracting Party

The term ''Contracting Party'' means any country or

inter-governmental organization that is a party to the Madrid

Protocol.

(4) Date of recordal

The term ''date of recordal'' means the date on which a request

for extension of protection, filed after an international

registration is granted, is recorded on the International

Register.

(5) Declaration of bona fide intention to use the mark in

commerce

The term ''declaration of bona fide intention to use the mark

in commerce'' means a declaration that is signed by the applicant

for, or holder of, an international registration who is seeking

extension of protection of a mark to the United States and that

contains a statement that -

(A) the applicant or holder has a bona fide intention to use

the mark in commerce;

(B) the person making the declaration believes himself or

herself, or the firm, corporation, or association in whose

behalf he or she makes the declaration, to be entitled to use

the mark in commerce; and

(C) no other person, firm, corporation, or association, to

the best of his or her knowledge and belief, has the right to

use such mark in commerce either in the identical form of the

mark or in such near resemblance to the mark as to be likely,

when used on or in connection with the goods of such other

person, firm, corporation, or association, to cause confusion,

mistake, or deception.

(6) Extension of protection

The term ''extension of protection'' means the protection

resulting from an international registration that extends to the

United States at the request of the holder of the international

registration, in accordance with the Madrid Protocol.

(7) Holder of an international registration

A ''holder'' of an international registration is the natural or

juristic person in whose name the international registration is

recorded on the International Register.

(8) International application

The term ''international application'' means an application for

international registration that is filed under the Madrid

Protocol.

(9) International Bureau

The term ''International Bureau'' means the International

Bureau of the World Intellectual Property Organization.

(10) International Register

The term ''International Register'' means the official

collection of data concerning international registrations

maintained by the International Bureau that the Madrid Protocol

or its implementing regulations require or permit to be recorded.

(11) International registration

The term ''international registration'' means the registration

of a mark granted under the Madrid Protocol.

(12) International registration date

The term ''international registration date'' means the date

assigned to the international registration by the International

Bureau.

(13) Madrid Protocol

The term ''Madrid Protocol'' means the Protocol Relating to the

Madrid Agreement Concerning the International Registration of

Marks, adopted at Madrid, Spain, on June 27, 1989.

(14) Notification of refusal

The term ''notification of refusal'' means the notice sent by

the United States Patent and Trademark Office to the

International Bureau declaring that an extension of protection

cannot be granted.

(15) Office of a Contracting Party

The term ''Office of a Contracting Party'' means -

(A) the office, or governmental entity, of a Contracting

Party that is responsible for the registration of marks; or

(B) the common office, or governmental entity, of more than 1

Contracting Party that is responsible for the registration of

marks and is so recognized by the International Bureau.

(16) Office of origin

The term ''office of origin'' means the Office of a Contracting

Party with which a basic application was filed or by which a

basic registration was granted.

(17) Opposition period

The term ''opposition period'' means the time allowed for

filing an opposition in the United States Patent and Trademark

Office, including any extension of time granted under section

1063 of this title.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 60, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1913.)

-MISC1-

EFFECTIVE DATE

Pub. L. 107-273, div. C, title III, Sec. 13403, Nov. 2, 2002,

116 Stat. 1920, provided that: ''This subtitle (subtitle D (Sec.

13401-13403) of title III of div. C of Pub. L. 107-273, enacting

this subchapter and provisions set out as a note under section 1051

of this title) and the amendments made by this subtitle shall take

effect on the later of -

''(1) the date on which the Madrid Protocol (as defined in

section 60 of the Trademark Act of 1946 (this section)) enters

into force with respect to the United States (Nov. 2, 2003); or

''(2) the date occurring 1 year after the date of enactment of

this Act (Nov. 2, 2002).''

-CITE-

15 USC Sec. 1141a 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141a. International applications based on United States

applications or registrations

-STATUTE-

(a) In general

The owner of a basic application pending before the United States

Patent and Trademark Office, or the owner of a basic registration

granted by the United States Patent and Trademark Office may file

an international application by submitting to the United States

Patent and Trademark Office a written application in such form,

together with such fees, as may be prescribed by the Director.

(b) Qualified owners

A qualified owner, under subsection (a) of this section, shall -

(1) be a national of the United States;

(2) be domiciled in the United States; or

(3) have a real and effective industrial or commercial

establishment in the United States.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 61, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1915.)

-CITE-

15 USC Sec. 1141b 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141b. Certification of the international application

-STATUTE-

(a) Certification procedure

Upon the filing of an application for international registration

and payment of the prescribed fees, the Director shall examine the

international application for the purpose of certifying that the

information contained in the international application corresponds

to the information contained in the basic application or basic

registration at the time of the certification.

(b) Transmittal

Upon examination and certification of the international

application, the Director shall transmit the international

application to the International Bureau.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 62, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1915.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1141c of this title.

-CITE-

15 USC Sec. 1141c 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141c. Restriction, abandonment, cancellation, or expiration

of a basic application or basic registration

-STATUTE-

With respect to an international application transmitted to the

International Bureau under section 1141b of this title, the

Director shall notify the International Bureau whenever the basic

application or basic registration which is the basis for the

international application has been restricted, abandoned, or

canceled, or has expired, with respect to some or all of the goods

and services listed in the international registration -

(1) within 5 years after the international registration date;

or

(2) more than 5 years after the international registration date

if the restriction, abandonment, or cancellation of the basic

application or basic registration resulted from an action that

began before the end of that 5-year period.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 63, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1915.)

-CITE-

15 USC Sec. 1141d 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141d. Request for extension of protection subsequent to

international registration

-STATUTE-

The holder of an international registration that is based upon a

basic application filed with the United States Patent and Trademark

Office or a basic registration granted by the Patent and Trademark

Office may request an extension of protection of its international

registration by filing such a request -

(1) directly with the International Bureau; or

(2) with the United States Patent and Trademark Office for

transmittal to the International Bureau, if the request is in

such form, and contains such transmittal fee, as may be

prescribed by the Director.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 64, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1916.)

-CITE-

15 USC Sec. 1141e 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141e. Extension of protection of an international

registration to the United States under the Madrid Protocol

-STATUTE-

(a) In general

Subject to the provisions of section 1141h of this title, the

holder of an international registration shall be entitled to the

benefits of extension of protection of that international

registration to the United States to the extent necessary to give

effect to any provision of the Madrid Protocol.

(b) If the United States is office of origin

Where the United States Patent and Trademark Office is the office

of origin for a trademark application or registration, any

international registration based on such application or

registration cannot be used to obtain the benefits of the Madrid

Protocol in the United States.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 65, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1916.)

-CITE-

15 USC Sec. 1141f 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141f. Effect of filing a request for extension of protection

of an international registration to the United States

-STATUTE-

(a) Requirement for request for extension of protection

A request for extension of protection of an international

registration to the United States that the International Bureau

transmits to the United States Patent and Trademark Office shall be

deemed to be properly filed in the United States if such request,

when received by the International Bureau, has attached to it a

declaration of bona fide intention to use the mark in commerce that

is verified by the applicant for, or holder of, the international

registration.

(b) Effect of proper filing

Unless extension of protection is refused under section 1141h of

this title, the proper filing of the request for extension of

protection under subsection (a) of this section shall constitute

constructive use of the mark, conferring the same rights as those

specified in section 1057(c) of this title, as of the earliest of

the following:

(1) The international registration date, if the request for

extension of protection was filed in the international

application.

(2) The date of recordal of the request for extension of

protection, if the request for extension of protection was made

after the international registration date.

(3) The date of priority claimed pursuant to section 1141g of

this title.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 66, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1916.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1141h of this title.

-CITE-

15 USC Sec. 1141g 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141g. Right of priority for request for extension of

protection to the United States

-STATUTE-

The holder of an international registration with a request for an

extension of protection to the United States shall be entitled to

claim a date of priority based on a right of priority within the

meaning of Article 4 of the Paris Convention for the Protection of

Industrial Property if -

(1) the request for extension of protection contains a claim of

priority; and

(2) the date of international registration or the date of the

recordal of the request for extension of protection to the United

States is not later than 6 months after the date of the first

regular national filing (within the meaning of Article 4(A)(3) of

the Paris Convention for the Protection of Industrial Property)

or a subsequent application (within the meaning of Article

4(C)(4) of the Paris Convention for the Protection of Industrial

Property).

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 67, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1917.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1141f, 1141j of this

title.

-CITE-

15 USC Sec. 1141h 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141h. Examination of and opposition to request for extension

of protection; notification of refusal

-STATUTE-

(a) Examination and opposition

(1) A request for extension of protection described in section

1141f(a) of this title shall be examined as an application for

registration on the Principal Register under this chapter, and if

on such examination it appears that the applicant is entitled to

extension of protection under this subchapter, the Director shall

cause the mark to be published in the Official Gazette of the

United States Patent and Trademark Office.

(2) Subject to the provisions of subsection (c) of this section,

a request for extension of protection under this subchapter shall

be subject to opposition under section 1063 of this title.

(3) Extension of protection shall not be refused on the ground

that the mark has not been used in commerce.

(4) Extension of protection shall be refused to any mark not

registrable on the Principal Register.

(b) Notification of refusal

If, (FOOTNOTE 1) a request for extension of protection is refused

under subsection (a) of this section, the Director shall declare in

a notification of refusal (as provided in subsection (c) of this

section) that the extension of protection cannot be granted,

together with a statement of all grounds on which the refusal was

based.

(FOOTNOTE 1) So in original. The comma probably should not

appear.

(c) Notice to International Bureau

(1) Within 18 months after the date on which the International

Bureau transmits to the Patent and Trademark Office a notification

of a request for extension of protection, the Director shall

transmit to the International Bureau any of the following that

applies to such request:

(A) A notification of refusal based on an examination of the

request for extension of protection.

(B) A notification of refusal based on the filing of an

opposition to the request.

(C) A notification of the possibility that an opposition to the

request may be filed after the end of that 18-month period.

(2) If the Director has sent a notification of the possibility of

opposition under paragraph (1)(C), the Director shall, if

applicable, transmit to the International Bureau a notification of

refusal on the basis of the opposition, together with a statement

of all the grounds for the opposition, within 7 months after the

beginning of the opposition period or within 1 month after the end

of the opposition period, whichever is earlier.

(3) If a notification of refusal of a request for extension of

protection is transmitted under paragraph (1) or (2), no grounds

for refusal of such request other than those set forth in such

notification may be transmitted to the International Bureau by the

Director after the expiration of the time periods set forth in

paragraph (1) or (2), as the case may be.

(4) If a notification specified in paragraph (1) or (2) is not

sent to the International Bureau within the time period set forth

in such paragraph, with respect to a request for extension of

protection, the request for extension of protection shall not be

refused and the Director shall issue a certificate of extension of

protection pursuant to the request.

(d) Designation of agent for service of process

In responding to a notification of refusal with respect to a

mark, the holder of the international registration of the mark may

designate, by a document filed in the United States Patent and

Trademark Office, the name and address of a person residing in the

United States on whom notices or process in proceedings affecting

the mark may be served. Such notices or process may be served upon

the person designated by leaving with that person, or mailing to

that person, a copy thereof at the address specified in the last

designation filed. If the person designated cannot be found at the

address given in the last designation, or if the holder does not

designate by a document filed in the United States Patent and

Trademark Office the name and address of a person residing in the

United States for service of notices or process in proceedings

affecting the mark, the notice or process may be served on the

Director.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 68, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1917.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1141e, 1141f, 1141i of

this title.

-CITE-

15 USC Sec. 1141i 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141i. Effect of extension of protection

-STATUTE-

(a) Issuance of extension of protection

Unless a request for extension of protection is refused under

section 1141h of this title, the Director shall issue a certificate

of extension of protection pursuant to the request and shall cause

notice of such certificate of extension of protection to be

published in the Official Gazette of the United States Patent and

Trademark Office.

(b) Effect of extension of protection

From the date on which a certificate of extension of protection

is issued under subsection (a) of this section -

(1) such extension of protection shall have the same effect and

validity as a registration on the Principal Register; and

(2) the holder of the international registration shall have the

same rights and remedies as the owner of a registration on the

Principal Register.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 69, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1918.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 1141k, 1141m of this

title.

-CITE-

15 USC Sec. 1141j 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141j. Dependence of extension of protection to the United

States on the underlying international registration

-STATUTE-

(a) Effect of cancellation of international registration

If the International Bureau notifies the United States Patent and

Trademark Office of the cancellation of an international

registration with respect to some or all of the goods and services

listed in the international registration, the Director shall cancel

any extension of protection to the United States with respect to

such goods and services as of the date on which the international

registration was canceled.

(b) Effect of failure to renew international registration

If the International Bureau does not renew an international

registration, the corresponding extension of protection to the

United States shall cease to be valid as of the date of the

expiration of the international registration.

(c) Transformation of an extension of protection into a United

States application

The holder of an international registration canceled in whole or

in part by the International Bureau at the request of the office of

origin, under article 6(4) of the Madrid Protocol, may file an

application, under section 1051 or 1126 of this title, for the

registration of the same mark for any of the goods and services to

which the cancellation applies that were covered by an extension of

protection to the United States based on that international

registration. Such an application shall be treated as if it had

been filed on the international registration date or the date of

recordal of the request for extension of protection with the

International Bureau, whichever date applies, and, if the extension

of protection enjoyed priority under section 1141g of this title,

shall enjoy the same priority. Such an application shall be

entitled to the benefits conferred by this subsection only if the

application is filed not later than 3 months after the date on

which the international registration was canceled, in whole or in

part, and only if the application complies with all the

requirements of this chapter which apply to any application filed

pursuant to section 1051 or 1126 of this title.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 70, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1918.)

-CITE-

15 USC Sec. 1141k 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141k. Affidavits and fees

-STATUTE-

(a) Required affidavits and fees

An extension of protection for which a certificate of extension

of protection has been issued under section 1141i of this title

shall remain in force for the term of the international

registration upon which it is based, except that the extension of

protection of any mark shall be canceled by the Director -

(1) at the end of the 6-year period beginning on the date on

which the certificate of extension of protection was issued by

the Director, unless within the 1-year period preceding the

expiration of that 6-year period the holder of the international

registration files in the Patent and Trademark Office an

affidavit under subsection (b) of this section together with a

fee prescribed by the Director; and

(2) at the end of the 10-year period beginning on the date on

which the certificate of extension of protection was issued by

the Director, and at the end of each 10-year period thereafter,

unless -

(A) within the 6-month period preceding the expiration of

such 10-year period the holder of the international

registration files in the United States Patent and Trademark

Office an affidavit under subsection (b) of this section

together with a fee prescribed by the Director; or

(B) within 3 months after the expiration of such 10-year

period, the holder of the international registration files in

the Patent and Trademark Office an affidavit under subsection

(b) of this section together with the fee described in

subparagraph (A) and the surcharge prescribed by the Director.

(b) Contents of affidavit

The affidavit referred to in subsection (a) of this section shall

set forth those goods or services recited in the extension of

protection on or in connection with which the mark is in use in

commerce and the holder of the international registration shall

attach to the affidavit a specimen or facsimile showing the current

use of the mark in commerce, or shall set forth that any nonuse is

due to special circumstances which excuse such nonuse and is not

due to any intention to abandon the mark. Special notice of the

requirement for such affidavit shall be attached to each

certificate of extension of protection.

(c) Notification

The Director shall notify the holder of the international

registration who files 1 of the affidavits of the Director's

acceptance or refusal thereof and, in case of a refusal, the

reasons therefor.

(d) Service of notice or process

The holder of the international registration of the mark may

designate, by a document filed in the United States Patent and

Trademark Office, the name and address of a person residing in the

United States on whom notices or process in proceedings affecting

the mark may be served. 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 designated cannot be found at

the address given in the last designation, or if the holder does

not designate by a document filed in the United States Patent and

Trademark Office the name and address of a person residing in the

United States for service of notices or process in proceedings

affecting the mark, the notice or process may be served on the

Director.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 71, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1919.)

-CITE-

15 USC Sec. 1141l 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141l. Assignment of an extension of protection

-STATUTE-

An extension of protection may be assigned, together with the

goodwill associated with the mark, only to a person who is a

national of, is domiciled in, or has a bona fide and effective

industrial or commercial establishment either in a country that is

a Contracting Party or in a country that is a member of an

intergovernmental organization that is a Contracting Party.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 72, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1920.)

-CITE-

15 USC Sec. 1141m 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141m. Incontestability

-STATUTE-

The period of continuous use prescribed under section 1065 of

this title for a mark covered by an extension of protection issued

under this subchapter may begin no earlier than the date on which

the Director issues the certificate of the extension of protection

under section 1141i of this title, except as provided in section

1141n of this title.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 73, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1920.)

-CITE-

15 USC Sec. 1141n 01/06/03

-EXPCITE-

TITLE 15 - COMMERCE AND TRADE

CHAPTER 22 - TRADEMARKS

SUBCHAPTER IV - THE MADRID PROTOCOL

-HEAD-

Sec. 1141n. Rights of extension of protection

-STATUTE-

When a United States registration and a subsequently issued

certificate of extension of protection to the United States are

owned by the same person, identify the same mark, and list the same

goods or services, the extension of protection shall have the same

rights that accrued to the registration prior to issuance of the

certificate of extension of protection.

-SOURCE-

(July 5, 1946, ch. 540, title XII, Sec. 74, as added Pub. L.

107-273, div. C, title III, Sec. 13402, Nov. 2, 2002, 116 Stat.

1920.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 1141m of this title.

-CITE-