U. S. TRADEMARK LAW
FEDERAL STATUTES
U. S. PATENT & TRADEMARK OFFICE
January 16, 2009
TABLE OF CONTENTS
TRADEMARK ACT OF 1946, AS AMENDED
TITLE I - THE PRINCIPAL REGISTER
§ 1 (15 U.S.C. § 1051). Application for registration; verification § 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration § 3 (15 U.S.C. § 1053). Service marks registrable § 4 (15 U.S.C. § 1054). Collective marks and certification marks registrable § 5 (15 U.S.C. § 1055). Use by related companies § 6 (15 U.S.C. § 1056). Disclaimers § 7 (15 U.S.C. § 1057). Certificates of registration § 8 (15 U.S.C. § 1058). Duration § 9 (15 U.S.C. § 1059). Renewal of registration § 10 (15 U.S.C. § 1060). Assignment § 11 (15 U.S.C. § 1061). Acknowledgments and verifications § 12 (15 U.S.C. § 1062). Publication § 13 (15 U.S.C. § 1063). Opposition § 14 (15 U.S.C. § 1064). Cancellation § 15 (15 U.S.C. § 1065). Incontestability of right to use mark under certain conditions § 16 (15 U.S.C. § 1066). Interference § 17 (15 U.S.C. § 1067). Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board § 18 (15 U.S.C. § 1068). Refusal, cancellation, or restriction of registration; concurrent use § 19 (15 U.S.C. § 1069). Applicability, in inter partes proceeding, of equitable principles of laches, estoppel and acquiescence § 20 (15 U.S.C. § 1070). Appeal from examiner to Trademark Trial and Appeal Board § 21 (15 U.S.C. § 1071). Appeal to courts § 22 (15 U.S.C. § 1072). Registration as notice
TITLE II - THE SUPPLEMENTAL REGISTER
§ 23 (15 U.S.C. § 1091). Filing and registration for foreign use § 24 (15 U.S.C. § 1092). Cancellation § 25 (15 U.S.C. § 1093). Supplemental registration certificate § 26 (15 U.S.C. § 1094). General provisions § 27 (15 U.S.C. § 1095). Principal registration not precluded by supplemental registration § 28 (15 U.S.C. § 1096). Department of Treasury; supplemental registration not filed
TITLE III - NOTICE OF REGISTRATION § 29 (15 U.S.C. § 1111). Notice of registration; display with mark; actual notice
TITLE IV - CLASSIFICATION § 30 (15 U.S.C. § 1112). Classification of goods and services; registration in plurality of classes
TITLE V - FEES AND CHARGES § 31 (15 U.S.C. § 1113). Fees
TITLE VI - REMEDIES
§ 32 (15 U.S.C. § 1114). Remedies; infringement; innocent infringers § 33 (15 U.S.C. § 1115). Registration as evidence of right to exclusive use; defenses § 34 (15 U.S.C. § 1116). Injunctions; enforcement; notice of filing suit given Director § 35 (15 U.S.C. § 1117). Recovery of profits, damages, and costs § 36 (15 U.S.C. § 1118). Destruction of infringing articles § 37 (15 U.S.C. § 1119). Power of court over registration; certification of decrees and orders § 38 (15 U.S.C. § 1120). Fraud; civil liability § 39 (15 U.S.C. § 1121). Jurisdiction of Federal courts; State, local, and other agency requirements § 40 (15 U.S.C. § 1122). Liability of States, instrumentalities of States and State officials § 41 (15 U.S.C. § 1123). Rules and regulations
TITLE VII - IMPORTATION FORBIDDEN OF GOODS BEARING INFRINGING MARKS OR NAMES
§ 42 (15 U.S.C. § 1124). Importation of goods bearing infringing marks or names forbidden
TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION FORBIDDEN
§ 43 (15 U.S.C. § 1125). False designations of origin; false description or representation
TITLE IX - INTERNATIONAL CONVENTIONS
§ 44 (15 U.S.C. § 1126). International conventions; register of marks
TITLE X - CONSTRUCTION AND DEFINITIONS § 45 (15 U.S.C. § 1127).
TITLE XI - REPEAL OF PREVIOUS ACTS
§ 46(a) (15 U.S.C. § 1051 note). Time of taking effect - Repeal of prior acts § 46(b) (15 U.S.C. § 1051 note). Existing registrations under prior acts § 47(a) (15 U.S.C. § 1051 note). Applications pending on effective date of Act § 47(b) (15 U.S.C. § 1051 note). Appeals pending on effective date of Act § 48 (15 U.S.C. § 1051 note). Prior acts not repealed § 49 (15 U.S.C. § 1051 note). Preservation of existing rights § 50 (15 U.S.C. § 1051 note). Severability § 51 (15 U.S.C. § 1058 note). Applications pending on effective date of the Trademark Law Revision Act of 1988
TITLE XII—THE MADRID PROTOCOL
Sec. 60 (15 U.S.C. § 1141). Definitions Sec. 61 (15 U.S.C. § 1141a). International applications based on United States applications or registrations Sec. 62 (15 U.S.C. § 1141b). Certification of the international application Sec. 63 (15 U.S.C. § 1141c). Restriction, abandonment, cancellation, or expiration of a basic application or basic registration Sec. 64 (15 U.S.C. § 1141d). Request for extension of protection subsequent to International registration Sec. 65 (15 U.S.C. § 1141e). Extension of protection of an international registration to the United States under the Madrid Protocol Sec. 66 (15 U.S.C. § 1141f). Effect of filing a request for extension of protection of an international registration to the United States Sec. 67 (15 U.S.C. § 1141g). Right of priority for request for extension of protection to the United States. Sec. 68 (15 U.S.C. § 1141h). Examination of and opposition to request for extension of protection; notification of refusal Sec. 69 (15 U.S.C. § 1141i). Effect of extension of protection. Sec. 70 (15 U.S.C. § 1141j). Dependence of extension of protection to the United States on the underlying international registration Sec. 71 (15 U.S.C. § 1141k). Affidavits and fees Sec. 72 (15 U.S.C. § 1141l). Assignment of an extension of protection Sec. 73 (15 U.S.C. § 1141m). Incontestability Sec. 74 (15 U.S.C. § 1141n). Rights of extension of protection Sec. 13403 (15 U.S.C. § 1141 note). Effective date
UNITED STATES CODE, TITLE 35, PATENTS
PART 1-UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1-ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
35 U.S.C. § 1. Establishment. 35 U.S.C. § 2. Powers and duties. 35 U.S.C. § 3. Officers and employees. 35 U.S.C. § 4. Restrictions on officers and employees as to interest in patents 35 U.S.C. § 5. Patent and Trademark Office Public Advisory Committees. 35 U.S.C. § 6. Board of Patent Appeals and Interferences. (35 U.S.C. § 6 pertains to patents.)
35 U.S.C. § 7. Library. 35 U.S.C. § 8. Classification of patents. (35 U.S.C. § 8 pertains to patents.) 35 U.S.C. § 9. Certified copies of records. 35 U.S.C. § 10. Publications. 35 U.S.C. § 11. Exchange of copies of patents. (35 U.S.C. § 11 pertains to patents.) 35 U.S.C. § 12. Copies of patents and applications for public libraries. (35 U.S.C. § 12 pertains to patents.) 35 U.S.C. § 13. Annual report to Congress.
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE 35 U.S.C. § 21. Filing date and day for taking action. 5 U.S.C. § 6103. Holidays. District of Columbia Code—Section 28-2701. 35 U.S.C. § 22. Printing of papers filed. 35 U.S.C. § 23. Testimony in Patent and Trademark Office cases. 35 U.S.C. § 24. Subpoenas, witnesses. 35 U.S.C. § 25. Declaration in lieu of oath. 35 U.S.C. § 26. Effect of defective execution.
CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE 35 U.S.C. § 31. [Repealed] 35 U.S.C. § 32. Suspension or exclusion from practice. 35 U.S.C. § 33. Unauthorized representation as practitioner.
CHAPTER 4—PATENT FEES, FUNDING, SEARCH SYSTEMS 35 U.S.C. § 41(i). Patent and trademark search systems. 35 U.S.C. § 41 note. Adjustment of trademark fees. 35 U.S.C. § 42. Patent and Trademark Office funding.
Trademark Act of 1946, as Amended
PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427
The headings used for sections and subsections or paragraphs in the following reprint of the Act are not part of the Act but have been added for convenience in using this reprint. Prior trademark statutes may be found in Title 15, Chapter 3, of the U.S. Code and in the Statutes at Large. The present Act forms Chapter 22 of Title 15 of the U.S. Code and the U.S. Code citations have been placed at the beginning of each section and subsection. Included are an amendment to repeal § 40 by the Act of May 24, 1949, 63 Stat. 109; and amendments made to § 7(a) by the Act of August 17, 1950, Public Law 81-710, 64 Stat. 459; to § 21 by the Act of July 19, 1952, Public Law 82-593, 66 Stat. 792; to §§ 17, 20, 21, 24 and 31 by the Act of August 8, 1958, Public Law 85-609, 72 Stat. 540; to § 44(d) by the Act of October 3, 1961, Public Law 87- 333, 75 Stat. 748; to §§ 1(a)(1), 2(d), 6, 7(a), 7(d), 7(e), 7(f), 9, 10, 12(a), 12(c), 13, 14, 15, 16, 21, 23, 24, 29, 30, 32, 33, 35, 44(b), 44(e) and 45 by the Act of October 9, 1962, Public Law 87- 772, 76 Stat. 769; to § 31 by the Act of July 24, 1965, Public Law 89-83, 79 Stat. 260; to § 29 and the terms “Patent Office” and “Commissioner of Patents” by the Act of January 2, 1975, Public Law 93-596, 88 Stat. 1949; to §§ 13, 21 and 35 by the Act of January 2, 1975, Public Law 93-600, 88 Stat. 1955; to § 42 by the Act of October 3, 1978, Public Law 95-410, 92 Stat. 903; to § 17 by the Act of October 15, 1980, Public Law 96-455, 94 Stat. 2024; to § 31 by the Act of December 12, 1980, Public Law 96-517, 94 Stat. 3018; to §§ 21 and 39 by the Act of April 2, 1982, Public Law 97-164, 96 Stat. 25; to §§ 8(a), 8(b), 11, 13, 14, 15, 16 and 31 by the Act of August 27, 1982, Public Law 97-247, 96 Stat. 317; to § 31(a) by the Act of September 8, 1982, Public Law 97-256, 96 Stat. 816; to add § 39(a) by the Act of October 12, 1982, Public Law 97- 296, 96 Stat. 1316; to §§ 34, 35 and 36 by the Act of October 12, 1984, Public Law 98-473, 98 Stat. 2179; to §§ 14(c), 21 and 45 by the Act of November 8, 1984, Public Law 98-620, 98 Stat. 3335; to §§ 1, 2(d), 2(e), 2(f), 3, 4, 5, 6(b), 7, 8(a), 9(a), 9(c), 10, 12(a), 13, 14, 15, 16, 18, 19, 21, 23, 24, 26, 27, 29, 30, 32(2), 33, 34, 35(a), 36, 39, 43(a), 44 and 45 and to add § 51 by the Act of November 16, 1988, Public Law 100-667, 102 Stat. 3935; to § 31(a) by the Act of December 10, 1991, Public Law 102-204, 105 Stat. 1640; to § 32(1), to add § 40, and to §§ 43(a) and 45 by the Act of October 27, 1992, Public Law 102-542, 106 Stat. 3567; to §§ 2(e), 2(f) and 23(a) by the Act of December 8, 1993, Public Law 103-182, 107 Stat. 2057; to §§ 2(a) and 45 by the Act of December 8, 1994, Public Law 103-465, 108 Stat. 4982; to §§ 43 and 45 by the Act of January 16, 1996, Public Law 104-98, 109 Stat. 985; to §§ 34(d)(9) and 35 by Public Law No. 104-153, 110 Stat. 1386, July 2, 1996; to §§ 1(d)(1), 2, 7(a), 14, 23(c), 26, 31, 32(1), 33(b), 39(a) and 42 by Public Law 105-330, 112 Stat. 3069, effective October 30, 1998; to §§ 2, 10, 13(a), 14, 24, 32, 34(a), 35(a), 36, 40, 43(a), 43(c)(2) and 45 by Public Law 106-43, 113 Stat. 218, effective August 5, 1999; to §§ 1(a), 1(b), 12(b), 8, 9, 10, 44(d) and 44(e) by Public Law 105-330, 112 Stat. 3064, effective October 30, 1999; to §§ 1, 2, 6, 7, 8, 9, 10, 12, 13, 15, 16, 17, 18, 21, 23, 24, 30, 31, 32, 34, 35, 37, 41, 43, 44, 45, and 47(b) by Public Law 106-113, 113 Stat. 1501A, Nov. 29, 1999; to add Title XII, by Public Law 107-273, 116 Stat. 1758, effective Nov. 2, 2003; by Public Law 108- 482, 118 Stat. 3916, effective Dec. 23, 2004; by Public Law 109-312, 120 Stat. 1730, Oct. 6, 2006.
TITLE I - THE PRINCIPAL REGISTER
§ 1 (15 U.S.C. § 1051). Application for registration; verification
(a)(1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by
the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
(2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify that—
(A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate;
(C) the mark is in use in commerce; and
(D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall—
(i) state exceptions to the claim of exclusive use; and
(ii) shall specify, to the extent of the verifier’s knowledge—
(I) any concurrent use by others;
(II) the goods on or in connection with which and the areas in which each concurrent use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires registration.
(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
(2) The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify—
(A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce; (B) the applicant’s bona fide intention to use the mark in commerce;
(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate; and
(D) that, to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
(c) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
(d) (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
(2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
(3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
(4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
(e) If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3935; Oct. 30, 1998, 112 Stat. 3064; Nov. 29, 1999, 113 Stat. 1501A; Nov. 2, 2002, 116 Stat. 1906.)
§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided , That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and
effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
(e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act. A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3037; Dec. 8, 1993, 107 Stat. 2057; Dec. 8, 1994, 108 Stat. 4982; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)
§ 3 (15 U.S.C. § 1053). Service marks registrable
Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided herein in the case of trademarks. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 4 (15 U.S.C. § 1054). Collective marks and certification marks registrable
Subject to the provisions relating to the registration of trademarks, so far as they are applicable, collective and certification marks, including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks
sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks, except in the case of certification marks when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 5 (15 U.S.C. § 1055). Use by related companies
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be.
(Amended Nov. 16, 1988, 102 Stat. 3938.)
§ 6 (15 U.S.C. § 1056). Disclaimers
(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(b) No disclaimer, including those made under subsection (e) of section 1057 of this title, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
(Amended Oct. 9, 1962, 76 Stat. 769; Nov. 16, 1988, 102 Stat. 3938; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 7 (15 U.S.C. § 1057). Certificates of registration
(a) Issuance and form. Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the Patent and Trademark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received in the Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration.
(b) Certificate as prima facie evidence. A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
(c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing—
(1) has used the mark;
(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) to register the mark which is pending or has resulted in registration of the mark.
(d) Issuance to assignee. A certificate of registration of a mark may be issued to the assignee of the applicant, but the assignment must first be recorded in the Patent and Trademark Office. In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.
(e) Surrender, cancellation, or amendment by registrant. Upon application of the registrant the Director may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the Patent and Trademark Office. Upon application of the registrant and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Patent and Trademark Office and upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof.
(f) Copies of Patent and Trademark Office records as evidence. Copies of any records, books, papers, or drawings belonging to the Patent and Trademark Office relating to marks, and copies of registrations, when authenticated by the seal of the Patent and Trademark Office and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have such copies.
(g) Correction of Patent and Trademark Office mistake. Whenever a material mistake in a registration, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mistake shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Director a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
(h) Correction of applicant’s mistake. Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registration as to require republication of the mark.
(Amended Aug. 17, 1950, 64 Stat. 459; Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3938; Oct. 30, 1998, 112 Stat. 3069; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 8 (15 U.S.C. § 1058). Duration
(a) In general. Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director for failure to comply with the provisions of subsection (b) of this section, upon the expiration of the following time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this chapter, at the end of 6 years following the date of registration.
(2) For registrations published under the provisions of section 1062(c), at the end of 6 years following the date of publication under such section.
(3) For all registrations, at the end of each successive 10-year period following the date of registration.
(b) Affidavit of continuing use. During the 1-year period immediately preceding the end of the applicable time period set forth in subsection (a) of this section, the owner of the registration shall pay the prescribed fee and file in the Patent and Trademark Office—
(1) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce and such number of specimens or facsimiles showing current use of the mark as may be required by the Director; or
(2) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is not in use in commerce and showing that any such nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.
(c) Grace period for submissions; deficiency.
(1) The owner of the registration may make the submissions required under this section within a grace period of 6 months after the end of the applicable time period set forth in subsection (a) of this section. Such submission is required to be accompanied by a surcharge prescribed by the Director.
(2) If any submission filed under this section is deficient, the deficiency may be corrected after the statutory time period and within the time prescribed after notification of the deficiency. Such submission is required to be accompanied by a surcharge prescribed by the Director.
(d) Notice of affidavit requirement. Special notice of the requirement for affidavits under this section shall be attached to each certificate of registration and notice of publication under section 12(c).
(e) Notification of acceptance or refusal of affidavits. The Director shall notify any owner who files 1 of the affidavits required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
(f) Designation of resident for service of process and notices
. If the registrant is not domiciled in the United States, the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated
cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.
(Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3939; Oct. 30, 1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Nov. 2, 2002, 116 Stat. 1906)
§ 9 (15 U.S.C. § 1059). Renewal of registration
(a) Subject to the provisions of section 1058 of this title, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.
(b) If the Director refuses to renew the registration, the Director shall notify the registrant of the Director’s refusal and the reasons therefor.
(c) If the registrant is not domiciled in the United States the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.
(Amended Oct. 9, 1962, 76 Stat. 770; Nov. 16, 1988, 102 Stat. 3939; Oct. 30, 1998, 112 Stat. 3067; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1907.)
§ 10 (15 U.S.C. § 1060). Assignment
(a)(1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1051(b) of this title shall be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted.
(3) Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.
(5) The United States Patent and Trademark Office shall maintain a record of information on assignments, in such form as may be prescribed by the Director.
(b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3937; Aug. 5, 1999, 113 Stat. 218; Oct. 30, 1998, 112 Stat. 3068, effective Oct. 30, 1999; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1907.)
§ 11 (15 U.S.C. § 1061). Acknowledgments and verifications
Acknowledgments and verifications required hereunder may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States or before any official authorized to administer oaths in the foreign country concerned whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, and shall be valid if they comply with the laws of the state or country where made.
(Amended Aug. 27, 1982, 96 Stat. 321.)
§ 12 (15 U.S.C. § 1062). Publication
(a) Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office: Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 1066 of this title, the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.
(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
(c) A registrant of a mark registered under the provision of the Act of March 3, 1881, or the Act of February 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the payment of the prescribed fee file with the Director an affidavit setting forth those goods stated in the registration on which said mark is in use in commerce and that the registrant claims the benefits of this chapter for said mark. The Director shall publish notice thereof with a reproduction of said mark in the Official Gazette, and notify the registrant of such publication and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of this title. Marks published under this subsection shall not be subject to the provisions of section 1063 of this chapter.
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 13 (15 U.S.C. § 1063). Opposition
(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
(b) Unless registration is successfully opposed—
(1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or
(2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3940; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)
§ 14 (15 U.S.C. § 1064). Cancellation
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment
under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
(1) Within five years from the date of the registration of the mark under this chapter.
(2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such said prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 320; Nov. 8, 1984, 98 Stat. 3335; Nov. 16, 1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 218; Oct. 6, 2006, 120 Stat. 1730.)
§ 15 (15 U.S.C. § 1065). Incontestability of right to use mark under certain conditions
Except on a ground for which application to cancel may be filed at anytime under paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such registered mark
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 (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
, That—
(2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and
(3) an affidavit is filed with the Director within one year after the expiration of any such five- year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and the other matters specified in paragraphs (1) and (2) of this section; and
(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title.
The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof.
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 16 (15 U.S.C. § 1066). Interference
Upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive. No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable.
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 321; Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 17 (15 U.S.C. § 1067). Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board
(a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.
(b) The Trademark Trial and Appeal Board shall include the Director, Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and administrative trademark judges who are appointed by the Director.
(c) Authority of the Secretary. The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative trademark judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative trademark judge.
(d) Defense to Challenge of Appointment. It shall be a defense to a challenge to the appointment of an administrative trademark judge on the basis of the judge's having been originally appointed by the Director that the administrative trademark judge so appointed was acting as a de facto officer.
(Amended Aug. 8, 1958, 72 Stat. 540; Jan. 2, 1975, 88 Stat. 1949; 94 Stat. 2024; Nov. 29, 1999, 113 Stat. 1536, 1501A-580; Nov. 2, 2002, 116 Stat. 1902; Aug. 12, 2008, 122 Stat. 3014.)
§ 18 (15 U.S.C. § 1068). Refusal, cancellation, or restriction of registration; concurrent use
In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 1052 of this title. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title.
(Amended Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 19 (15 U.S.C. § 1069). Applicability, in inter partes proceeding, of equitable principles of laches, estoppel and acquiescence
In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable, may be considered and applied.
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3941.)
§ 20 (15 U.S.C. § 1070). Appeal from examiner to Trademark Trial and Appeal Board
An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.
(Amended Aug. 8, 1958, 72 Stat. 540.)
§ 21 (15 U.S.C. § 1071). Appeal to courts
(a) Persons entitled to appeal; United States Court of Appeals for the Federal Circuit; waiver of civil action; election of civil action by adverse party; procedure.
(1) An applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as a lawful concurrent user, party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 8, 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 subsection, files notice with the Director that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under subsection (b) of this section in default of which the decision appealed from shall govern the further proceedings in the case.
(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
(3) The Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during pendency of the appeal. In an ex parte case, the Director shall submit to that court a brief explaining the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and 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 1(b) before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).
(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 1(b) before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).
(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.
(Amended July 19, 1952, 66 Stat. 814; Aug. 8, 1958, 72 Stat. 540; Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Apr. 2, 1982, 96 Stat. 49; Nov. 8, 1984, 98 Stat. 3363; Nov. 16, 1988, 102 Stat. 3942; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 22 (15 U.S.C. § 1072). Registration as notice
Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof.
TITLE II - THE SUPPLEMENTAL REGISTER
§ 23 (15 U.S.C. § 1091). Filing and registration for foreign use
(a) In addition to the principal register, the Director shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled “An Act to give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes,” to be called the supplemental register. All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register herein provided, except those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of 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) 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) 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.
(Amended Oct. 9, 1962, 76 Stat. 773; Nov. 16, 1988, 102 Stat. 3942; Dec. 8, 1993, 107 Stat. 2057; Oct. 30, 1998, 112 Stat. 3069; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.)
§ 24 (15 U.S.C. § 1092). Cancellation
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 such person is or will be damaged by the registration of a mark on the supplemental register--
(1) for which the effective filing date is after the date on which such person's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
(2) on grounds other than dilution by blurring or dilution by tarnishment, such person 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).
(Amended Aug. 8, 1958, 72 Stat. 540; Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3943; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)
§ 25 (15 U.S.C. § 1093). Supplemental registration certificate
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.
§ 26 (15 U.S.C. § 1094). General provisions
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.
(Amended Nov. 16, 1988, 102 Stat. 3943; Oct. 30, 1998, 112 Stat. 3069.)
§ 27 (15 U.S.C. § 1095). Principal registration not precluded by supplemental registration
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.
(Amended Nov. 16, 1988, 102 Stat. 3943.)
§ 28 (15 U.S.C. § 1096). Department of Treasury; supplemental registration not filed
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.
TITLE III - NOTICE OF REGISTRATION
§ 29 (15 U.S.C. § 1111). Notice of registration; display with mark; recovery of profits and damages in infringement suit
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.
(Amended Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 1343.)
*Note: The amendment of the wording of this term by Public Law 93-596 became effective on January 2, 1975. However, the amendment provides that any registrant may continue to give notice of his registration in accordance with § 29 of the Trademark Act of 1946, as amended Oct. 9, 1962, as an alternative to notice in accordance with § 29 of the Trademark Act as amended by Public Law 93-596, regardless of whether his mark was registered before or after January 2, 1975.
TITLE IV - CLASSIFICATION
§ 30 (15 U.S.C. § 1112). Classification of goods and services; registration in plurality of classes
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.
(Amended Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3943; Nov. 29, 1999, 113 Stat. 1501A-583.)
TITLE V - FEES AND CHARGES
§ 31 (15 U.S.C. § 1113). Fees
(a) 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) 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.
(Amended Aug. 8, 1958, 72 Stat. 540; July 24, 1965, 79 Stat. 260; Jan. 2, 1975, 88 Stat. 1949; Dec. 12, 1980, 94 Stat. 3018; Aug. 27, 1982, 96 Stat. 319; Sept. 8, 1982, 96 Stat. 256; Dec. 10, 1991, 105 Stat. 1640; Oct. 30, 1998, 112 Stat. 3069; Nov. 29, 1999, 113 Stat. 1501A-554.)
TITLE VI - REMEDIES
§ 32 (15 U.S.C. § 1114). Remedies; infringement; innocent infringers
(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, United States Code, 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 43(d); 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.
(Amended Oct. 9, 1962, 76 Stat. 773; Nov. 16, 1988, 102 Stat. 3943; Oct. 27, 1992, 106 Stat. 3567; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-549.)
§ 33 (15 U.S.C. § 1115). Registration as evidence of right to exclusive use; defenses
(a) 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) 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 Act 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 Act 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.
(Amended Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3944; Oct. 30, 1998, 112 Stat. 3069; Nov. 2, 2002, 116 Stat. 1908.)
§ 34 (15 U.S.C. § 1116). Injunctions; enforcement; notice of filing suit given Director
(a) 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) The said courts shall have jurisdiction to enforce said injunction, as herein provided, 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) 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) (1) (A) In the case of a civil action arising under section 1114(1)(a) of this title or section 220506 of title 36, United States Code, 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 Act are made available by reason of section 220506 of title 36, United States Code;
but such term does not include any mark or designation used on or in connection with goods or services of which the manufacturer 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. For seizures made under this section, the court shall enter an appropriate protective order with respect to discovery and use of any records or information that has been seized. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used.
(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 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 goodwill, 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 the Internal Revenue Code of 1986, 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.
(Amended Jan. 2, 1975, 88 Stat. 1949; Oct. 12, 1984, 98 Stat. 2179; Nov. 16, 1988, 102 Stat. 3945; July 2, 1996, 110 Stat. 1386; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-548; Nov. 2, 2002, 116 Stat. 1908; Oct. 13, 2008, 122 Stat. 4258)
§ 35 (15 U.S.C. § 1117). Recovery of profits, damages, and costs
(a) 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 Act, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 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 sale 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) In assessing damages under subsection (a) for any violation of section 32(1)(a) of this Act or section 220506 of title 36, United States Code, in a case involving use of a counterfeit mark or designation (as defined in section 34(d) of this Act), the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney's fee, if the violation consists of--
(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 34(d) of this Act), in connection with the sale, offering for sale, or distribution of goods or services; or
(2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation.
In such a case, the court may award prejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of the Internal Revenue Code of 1986, beginning on the date of the service of the claimant's pleadings setting forth the claim for such entry of judgment and ending on the date such entry is made, or for such shorter time as the court considers appropriate.
(c) 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 $1,000 or more than $200,000 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 $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.
(d) 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.
(e) In the case of a violation referred to in this section, it shall be a rebuttable presumption that the violation is willful for purposes of determining relief if the violator, or a person acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact
information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or renewing a domain name used in connection with the violation. Nothing in this subsection limits what may be considered a willful violation under this section.
(Amended Oct. 9, 1962, 76 Stat. 774; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Oct. 12, 1984, 98 Stat. 2182; Nov. 16, 1988, 102 Stat. 3945; July 2, 1996, 110 Stat. 1386; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-549; Nov. 2, 2002, 116 Stat. 1906, 1908; Dec. 23, 2004, 118 Stat. 3916; Oct. 13, 2008, 122 Stat. 4259.)
§ 36 (15 U.S.C. § 1118). Destruction of infringing articles
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 1161(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.
(Amended Jan. 2, 1975, 88 Stat. 1949; Oct. 12, 1984, 98 Stat. 2182; Nov. 16, 1988, 102 Stat. 3945; Aug. 5, 1999, 113 Stat. 218.)
§ 37 (15 U.S.C. § 1119). Power of court over registration; certification of decrees and orders
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled 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.
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-583.)
§ 38 (15 U.S.C. § 1120). Fraud; civil liability
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. (Amended Jan. 2, 1975, 88 Stat. 1949.)
§ 39 (15 U.S.C. § 1121). Jurisdiction of Federal courts; State, local, and other agency requirements
(a) The district and territorial courts of the United States shall have original jurisdiction, the courts of appeal of the United States (other than the United States Court of Appeals for the Federal Circuit) and the United States Court of Appeals for the District of Columbia 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.
(Amended Apr. 2, 1982, 96 Stat. 46; Nov. 16, 1988, 102 Stat. 3946; Oct. 30, 1998, 112 Stat. 3069.)
§ 40 (15 U.S.C. § 1122). Liability of States, instrumentalities of States and State officials
(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) In a suit described in subsection (a) or (b) 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 f this title, destruction of infringing articles under section 1118 f 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.
(Added Oct. 27, 1992, 106 Stat. 3567; amended Aug. 5, 1999, 113 Stat. 218.)
§ 41 (15 U.S.C. § 1123). Rules and regulations
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.
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-583.)
TITLE VII - IMPORTATION FORBIDDEN OF GOODS BEARING INFRINGING MARKS OR NAMES
§ 42 (15 U.S.C. § 1124). Importation of goods bearing infringing marks or names forbidden
Except as provided in subsection (d) of section 526 of the Tariff Act of 1930, 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.
(Amended Oct. 3, 1978, 92 Stat. 903; Oct. 30, 1998, 112 Stat. 3069.)
Note: Copies of regulations referred to in this section may be obtained from the Department of the Treasury.
TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION FORBIDDEN
§ 43 (15 U.S.C. § 1125). False designations of origin; false description or representation
(a) (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) 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) Dilution by Blurring; Dilution by Tarnishment.--
(1) Injunctive relief.--Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
(2) Definitions.--(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
(B) For purposes of paragraph (1), `dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
(C) For purposes of paragraph (1), `dilution by tarnishment' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
(3) Exclusions.--The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
(4) Burden of proof.--In a civil action for trade dress dilution under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that--
(A) the claimed trade dress, taken as a whole, is not functional and is famous; and
(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
(5) Additional remedies.--In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 34. The owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity if--
(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after the date of enactment of the Trademark Dilution Revision Act of 2006; and
(B) in a claim arising under this subsection--
(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
(6) Ownership of valid registration a complete bar to action.--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 under this Act shall be a complete bar to an action against that person, with respect to that mark, that--
(A)(i) is brought by another person under the common law or a statute of a State; and
(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
(7) Savings clause.--Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.''
(d)(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, United States Code, 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.
(Amended Nov. 16, 1988, 102 Stat. 3946; Oct. 27, 1992, 106 Stat. 3567; Jan. 16, 1996, 109 Stat. 985; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-545; Oct. 6, 2006, 120 Stat. 1730.)
TITLE IX - INTERNATIONAL CONVENTIONS
§ 44 (15 U.S.C. § 1126). International conventions; register of marks
(a) 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 Act 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. Note: The United States is not at present a party to the parts of the international conventions providing for international bureaus for the registration or communication of trademarks.
(b) 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.
Notes: International Convention for the Protection of Industrial Property of 1883 (Paris); revised at Washington in 1911, 204 O.G. 1011, July 21, 1914 (37 Stat. 1645; Treaty Series 579); at the Hague in 1925, 407 O.G. 298, June 9, 1931 (47 Stat. 1789; Treaty Series 834; 2 Bevans 524); at London in 1934, 613 O.G. 23, August 3, 1948 (53 Stat. 1748; Treaty Series 941; 3 Bevans 223); at Lisbon in 1958, 775 O.G. 321, February 13, 1962 (53 Stat. 1748; 13 U.S.T. 1; TIAS 9431); and at Stockholm July 14, 1967, 852 O.G. 511, July 16, 1968 (21 U.S.T. 1583; TIAS 6923). A list of the member countries together with an indication of the latest Act by which each country is bound
and the date from which each is considered to be bound appears annually (January issue) in “Industrial Property,” a monthly review of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. General Inter-American Convention for Trade-Mark and Commercial Protection (Pan-American Trade-Mark Convention) of 1929, 46 Stat. 2907; Pan-American Trade-Mark Convention of 1923, 44 Stat. 2494; Pan-American Trade-Mark Convention of 1910, 39 Stat. 1675.
List of the States which are parties to the above conventions may be found in “Treaties in Force,” a list of treaties and other international agreements in force on the first day of January of each year, compiled annually by the Office of the Legal Adviser, U.S. Department of State.
(c) 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) An application for registration of a mark under sections 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 6 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.
Note: Section 3 of Public Law 333, 87th Cong., approved October 3, 1961, 75 Stat. 748, the provision which added the last paragraph above provided that “This Act 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 is applied 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.” This provision became effective Jan. 4, 1962.
(e) 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 herein 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) 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 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) 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 herein 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 the United States shall have the same benefits as are granted by this section to persons described in subsection (b) of this section.
(Amended Oct. 3, 1961, 75 Stat. 748; Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3946; Oct. 30, 1998, 112 Stat. 3068; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.)
TITLE X - CONSTRUCTION AND DEFINITIONS
§ 45 (15 U.S.C. § 1127).
In the construction of this chapter, unless the contrary is plainly apparent from the context—
United States. The United States includes and embraces all territory which is under its jurisdiction and control.
Commerce. The word “commerce” means all commerce which may lawfully be regulated by Congress.
Principal Register, Supplemental Register. 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.
Person, juristic person. 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 Act 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 non-governmental entity.
Applicant, registrant. The terms “applicant” and “registrant” embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
Director. The term “Director” means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
Related company. 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.
Trade name, commercial name. The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.
Trademark. 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.
Service mark. 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.
Certification mark. 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.
Collective mark. 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.
Mark. The term “mark” includes any trademark, service mark, collective mark, or certification mark.
Use in commerce. 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.
Abandonment of mark. 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.
Colorable imitation. 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.
Registered mark. 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.
Prior acts. The term “Act of March 3, 1881,” “Act of February 20, 1905,” or “Act of March 19, 1920,” means the respective Act as amended.
Counterfeit. A “counterfeit” is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
Domain name. 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.
Internet. The term “Internet” has the meaning given that term in section 230(f)(1) of the Communications Act of 1934 (47 U.S.C. 230(f)(1)).
Singular and plural. Words used in the singular include the plural and vice versa.
Intent of Chapter. 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.
(Amended Oct. 9, 1962, 76 Stat. 774; Jan. 2, 1975, 88 Stat. 1949; Nov. 8, 1984, 98 Stat. 3335, Nov. 16, 1988, 102 Stat. 3946; Oct. 27, 1992, 106 Stat. 3568; Dec. 8, 1994, 108 Stat. 4981; Jan. 16, 1996, 109 Stat. 986; Aug. 5, 1999, 113 Stat. 219-220; Nov. 29, 1999, 113 Stat. 1501A-550, 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)
TITLE XI - REPEAL OF PREVIOUS ACTS
§ 46(a) (15 U.S.C. § 1051 note). Time of taking effect - Repeal of prior acts
This Act shall be in force and take effect one year from its enactment, but except as otherwise herein specifically provided shall not affect any suit, proceeding, or appeal then pending. All Acts and parts of Acts inconsistent herewith are hereby repealed effective one year from the enactment hereof, including the following Acts insofar as they are inconsistent herewith: The Act of Congress approved March 3, 1881, entitled “An Act to authorize the registration of trademarks and protect the same”; the Act approved August 5, 1882, entitled “An Act relating to the registration of trademarks”; the Act of February 20, 1905 (U.S.C., title 15, secs. 81 to 109, inclusive), entitled “An Act to authorize the registration of trademarks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same”, and the amendments thereto by the Acts of May 4, 1906 (U.S.C., title 15, secs. 131 and 132; 34 Stat. 169), March 2, 1907 (34 Stat. 1251, 1252), February 18, 1909 (35 Stat. 627, 628), February 18, 1911 (36 Stat. 918), January 8, 1913 (37 Stat. 649), June 7, 1924 (43 Stat. 647), March 4, 1925 (43 Stat. 1268, 1269), April 11, 1930 (46 Stat. 155), June 10, 1938 (Public, Numbered 586, Seventy-fifth Congress, ch. 332, third session); the Act of March 19, 1920 (U.S.C., title 15, secs. 121 to 128, inclusive), 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”, and the amendments thereto, including the Act of June 10, 1938 (Public, Numbered 586, Seventy-fifth Congress, ch. 332, third session): Provided, That this repeal shall not affect the validity of registrations granted or applied for under any of said Acts prior to the effective date of this Act, or rights or remedies thereunder except as provided in sections 8, 12, 14, 15, and 47 of this Act; but nothing contained in this Act shall be construed as limiting, restricting, modifying, or repealing any statute in force on the effective date of this Act which does not relate to trademarks, or as restricting or increasing the authority of any Federal departments or regulatory agency except as may be specifically provided in this Act.
§ 46(b) (15 U.S.C. § 1051 note). Existing registrations under prior acts
Acts of 1881 and 1905. Registrations now existing under the Act of March 3, 1881, or the Act of February 20, 1905, 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. Such registrations and the renewals thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act to the same extent and with the same force and effect as though registered on the principal register established by this Act except as limited in sections 8, 12, 14, and 15 of this Act. Marks registered under the “10-year proviso” of section 5 of the Act of February 20, 1905, as amended, shall be deemed to have become distinctive of the registrant’s goods in commerce under paragraph (f) of section 2 of this Act and may be renewed under section 9 hereof as marks coming within said paragraph.
Act of 1920. Registrations now existing under the Act of March 19, 1920, shall expire 6 months after the effective date of this Act, 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 relating to marks registered on the supplemental register established by this Act, 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. Subject to registration under this Act. Marks registered under previous Acts may, if eligible, also be registered under this Act.
§ 47(a) (15 U.S.C. § 1051 note). Applications pending on effective date of Act
All applications for registration pending in the Patent and Trademark Office at the effective date of this Act may be amended, if practicable, to bring them under the provisions of this Act. 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. 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 for this purpose only, notwithstanding the foregoing general repeal thereof.
§ 47(b) (15 U.S.C. § 1051 note). Appeals pending on effective date of Act
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, the court, if it be of the opinion that the provisions of this Act are applicable to the subject matter of the appeal, may apply such provision or may remand the case to the 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.
(Amended Nov. 29, 1999, 113 Stat. 1501A-583)
§ 48 (15 U.S.C. § 1051 note). Prior acts not repealed
Section 4 of the Act of January 5, 1905 (U.S.C., title 36, section 4), as amended, entitled “An Act to incorporate the National Red Cross,” and section 7 of the Act of June 15, 1916 (U.S.C., title 36, section 27), entitled “An Act to incorporate the Boy Scouts of America, and for other purposes,” and the Act of June 20, 1936 (U.S.C., title 22, section 248), entitled “An Act to prohibit the
commercial use of the coat of arms of the Swiss Confederation,” are not repealed or affected by this Act.
Note: The first and third of the laws referred to in this section have been repealed and replaced by §§ 706 and 708, respectively, of U.S.C., Title 18, Crimes and Criminal Procedure, enacted June 25, 1948, effective September 1, 1948.
§ 49 (15 U.S.C. § 1051 note). Preservation of existing rights
Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith prior to the effective date of this Act.
§ 50 (15 U.S.C. § 1051 note). Severability
If any provision of this Act or the application of such provision to any person or circumstance is held invalid, the remainder of the Act shall not be affected thereby.
§ 51 (15 U.S.C. § 1058 note). Applications pending on effective date of the Trademark Law Revision Act of 1988
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 shall remain in force for a period of 10 years.
TITLE XII—THE MADRID PROTOCOL
Sec. 60 (15 U.S.C. § 1141). Definitions
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 13.
[Added Nov. 2, 2003, 116 Stat. 1758, 1913]
Sec. 61 (15 U.S.C. § 1141a). International applications based on United States applications or registrations
(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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1915]
Sec. 62 (15 U.S.C. § 1141b). Certification of the international application
(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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1915]
Sec. 63 (15 U.S.C. § 1141c). Restriction, abandonment, cancellation, or expiration of a basic application or basic registration
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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1915]
Sec. 64 (15 U.S.C. § 1141d). Request for extension of protection subsequent to International registration
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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1916]
Sec. 65 (15 U.S.C. § 1141e). Extension of protection of an international registration to the United States under the Madrid Protocol
(a) In General.—Subject to the provisions of section 68, 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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1916]
Sec. 66 (15 U.S.C. § 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.—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 68, the proper filing of the request for extension of protection under subsection (a) shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), 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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1916]
Sec. 67 (15 U.S.C. § 1141g). Right of priority for request for extension of protection to the United States.
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).
[Added Nov. 2, 2003, 116 Stat. 1758, 1917]
Sec. 68 (15 U.S.C. § 1141h). Examination of and opposition to request for extension of protection; notification of refusal
(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 Act, and if on such examination it appears that the applicant is entitled to extension of protection under this title, 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 title 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, 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.
(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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1917]
Sec. 69 (15 U.S.C. § 1141i). Effect of extension of protection.
(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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1918]
Sec. 70 (15 U.S.C. § 1141j). Dependence of extension of protection to the United States on the underlying international registration
(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 Act which apply to any application filed pursuant to section 1051 or 1126 of this title. [Added Nov. 2, 2003, 116 Stat. 1758, 1918]
Sec. 71 (15 U.S.C. § 1141k). Affidavits and fees
(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) 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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1919]
Sec. 72 (15 U.S.C. § 1141l). Assignment of an extension of protection
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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1920]
Sec. 73 (15 U.S.C. § 1141m). Incontestability
The period of continuous use prescribed under section 1065 of this title for a mark covered by an extension of protection issued under this title 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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1920]
Sec. 74 (15 U.S.C. § 1141n). Rights of extension of protection
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.
[Added Nov. 2, 2003, 116 Stat. 1758, 1920]
Sec. 13403 (15 U.S.C. § 1141 note). Effective date
This subtitle 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) enters into force with respect to the United States; or
(2) the date occurring 1 year after the date of enactment of this Act.
[Added Nov. 2, 2003, 116 Stat. 1758, 1920]
UNITED STATES CODE, TITLE 35, PATENTS
PART 1-UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1-ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
35 U.S.C. § 1. Establishment.
(a) ESTABLISHMENT—The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office.
(b) OFFICES—The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.
(c) REFERENCE—For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office.”
(July 19, 1952, ch. 950, § 1, 66 Stat. 792; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-572.)
35 U.S.C. § 2. Powers and duties.
(a) IN GENERAL—The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce—
(1) shall be responsible for the granting and issuing of patents and the registration of trademarks; and
(2) shall be responsible for disseminating to the public information with respect to patents and trademarks.
(b) SPECIFIC POWERS—The Office—
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;
(2) may establish regulations, not inconsistent with law, which—
(A) shall govern the conduct of proceedings in the Office;
(B) shall be made in accordance with section 553 of title 5;
(C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;
(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;
(E) shall recognize the public interest in continuing to safeguard broad access to the United States patent system through the reduced fee structure for small entities under section 41(h)(1) of this title; and
(F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and is consistent with the principles of impartiality and competitiveness;
(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions;
(4)(A) may make such purchases, contracts for the construction, maintenance, or management and operation of facilities, and contracts for supplies or services, without regard to the provisions of subtitle I and chapter 33 of title 40, title III of the Federal Property and Administrative Services Act of 1949 (41 U.S.C. 251 et seq.), and the McKinney-Vento Homeless Assistance Act (42 U.S.C. 11301 et seq.); and
(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, platemaking, presswork, silk screen processes, binding, microform, and the products of such processes, as it considers necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 through 1123 of title 44;
(5) may use, with their consent, services, equipment, personnel, and facilities of other departments, agencies, and instrumentalities of the Federal Government, on a reimbursable basis, and cooperate with such other departments, agencies, and instrumentalities in the establishment and use of services, equipment, and facilities of the Office;
(6) may, when the Director determines that it is practicable, efficient, and cost-effective to do so, use, with the consent of the United States and the agency, instrumentality, Patent and Trademark Office, or international organization concerned, the services, records, facilities, or personnel of any State or local government agency or instrumentality or foreign patent and trademark office or international organization to perform functions on its behalf;
(7) may retain and use all of its revenues and receipts, including revenues from the sale, lease, or disposal of any real, personal, or mixed property, or any interest therein, of the Office;
(8) shall advise the President, through the Secretary of Commerce, on national and certain international intellectual property policy issues;
(9) shall advise Federal departments and agencies on matters of intellectual property policy in the United States and intellectual property protection in other countries;
(10) shall provide guidance, as appropriate, with respect to proposals by agencies to assist foreign governments and international intergovernmental organizations on matters of intellectual property protection;
(11) may conduct programs, studies, or exchanges of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throughout the world;
(12)(A) shall advise the Secretary of Commerce on programs and studies relating to intellectual property policy that are conducted, or authorized to be conducted, cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) may conduct programs and studies described in subparagraph (A); and
(13)(A) in coordination with the Department of State, may conduct programs and studies cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) with the concurrence of the Secretary of State, may authorize the transfer of not to exceed $100,000 in any year to the Department of State for the purpose of making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and other matters.
(c) CLARIFICATION OF SPECIFIC POWERS—(1) The special payments under subsection (b)(13)(B) shall be in addition to any other payments or contributions to international organizations described in subsection (b)(13)(B) and shall not be subject to any limitations imposed by law on the amounts of such other payments or contributions by the United States Government.
(2) Nothing in subsection (b) 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 141 of the Trade Act of 1974 (19 U.S.C. 2171).
(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to copyright matters.
(4) In exercising the Director’s powers under paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General Services.
(5) In exercising the Director’s powers and duties under this section, the Director shall consult with the Register of Copyrights on all copyright and related matters.
(d) CONSTRUCTION—Nothing in this section shall be construed to nullify, void, cancel, or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United States Patent and Trademark Office.
(July 19, 1952, ch. 950, § 1, 66 Stat. 792; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A- 573; Nov. 2, 2002, 116 Stat. 1758.)
35 U.S.C. § 3. Officers and employees.
(a) UNDER SECRETARY AND DIRECTOR—(1) IN GENERAL- The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce
for Intellectual Property and Director of the United States Patent and Trademark Office (in this title referred to as the “Director”), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law.
(2) DUTIES—
(A) IN GENERAL—The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner.
(B) CONSULTING WITH THE PUBLIC ADVISORY COMMITTEES—The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be.
(3) OATH—The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.
(4) REMOVAL—The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.
(b) OFFICERS AND EMPLOYEES OF THE OFFICE—
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR—The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
(2) COMMISSIONERS—
(A) APPOINTMENT AND DUTIES—The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory.
(B) SALARY AND PERFORMANCE AGREEMENT—The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior
Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners’ annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may be made to the Commissioners only to the extent that such payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3.
(C) REMOVAL- The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress.
(3) OTHER OFFICERS AND EMPLOYEES—The Director shall—
(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and
(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.
The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation.
(4) TRAINING OF EXAMINERS—The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners.
(5) NATIONAL SECURITY POSITIONS—The Director, in consultation with the Director of the Office of Personnel Management, shall maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security.
(c) CONTINUED APPLICABILITY OF TITLE 5—Officers and employees of the Office shall be subject to the provisions of title 5, relating to Federal employees.
(d) ADOPTION OF EXISTING LABOR AGREEMENTS—The Office shall adopt all labor agreements which are in effect, as of the day before the effective date of the Patent and Trademark Office Efficiency Act, with respect to such Office (as then in effect).
(e) CARRYOVER OF PERSONNEL—
(1) FROM PTO- Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on the day
before such effective date shall become officers and employees of the Office, without a break in service.
(2) OTHER PERSONNEL- Any individual who, on the day before the effective date of the Patent and Trademark Office Efficiency Act, is an officer or employee of the Department of Commerce (other than an officer or employee under paragraph (1)) shall be transferred to the Office, as necessary to carry out the purposes of this Act, if—
(A) such individual serves in a position for which a major function is the performance of work reimbursed by the Patent and Trademark Office, as determined by the Secretary of Commerce;
(B) such individual serves in a position that performed work in support of the Patent and Trademark Office during at least half of the incumbent’s work time, as determined by the Secretary of Commerce; or
(C) such transfer would be in the interest of the Office, as determined by the Secretary of Commerce in consultation with the Director.
Any transfer under this paragraph shall be effective as of the same effective date as referred to in paragraph (1), and shall be made without a break in service.
(f) TRANSITION PROVISIONS—
(1) INTERIM APPOINTMENT OF DIRECTOR—On or after the effective date of the Patent and Trademark Office Efficiency Act, the President shall appoint an individual to serve as the Director until the date on which a Director qualifies under subsection (a). The President shall not make more than one such appointment under this subsection.
(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS—(A) The individual serving as the Assistant Commissioner for Patents on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Patents until the date on which a Commissioner for Patents is appointed under subsection (b).
(B) The individual serving as the Assistant Commissioner for Trademarks on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Trademarks until the date on which a Commissioner for Trademarks is appointed under subsection (b).
(July 19, 1952, ch. 950, § 1, 66 Stat. 792; Sept. 6, 1958, 72 Stat. 1793; Sept. 23, 1959, 73 Stat. 650; Aug. 14, 1964, 78 Stat. 425; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1956; Aug. 27, 1982, 96 Stat. 319; Oct. 15, 1982, 96 Stat. 1760; Nov. 8, 1984, 98 Stat. 3392; Oct. 28, 1998, 112 Stat. 2860; Aug. 5, 1999, 113 Stat. 221; Nov. 29, 1999, 113 Stat. 1501A-575; Nov. 2, 2002, 116 Stat. 1904.)
35 U.S.C. § 4. Restrictions on officers and employees as to interest in patents
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in a patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
(July 19, 1952, ch. 950, § 1, 66 Stat. 793; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1949.)
35 U.S.C. § 5. Patent and Trademark Office Public Advisory Committees.
(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES—
(1) APPOINTMENT—The United States Patent and Trademark Office shall have a Patent Public Advisory Committee and a Trademark Public Advisory Committee, each of which shall have nine voting members who shall be appointed by the Secretary of Commerce and serve at the pleasure of the Secretary of Commerce. Members of each Public Advisory Committee shall be appointed for a term of 3 years, except that of the members first appointed, three shall be appointed for a term of 1 year, and three shall be appointed for a term of 2 years. In making appointments to each Committee, the Secretary of Commerce shall consider the risk of loss of competitive advantage in international commerce or other harm to United States companies as a result of such appointments.
(2) CHAIR—The Secretary shall designate a chair of each Advisory Committee, whose term as chair shall be for 3 years.
(3) TIMING OF APPOINTMENTS—Initial appointments to each Advisory Committee shall be made within 3 months after the effective date of the Patent and Trademark Office Efficiency Act. Vacancies shall be filled within 3 months after they occur.
(b) BASIS FOR APPOINTMENTS- Members of each Advisory Committee—
(1) shall be citizens of the United States who shall be chosen so as to represent the interests of diverse users of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee;
(2) shall include members who represent small and large entity applicants located in the United States in proportion to the number of applications filed by such applicants, but in no case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and such members shall include at least one independent inventor; and
(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation.
In addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed.
(c) MEETINGS—Each Advisory Committee shall meet at the call of the chair to consider an agenda set by the chair.
(d) DUTIES—Each Advisory Committee shall—
(1) review the policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to Trademarks, in the case of the Trademark Public Advisory Committee, and advise the Director on these matters;
(2) within 60 days after the end of each fiscal year—
(A) prepare an annual report on the matters referred to in paragraph (1);
(B) transmit the report to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives; and
(C) publish the report in the Official Gazette of the United States Patent and Trademark Office.
(e) COMPENSATION—Each member of each Advisory Committee shall be compensated for each day (including travel time) during which such member is attending meetings or conferences of that Advisory Committee or otherwise engaged in the business of that Advisory Committee, at the rate which is the daily equivalent of the annual rate of basic pay in effect for level III of the Executive Schedule under section 5314 of title 5. While away from such member’s home or regular place of business such member shall be allowed travel expenses, including per diem in lieu of subsistence, as authorized by section 5703 of title 5.
(f) ACCESS TO INFORMATION—Members of each Advisory Committee shall be provided access to records and information in the United States Patent and Trademark Office, except for personnel or other privileged information and information concerning patent applications required to be kept in confidence by section 122.
(g) APPLICABILITY OF CERTAIN ETHICS LAWS—Members of each Advisory Committee shall be special Government employees within the meaning of section 202 of title 18.
(h) INAPPLICABILITY OF FEDERAL ADVISORY COMMITTEE ACT—The Federal Advisory Committee Act (5 U.S.C. App.) shall not apply to each Advisory Committee.
(i) OPEN MEETINGS—The meetings of each Advisory Committee shall be open to the public, except that each Advisory Committee may by majority vote meet in executive session when considering personnel, privileged, or other confidential information.
(j) INAPPLICABILITY OF PATENT PROHIBITION—Section 4 shall not apply to voting members of the Advisory Committees.
(Added Nov. 29, 1999, 113 Stat. 1501A-578; amended Nov. 2, 2002, 116 Stat. 1904.)
35 U.S.C. § 6. Board of Patent Appeals and Interferences. (35 U.S.C. § 6 pertains to patents.)
35 U.S.C. § 7. Library.
The Director shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent and Trademark Office to aid the officers in the discharge of their duties. (July 19, 1952, ch. 950, § 1, 66 Stat. 793; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-580.)
35 U.S.C. § 8. Classification of patents. (35 U.S.C. § 8 pertains to patents.)
35 U.S.C. § 9. Certified copies of records.
The Director may furnish certified copies of specifications and drawings of patents issued by the Patent and Trademark Office, and of other records available either to the public or to the person applying therefor.
(July 19, 1952, ch. 950, 66 Stat. 794; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-580.)
35 U.S.C. § 10. Publications.
(a) The Director may publish in printed, typewritten, or electronic form, the following:
1. Patents, including specifications and drawings, together with copies of the same. The Patent and Trademark Office may print the headings of the drawings for patents for the purpose of photolithography.
2. Certificates of trademark registrations, including statements and drawings, together with copies of the same.
3. The Official Gazette of the United States Patent and Trademark Office.
4. Annual indexes of patents and patentees, and of trademarks and registrants.
5. Annual volumes of decisions in patent and trademark cases.
6. Pamphlet copies of the patent laws and rules of practice, laws and rules relating to trademarks, and circulars or other publications relating to the business of the Office.
(b) The Director may exchange any of the publications specified in items 3, 4, 5, and 6 of subsection (a) of this section for publications desirable for use of the Patent and Trademark Office.
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-580.)
35 U.S.C. § 11. Exchange of copies of patents. (35 U.S.C. § 11 pertains to patents.)
35 U.S.C. § 12. Copies of patents and applications for public libraries. (35 U.S.C. § 12 pertains to patents.)
35 U.S.C. § 13. Annual report to Congress.
The Director shall report to the Congress, not later than 180 days after the end of each fiscal year, the moneys received and expended by the Office, the purposes for which the moneys were spent, the quality and quantity of the work of the Office, the nature of training provided to examiners, the evaluation of the Commissioner of Patents and the Commissioner of Trademarks by the Secretary of Commerce, the compensation of the Commissioners, and other information relating to the Office.
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Nov. 29, 1999, 113 Stat. 1501A-581.)
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
35 U.S.C. § 21. Filing date and day for taking action.
(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
(b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a federal holiday within the District of
Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day.
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 321; Nov. 29, 1999, 113 Stat. 1501A-582.)
Note—For holidays, see 5 U.S.C. § 6103 and District of Columbia Code, sec. 28-2701:
5 U.S.C. § 6103. Holidays.
(a) The following are legal public holidays:
New Year’s Day, January 1. Birthday of Martin Luther King, Jr., the third Monday in January. Washington’s Birthday, the third Monday in February. Memorial Day, the last Monday in May. Independence Day, July 4. Labor Day, the first Monday in September. Columbus Day, the second Monday in October. Veterans Day, November 11. Thanksgiving Day, the fourth Thursday in November. Christmas Day, December 25.
(b) For the purpose of statutes relating to pay and leave of employees, with respect to a legal public holiday and any other day declared to be a holiday by Federal statute or Executive order, the following rules apply:
(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal public holiday for—
(A) Employees whose basic workweek is Monday through Friday; and
(B) the purpose of section 6309 (Leave of Absence, etc.) of this title.
(2) Instead of a holiday that occurs on a regular weekly nonworkday of an employee whose basic workweek is other than Monday through Friday, except the regular weekly nonworkday administratively scheduled for the employee instead of Sunday, the workday immediately before that regular weekly nonworkday is a legal public holiday for the employee.
This subsection, except subparagraph (B) of paragraph (1), does not apply to an employee whose basic workweek is Monday through Saturday.
(c) January 20 of each fourth year after 1965, Inauguration Day, is a legal public holiday for the purpose of statutes relating to pay and leave of employees as defined by section 2105 of this title and individuals employed by the government of the District of Columbia employed in the District of Columbia, Montgomery and Prince Georges Counties in Maryland, Arlington and Fairfax Counties in Virginia, and the cities of Alexandria and Falls Church in Virginia. When January 20 of any fourth year after 1965 falls on Sunday, the next succeeding day selected for the public observance of the inauguration of the President is a legal public holiday for the purpose of this subsection.
(Amended June 28, 1968, 82 Stat. 250; Sept. 18, 1975, 89 Stat. 479; Nov. 2, 1983, 97 Stat. 917.)
District of Columbia Code—Section 28-2701.
Holidays designated—Time for performing acts extended. The following days in each year, namely, New Year’s Day, January 1; Dr. Martin Luther King, Jr.’s Birthday, the third Monday in January; Washington’s Birthday, the third Monday in February; Memorial Day, the last Monday in May; Independence Day, July 4; Labor Day, the first Monday in September; Columbus Day, the second Monday in October; Veteran’s Day, November 11; Thanksgiving Day, the fourth Thursday in November; Christmas Day, December 25; every Saturday, after twelve o’clock noon; any day appointed by the President of the United States as a day of public feasting or thanksgiving; and the day of the inauguration of the President, in every fourth year, are holidays in the District for all purposes. When a day set apart as a legal holiday, other than the day of the inauguration of a President, falls on a Saturday, the next preceding day is a holiday. When a day set apart as a legal holiday falls on a Sunday, the next succeeding day is a holiday. In such cases, when a Sunday and a holiday or holidays fall on successive days, all commercial papers falling due on any of these days shall, for all purposes of presenting for payment or acceptance, be deemed to mature and be presentable for payment or acceptance on the next secular business day succeeding. Every Saturday is a holiday in the District for (1) every bank or banking institution having an office or banking house located within the District, (2) every Federal savings and loan association whose main office is in the District, and (3) every building association, building and loan association, or savings and loan association, incorporated or unincorporated, organized and operating under the laws of and having an office located within the District. An act which would otherwise be required, authorized, or permitted to be performed on Saturday in the District at the office or banking house of, or by, any such bank or bank institution, Federal savings and loan association, building association, building and loan association, or savings and loan association, if Saturday were not a holiday, shall or may be so performed on the next succeeding business day, and liability or loss of rights of any kind may not result from such delay.
Note.—As to the observance of holidays which fall on Saturday, see 5 U.S.C. § 6103, which provides:
“(b)(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal public holiday....”
35 U.S.C. § 22. Printing of papers filed.
The Director may require papers filed in the Patent and Trademark Office to be printed, typewritten, or on an electronic medium.
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-582.)
35 U.S.C. § 23. Testimony in Patent and Trademark Office cases.
The Director may establish rules for taking affidavits and depositions required in cases in the Patent and Trademark Office. Any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where he resides, may take such affidavits and depositions.
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-582.)
35 U.S.C. § 24. Subpoenas, witnesses.
The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party
thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.
A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949.)
35 U.S.C. § 25. Declaration in lieu of oath.
(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. section
1001).
(Added Mar. 26, 1964, 78 Stat. 171; amended Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-582.)
Note—18 U.S.C. § 1001 provides: “Whoever in any matter within the jurisdiction of any department or agency of the United States knowingly and willfully falsifies, conceals or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statements or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.” (June 25, 1948, 62 Stat. 749.)
35 U.S.C. § 26. Effect of defective execution.
Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.
(Added Mar. 26, 1964, 78 Stat. 171; amended Jan. 2, 1975, 88 Stat. 1949.)
CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
35 U.S.C. § 31. [Repealed]
(Nov. 29, 1999, 113 Stat. 1501A-580.)
35 U.S.C. § 32. Suspension or exclusion from practice.
The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The Director shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Director upon the petition of the person so refused recognition or so suspended or excluded. (July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-581.)
35 U.S.C. § 33. Unauthorized representation as practitioner.
Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense.
(July 19, 1952, ch. 950, § 1, 66 Stat. 796; Jan. 2, 1975, 88 Stat. 1949.)
CHAPTER 4—PATENT FEES, FUNDING, SEARCH SYSTEMS
35 U.S.C. § 41(i). Patent and trademark search systems.
(i)(1) The Director shall maintain, for use by the public, paper, microform, or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such collections, or for the use of the public patent or trademark search rooms or libraries.
(2) The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems.
(3) The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the systems for purposes of education and training. The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest.
(4) The Director shall submit to the Congress an annual report on the automated search systems of the Patent and Trademark Office and the access by the public to such systems. The Director shall also publish such report in the Federal Register. The Director shall provide an opportunity for the submission of comments by interested persons on each such report.
(Added Pub. L. 102-204, § 5(d)(1), 105 Stat. 1637, Dec. 10, 1991)
35 U.S.C. § 41 note. Adjustment of trademark fees.
(a) FEE FOR FILING APPLICATION. During fiscal years 2005 and 2006, under such conditions as may be prescribed by the Director, the fee under section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for: (1) the filing of a paper application for the registration of a trademark shall be $375; (2) the filing of an electronic application shall be $325; and (3) the filing of an electronic application meeting certain additional requirements prescribed by the Director shall be $275. During fiscal years 2005 and 2006, the provisions of the second and third sentences of section 31(a) of the Trademark Act of 1946 shall apply to the fees established under this section.
(b) REFERENCE TO TRADEMARK ACT OF 1946. For purposes of this section, the “Trademark Act of 1946” refers to 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.”
(Pub. L. 108-447, Sec. 2, Div. B, Title VIII, Sec. 802, 118 Stat. 2809, 2929, Dec. 8, 2004.)
35 U.S.C. § 42. Patent and Trademark Office funding.
(a) All fees for services performed by or materials furnished by the Patent and Trademark Office will be payable to the Director.
(b) All fees paid to the Director and all appropriations for defraying the costs of the activities of the Patent and Trademark Office will be credited to the Patent and Trademark Office Appropriation Account in the Treasury of the United States.
(c) To the extent and in the amounts provided in advance in appropriations Acts, fees authorized in this title or any other Act to be charged or established by the Director shall be collected by and shall be available to the Director to carry out the activities of the Patent and Trademark Office. All fees available to the Director under section 31 of the Trademark Act of 1946 shall be used only for the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative costs of the Patent and Trademark Office.
(d) The Director may refund any fee paid by mistake or any amount paid in excess of that required.
(e) The Secretary of Commerce shall, on the day each year on which the President submits the annual budget to the Congress, provide to the Committees on the Judiciary of the Senate and the House of Representatives—
(1) a list of patent and trademark fee collections by the Patent and Trademark Office during the preceding fiscal year;
(2) a list of activities of the Patent and Trademark Office during the preceding fiscal year which were supported by patent fee expenditures, trademark fee expenditures, and appropriations;
(3) budget plans for significant programs, projects, and activities of the Office, including out-year funding estimates;
(4) any proposed disposition of surplus fees by the Office; and
(5) such other information as the committees consider necessary.
(July 19, 1952, c. 950, 66 Stat. 796; Nov. 14, 1975, Pub. L. 94-131, § 4, 89 Stat. 690; Dec. 12, 1980, Pub. L. 96-517, § 3, 94 Stat. 3018; Aug. 27, 1982, Pub. L. 97-247, § 3(g), 96 Stat. 319; Sept. 13, 1982, Pub. L. 97-258, § 3(i), 96 Stat. 1065; Nov. 10, 1998, Pub. L. 105-358, 112 Stat. 3272.)
SOME SECTIONS OF THE UNITED STATES CODE WHICH RELATE TO TRADEMARKS
(This is a partial listing of sections relating to trademarks.)
• 7 U.S.C. § 136, The Federal Insecticide, Fungicide and Rodenticide Act, relating to the requirements for labeling of economic poisons. • 7 U.S.C. §§ 1551-1610, The Federal Seed Act, relating to requirements for labeling of seeds in interstate commerce. • 15 U.S.C. § 1, Sherman Act (Sec. 1), as amended by Miller-Tydings Act, relating to restraint of trade. • 15 U.S.C. § 45, relating to unfair methods of competition. • 15 U.S.C. § 52, relating to false advertisements. • 15 U.S.C. § 68, The Wool Products Labeling Act, relating to the labeling of wool products. • 15 U.S.C. § 69, The Fur Products Labeling Act, relating to the labeling of fur and fur products. • 15 U.S.C. § 70, the Textile Fiber Products Identification Act, relating to the use of trademarks and names in the advertising or labeling of textile fiber products. • 15 U.S.C. § 297, relating to use of marks, trade names, words and labeling in connection with the importation, exportation or carriage in interstate commerce of merchandise made of gold or silver or their alloys. • 15 U.S.C. §§ 1261-1273, relating to the labeling of hazardous substances. • 15 U.S.C. § 1511, relating to jurisdiction of Department of Commerce over Patent and Trademark Office. • 15 U.S.C. §§ 5401 et seq., relating to the recordation of insignia of manufacturers and private label distributors to ensure the traceability of a fastener to its manufacturer or private label distributor. (See notice at 1192 TMOG 19 (Nov. 5, 1996)). • 18 U.S.C. § 701, relating to use of insignia of departments and independent offices of the United States. • 18 U.S.C. § 704, relating to decorations or medals authorized by Congress for the armed forces of the United States. • 18 U.S.C. § 705, relating to the unauthorized use on merchandise of any badge, medal, emblem, or other insignia or any colorable imitation thereof of any veteran’s organization incorporated by enactment of Congress or of any organization formally recognized by any such veteran’s organization as an auxiliary thereof. • 18 U.S.C. § 709, relating to false advertising or misuse of names to indicate Federal agency. Also, prohibitions against using certain terms and initials within the financial, insurance, agricultural, housing, protection, investigatory and other fields. • 18 U.S.C. § 712, relating to misuse by collecting agencies or private detective agencies of names, emblems, and insignia to indicate Federal agency. • 18 U.S.C. § 713, relating to the use of likenesses of the great seal of the United States, and of the seals of the President and Vice President. • 18 U.S.C. § 1001, relating to statements, representations, writings or documents made to any department or agency of the United States. • 18 U.S.C. § 1158, relating to counterfeiting or imitating Government trademarks for Indian products. • 18 U.S.C. § 2320, relating to criminal penalties for trafficking in counterfeit goods and services. • 19 U.S.C. § 1337(a), Tariff Act of 1930, relating to unfair practices in import trade.
19 U.S.C. § 1526(a), Tariff Act of 1930, barring importation into the United States of merchandise of foreign manufacture bearing a trademark registered in the Patent and Trademark Office by a person domiciled in the United States if copy of the registration
certificate has been filed with the Secretary of the Treasury unless written consent of the trademark owner has been secured.
• 19 U.S.C. § 2111 et seq., providing authority for trade agreements and also annual reports to Congress on barriers to trade include the treatment of intellectual property rights among acts, policies, and practices that constitute barriers to trade. • 19 U.S.C. § 2411, relating to foreign countries’ provision for adequate and effective protection of the intellectual property rights of U.S. nationals. • 19 U.S.C. § 2462(c), relating to the consideration of intellectual property rights as a factor for foreign countries to receive benefits under the Generalized System of Preferences (GSP). • 21 U.S.C. §§ 603-623, The Meat Inspecting Act, relating to the inspection and labeling of meat and products. • 21 U.S.C. §§ 301, 321-392, The Federal Food, Drug, and Cosmetic Act, relating to the requirements for labeling of food, drugs, and cosmetics; avoiding trademarks in establishing official names. • 21 U.S.C. § 457, Poultry Products Inspection Act, relating to requirements for labeling of poultry products in interstate commerce. • 27 U.S.C. §§ 201-219a, The Federal Alcohol Administration Act, relating to certificates of label approval of alcoholic beverages. • 28 U.S.C. § 1254, relating to review of cases by the Supreme Court. • 28 U.S.C. § 1295, relating to jurisdiction of United States Court of Appeals for the Federal Circuit. • 28 U.S.C. § 1338, relating to jurisdiction of District Courts in trademark suits. • 29 U.S.C. §§ 655, 657, 665, Williams-Steiger Occupational Safety and Health Act of 1970, relating to letters OSHA. • 42 U.S.C. § 1320b-10, relating to misuse of Social Security or Medicare names, symbols, emblems. • 48 U.S.C. § 734, Puerto Rico, relating to statutes applicable to. • 48 U.S.C. §§ 1405(q), 1574(c) and 1643, Virgin Islands, relating to statutes applicable to, and to the non-applicability of certain provisions of the Trademark Act to the Virgin Islands. • 48 U.S.C. § 1421(c), Guam, relating to statutes applicable to (see also Public Law 87-845, October 18, 1962, 4-CZC-471, Canal Zone Code, relating to the application of U.S. patent, trademark and copyright laws in the Canal Zone.) • 50 U.S.C. Appendix 43, Trading with the Enemy Act, amending, providing for disposition of vested trademarks.
District of Columbia Code
Section 22-3401, relating to use of District of Columbia and other related names and initials used in connection with investigatory or collection services. (Oct. 16, 1962, 76 Stat. 1071)