WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/USA/I/3 
20 February 2004 
 (04-0732) 
Council for Trade-Related Aspects of 
Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
  The present document reproduces the text
1 of the consolidated version of Title 15 of the 
United States Code, Trademark Law, as amended through 13 December 2003, notified by the United 
States under Article 63.2 of the Agreement in co mmunications dated 23 January and 12 February 
2004. 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
  
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
  Le présent document contient le texte
1 de la version mise à jour du Titre 15 du Code des 
États-Unis, Loi sur les marques de fabrique ou de commerce, tel qu'il a été modifié au 13 décembre 2003, notifié par les États-Unis au titre de l'article 63:2 de l'Accord dans des 
communications datées du 23 janvier et du 12 février 2004.  
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 En el presente documento se reproduce el texto
1 de la versión consolidada del Título 15 del 
Código de los Estados Unidos, Ley de Marcas de  Fábrica o de Comercio modificado el 13 de 
diciembre de 2003, notificado por los Estados Uni dos en virtud del párra fo 2 del artículo 63 del 
Acuerdo en comunicaciones de fecha 23 de enero y 12 de febrero de 2004. 
 
 
                                                      
 1 In English only./En anglais seulement./En inglés solamente. IP/N/1/USA/I/3 
Page 2  
 
TITLE 15 UNITED STATES CODE 
CHAPTER 22 – TRADEMARKS 
SUBCHAPTER I – THE PRINCIPAL REGISTER 
Sec. 1051. Registration of trademarks 
Sec. 1052. Trademarks registrable on the pr incipal register; conc urrent registration 
Sec. 1053. Service marks registrable 
Sec. 1054. Collective marks and ce rtification marks registrable 
Sec. 1055. Use by related companies affecting validity and registration 
Sec. 1056. Disclaimer of  unregistrable matter 
Sec. 1057. Certificates of registration 
Sec. 1058. Duration 
Sec. 1059. Renewal of registration 
Sec. 1060. Assignment Sec. 1061. Execution of acknow ledgments and verifications 
Sec. 1062. Publication 
Sec. 1063. Opposition  to registration 
Sec. 1064. Cancelatio n of registration 
Sec. 1065. Incontestability of right to  use mark under certain conditions 
Sec. 1066. Interference; de claration by Director 
Sec. 1067. Interference; opposi tion, and proceedings for co ncurrent use registration 
or for cancellation; notice; Tr ademark Trial and Appeal Board 
Sec. 1068. Action of Director in interf erence, opposition, and proceedings for 
concurrent use registration or for cancellation 
Sec. 1069. Application of equitable prin ciples in inter partes proceedings 
Sec. 1070. Appeals to Trademark Trial and A ppeal Board from deci sions of examiners 
Sec. 1071. Appeal to courts 
Sec. 1072. Registration as  constructive notice of claim of ownership 
 
§ 1051.  Registration of trademarks  
 
(a) (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby es tablished 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 spec ification 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 comme rce, the goods in co nnection with which the mark is used, 
and a drawing of the mark. 
   (3) The statement shall be verifi ed by the applicant and specify that-- 
      (A) the person making the verification be lieves that he or she, or the juristic person 
in whose behalf he or she makes the verificati on, 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 kn owledge and belief, no ot her person has the right 
to use such mark in commerce either in th e identical form thereof or in such near 
resemblance thereto as to be likely, when us ed on or in connection with the goods of 
such other person, to cause confusion, or to ca use mistake, or to dece ive, except that, in 
the case of every application claiming concurrent use, the applicant shall-- 
         (i) state exceptions to the claim of exclusive use; and  IP/N/1/USA/I/3 
 Page 3 
 
 
         (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 sh all promulgate rules prescrib ing the requirements for the 
application and for obtaining a filing date herein. 
  
(b) (1) A person who has a bona fide intent ion, under circumstan ces showing the good 
faith of such person, to use a trademark in  commerce may request registration of its 
trademark on the principal register hereby es tablished 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 spec ification 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 veri fied by the applicant and specify-- 
      (A) that the person making the verifica tion believes that he or  she, or the juristic 
person in whose behalf he or she makes the ve rification, 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 comme rce either in the identical fo rm thereof or in such near 
resemblance thereto as to be likely, when us ed 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 44 [15 USCS § 1126], no mark shall 
be registered until the applicant has met the requirements of subsec tions (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 sh all promulgate rules prescrib ing the requirements for the 
application and for obtaining a filing date herein. 
  
(c) Amendment of application under subsection (b) to conf orm to requirements under 
subsection (a). At any time during examination of an application filed under subsection 
(b), an applicant who has made use of the ma rk in commerce may claim the benefits of 
such use for purposes of this Act, by amendi ng his or her application to bring it into 
conformity with the requirem ents of subsection (a). 
  (d) Verified statement that tr ademark is used in commerce. 
   (1) Within six months after the date on wh ich the notice of allowance with respect to a 
mark is issued under section 13(b)(2) [1 5 USCS § 1063(b)(2)] 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 fa csimiles of the mark as used in commerce 
as may be required by the Director and pa yment 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 comme rce 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 fo r which the mark is entitled to registration, 
and notice of registra tion shall be published in the Official Gazette of the Patent and 
Trademark Office. Such examination may includ e an examination of the factors set forth IP/N/1/USA/I/3 
Page 4  
 
in subsections (a) through (e) of section 2 [1 5 USCS § 1052]. 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 sh owing 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 mont hs, pursuant to written request of the 
applicant made before the expi ration of the last extension granted under this paragraph. 
Any request for an extension under this para graph 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 ex tension 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 app licant who files a stat ement of use of the 
acceptance or refusal thereof an d, if the statement of use is  refused, the reasons for the 
refusal. An applicant may am end 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 re sult 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 Pa tent 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. Su ch notices or process may be served upon 
the person so designated by le aving with that person or ma iling 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 g iven 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. 
 
§ 1052.  Trademarks registrable on the principal register; concurrent 
registration  
 
No trademark by which the goods of the appl icant may be distinguished from the goods 
of others shall be refused regi stration on the principal regist er on account of its nature 
unless it-- 
  
(a) Consists of or comprises immoral, dece ptive, 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 connecti on with wines or spirit s, 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 2(9) of the Uruguay Round Agreements Act [19 USCS § 3501(9)]) 
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  IP/N/1/USA/I/3 
 Page 5 
 
 
thereof. 
  
(c) Consists of or comprises a name, portrait, or signature identifying a particular living 
individual except by his wri tten 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 wi th which such marks are used, concurrent registrations may 
be issued to such persons when they have be come 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 Act; (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 Fe bruary 20, 1905, and registered after July 5, 
1947. Use prior to the filing date of any pendin g application or a regi stration shall not be 
required when the owner of su ch application or registration consents to the grant of a 
concurrent registration to the applicant. Conc urrent registrations ma y also be issued by 
the Director when a court of competent jurisdiction has fi nally determined that more 
than one person is entitled to use the same  or similar marks in commerce. In issuing 
concurrent registrations, the Di rector shall prescribe conditions and limitations as to the 
mode or place of use of the mark or the good s 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 re gistrable under section 4 [15 
USCS § 1054], (3) when used on or in conn ection 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 applic ant'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 comm erce, proof of substantially exclusive and 
continuous use thereof as a mark by the app licant in commerce for the five years before 
the date on which the claim of distinctiven ess is made. Nothing in this section shall 
prevent the registration of a ma rk which, when used on or in connection with the goods 
of the applicant, is primarily geographical ly deceptively misdescriptive of them, and 
which became distinctive of the applicant's goods in commerce before the date of the 
enactment of the North Amer ican Free Trade Agreement Im plementation Act [enacted 
Dec. 8, 1993]. 
  A mark which when used would cause dilution under section 43(c) [15 USCS §
 1125(c)] 
may be refused registra tion only pursuant to a proceed ing brought under section 13 [15 
USCS § 1063]. A registration for a mark wh ich when used would cause dilution under 
section 43(c) [15 USCS § 1125(c)] may be ca nceled pursuant to a proceeding brought 
under either section 14 [15 USCS § 1064] or section 24 [15 USCS § 1092]. IP/N/1/USA/I/3 
Page 6  
 
 
§ 1053.  Service marks registrable  
 
Subject to the provisions relating to the registration of trademarks, so far as they are 
applicable, service marks shall be registrabl e, 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. 
 
§ 1054.  Collective marks and certification marks registerable 
 
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 Act, in the same  manner and with the same effect as are 
trademarks, by persons, and nations, States, municipaliti es, and the like, exercising 
legitimate control over the use of the marks sought to be registered, even though not 
possessing an industrial or commercial establis hment, and when regist ered they shall be 
entitled to the protection prov ided herein 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 th e 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. 
 § 1055.  Use by related companies affecting validity and registration 
 
Where a registered mark or a mark sought to be registered is or may be used 
legitimately by related companie s, 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 regist rant or applicant, as the case may be. 
 
§ 1056.  Disclaimer of unregistrable matter 
 
(a) The Director may require the applicant to  disclaim an unregistrable component of a 
mark otherwise registrable. An  applicant may voluntarily di sclaim a component of a mark 
sought to be registered. 
  
(b) No disclaimer, including th ose made under subsec. (e) of  section 7 of this Act [15 
USCS § 1057(e)], shall prejudice or affect th e 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. 
 
§ 1057.  Certificates of registration 
 
(a) Issuance and form. Certificat es of registration of marks registered upon the principal 
register shall be issued in th e name of the United States of  America, under the seal of 
the Patent and Trademark Office, and shall be signed by the Di rector or have his 
signature placed thereon, and a record th ereof shall be kept in the Patent and 
Trademark Office. The registrati on shall reproduce the mark, and state that the mark is 
registered on the principal register under this  Act, 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, th e term thereof, the  IP/N/1/USA/I/3 
 Page 7 
 
 
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 Act shall be prima facie evidence of the validity of the 
registered mark and of the regi stration of the mark, of the registrant's ownership of the 
mark, and of the registrant's exclusive right to use the regi stered 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 consider ed constructive use. Contingent on the 
registration of a mark on the principal regist er provided by this Ac t, the filing of the 
application to register such mark shall constitute constructive use of the mark, 
conferring a right of pr iority, nationwide in ef fect, on or in connection with the goods or 
services specified in the registration agains t 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 regist er the mark on the basis of which he or she 
has acquired a right of priority, and timely files an application under section 44(d) [15 
USCS § 1126(d)] to register the mark which is pending or has resulted in registration of 
the mark. 
  (d) Issuance to assignee. A certificate of re gistration of a mark may be issued to the 
assignee or the applicant, but the assignment must first be recorded in the Patent and 
Trademark Office. In case of change of owne rship the Director sha ll, 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 unexpire d part of original period. 
  
(e) Surrender, cancellation, or amendment by registrant. Upon application of the 
registrant the Director may permit any regist ration to be surrendered for cancelation, 
and upon cancelation appropriate entry shall be made in the records of the Patent and 
Trademark Office. Upon application of the regi strant and payment of the prescribed fee, 
the Director for good cause may permit an y registration to be amended or to be 
disclaimed in part: Provided, Th at the amendment or disclaime r does not alter materially 
the character of the mark. Appr opriate 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 re cords as evidence. Copies of any records, 
books, papers, or drawings belonging to th e Patent and Trademark Office relating to 
marks, and copies of registra tions, 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, sh all 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 Tr ademark Office mistake. When ever a material mistake in 
a registration, incurred through the fault of the Patent and Trademark Office, is clearly 
disclosed by the records of th e Office a certificate stating the fact and nature of such 
mistake shall be issued withou t charge and recorded and a printed copy thereof shall be 
attached to each printed copy of the regist ration and such correct ed 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 Di rector a new certificate of registration may IP/N/1/USA/I/3 
Page 8  
 
be issued without charge. All certificates of  correction heretofore issued in accordance 
with the rules of the Patent and Trademark Office and the re gistrations 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. Wh enever 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 pa yment of the prescribed fee: 
Provided, That the correction does not involve such changes in the registration as to 
require republication of the mark. 
 
§ 1058.  Duration 
 
(a) Each registration shall remain in force fo r 10 years, except that the registration of 
any mark shall be canceled by the Director fo r failure to comply with the provisions of 
subsection (b) of this sectio n, upon the expiration of the following time periods, as 
applicable: 
   (1) For registrations issued pursuant to the provisions of this Act, at the end of 6 years 
following the date of registration. 
   (2) For registrations published under th e provisions of section 12(c) [15 USCS § 
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) During the 1-year period immediately preced ing the end of the applicable time period 
set forth in subsection (a), th e owner of the registration sh all 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 requ ired 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)  
   (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). 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 subm ission is required to be accompanied by a surcharge 
prescribed by the Director. 
  
(d) Special notice of the requirement for affidavits under this section shall be attached to 
each certificate of registrati on and notice of publication under section 12(c) [15 USCS § 
1062(c)]. 
  
(e) The Director shall notify any owner who fi les 1 of the affidavits required by this 
section of the Director's acceptance or refusa l thereof and, in the ca se of a refusal, the 
reasons therefor. 
  
(f) If the registrant is not domiciled in the United States, the regi strant may designate, 
by a document filed in the United States Patent and Trademark Office, the name and  IP/N/1/USA/I/3 
 Page 9 
 
 
address of a person resident in the United States on whom may be served notices or 
process in proceedings affecting the mark. Su ch notices or process may be served upon 
the person so designated by le aving with that person or ma iling 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 g iven 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. 
 
§ 1059.  Renewal of registration  
 
(a) Subject to the provisions of section 8 [15 USCS § 1058], 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 th e prescribed fee and the filing of a written 
application, in such form as may be prescrib ed by the Director. Such application may be 
made at any time within 1 ye ar before the end of each successive 10-year period for 
which the registration was issued  or renewed, or it may be ma de 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 applicatio n filed under this section is deficient, the 
deficiency may be corrected within the ti me prescribed after notification of the 
deficiency, upon payment of a surcharge prescribed therefor. 
  
(b) If the Director refuses to renew the re gistration, the Direct or shall notify the 
registrant of the Director's re fusal and the reasons therefor. 
  
(c) If the registrant is not domiciled in the United States the regi strant 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. Su ch notices or process may be served upon 
the person so designated by le aving with that person or ma iling 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 g iven 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. 
 
§ 1060.  Assignment 
 
(a) (1) A registered mark or a mark for whic h 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 1(b) [15 USCS § 1051(b)] shall be assignable prior to the filing of an 
amendment under section 1(c) [15 USCS § 1051(c)] to bring the application into 
conformity with section 1(a) [15 USCS § 1051(a )] or the filing of th e verified statement 
of use under section 1(d) [15 USCS § 1051(d)],  except for an assignment to a successor 
to the business of the applicant, or portion th ereof, to which the ma rk 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 na me 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 ex ecution of an assign ment, and when the IP/N/1/USA/I/3 
Page 10  
 
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 informat ion 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 Trad emark 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 design ate by a document filed in 
the United States Patent an d Trademark Office the name  and address of a person 
resident in the United States  on whom may be served noti ces or process in proceedings 
affecting the mark. Such notices or proc ess 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 f iled. 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, su ch notices or process may be served upon 
the Director. 
 
§ 1061.  Execution of acknowledgments and verifications 
 
Acknowledgments and verifications required hereunder may be made before any person 
within the United Stat es authorized by law to administ er oaths, or, when made in a 
foreign country, before any diplomatic or cons ular 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 is valid if they comply with the laws of the state or country where made. 
 
§ 1062.  Publication  
(a) Examination and publication. Upon the filing of an application for registration and 
payment of the prescribed fee, the Director sh all 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 accept ance of the statement of use required by 
section 1(d) of this Act [15 USCS § 1051(d)],  the Director shall cause the mark to be 
published in the Official Gazette of the Pate nt and Trademark Office; Provided, That in 
the case of an applicant claiming concurrent us e, or in the case of an application to be 
placed in an interference as  provided in section 16 of this Act [15 USCS § 1066], the 
mark if otherwise registrable, may be pub lished subject to the determination of the 
rights of the parties to such proceedings. 
  
(b) Refusal of registration; amendment of app lication; abandonment. If the applicant is 
found not entitled to registration, the examin er shall advise the applicant thereof and of 
the reasons therefor . The applicant shall have a period of six months in which to reply or 
amend his application, which shall then be reexamined. This procedure may be repeated 
until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or  appeal, whereupon the application shall be 
deemed to have been abandoned, unless it can be shown to the satisfaction of the 
Director that the delay in responding was unintentional, whereupon such time may be 
extended. 
   IP/N/1/USA/I/3 
 Page 11 
 
 
(c) Republication of marks registered under pr ior acts. A registrant of a mark registered 
under the provisions of the Act of March 3, 1881, or the Act of February 20, 1905, may, 
at any time prior to the expiration of the re gistration 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 Act for said mark. The Di rector 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 8 of this Act [1 5 USCS § 1058(b)]. Marks published under this 
subsection shall not be subjec t to the provisions of section 13 of this Act [15 USCS § 
1063]. 
 
§ 1063.  Opposition to registration  
 
(a) Any person who believes that he would be  damaged by the registration of a mark 
upon the principal register, including as a result of dilution under section 43(c) [15 USCS 
§ 1125(c)], may, upon payment of the prescribed  fee, file an opposi tion in the Patent 
and Trademark Office, stating the grounds therefor, within thirty days after the 
publication under subsection (a) of section 12  of this Act [15 USCS § 1062] of the mark 
sought to be registered. Upon written reques t 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 extensio n. The Director shall notify 
the applicant of each extensio n of the time for filing oppo sition. An oppo sition may be 
amended under such conditions as ma y 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 1(a) [15 USCS § 1051(a) ] or pursuant to section 44 [15 USCS § 
1126] shall be registered in the Patent and Tr ademark Office, a certif icate 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 1(b) [15 USCS § 1051(b)]. 
 
§ 1064.  Cancelation of registration  
 
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon 
payment of the prescribed fee, be filed as fo llows by any person who believes that he is 
or will be damaged, including as a result of dilution under section 43(c) [15 USCS § 
1125(c)], by the registration of a mark on the principal regist er established by this Act, 
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 Act. 
   (2) Within five years from the date of publication under section 12(c) hereof [15 USCS 
§ 1062(c)] 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 4 [15 USCS § 1054] or of subsection (a), (b), or (c) of section 2 [15 USCS § 
1052] for a registration under this Act, or co ntrary to similar prohibitory provisions of 
such prior Acts for a registrati on under such Acts, or if the registered mark is being used 
by, or with the permission of , the registrant so as to mi srepresent the source of the 
goods or services on or in connection with wh ich 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 registrati on for only those goods or services may be IP/N/1/USA/I/3 
Page 12  
 
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 12 of this Act [15 USCS § 1062]. 
   (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 ma rketing 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) discrim inately refuses to certif y 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 Act, and the pre scribed 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 th e certification program or of the goods or 
services meeting the certification standard s 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, manufa cture, or sell any of the certified goods or 
services to which its identical certification mark is applied. 
 
§ 1065.  Incontestability of right to use mark under certain conditions  
 
Except on a ground for which application to  cancel may be filed at any time under 
paragraphs (3) and (5) of section 14 of this  Act [15 USCS § 1064(3), (5)], 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 Act of 
such registered mark, the right of the regi strant 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 consecut ive years subsequent to the date of such 
registration and is still in use in commerce, shall be incontestable: Provided, That-- 
   (1) there has been no fina l decision adverse to registrant 's claim of ownership of such 
mark for such goods or services, or to registra nt's right to register the same or to keep 
the same on the register; and 
   (2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and 
   (3) an affidavit is filed with the Director within one year after the expiration of any 
such five-year period setting forth those goods or services stated in the registration on 
or in connection with which such mark has been in continuous use for such five 
consecutive years and is still in use in co mmerce, 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 th ereof, 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 sh all apply to a mark registered under the Act 
of March 3, 1881, or the Act of February 20, 1905, upon the f iling 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  IP/N/1/USA/I/3 
 Page 13 
 
 
subsection (c) of section 12 of this Act [15 USCS § 1062(c)]. 
  
The Director shall notify any registrant who files the above- prescribed affidavit of the 
filing thereof. 
 
§ 1066.  Interference; declaration by Director  
 
Upon petition showing extraordinary circumst ances, 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 re gistration 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 whic h has become incontestable. 
 § 1067.  Interference, opposition, and proceedings for concurrent use 
registration or for cancellation; notice; Trademark Trial and Appeal Board 
 
(a) In every case of interferen ce, opposition to re gistration, application to register as a 
lawful concurrent user, or application to canc el the registration of a mark, the Director 
shall give notice to all parties and shall di rect a Trademark Trial and Appeal Board to 
determine and decide the respec tive rights of  registration. 
  
(b) The Trademark Trial and Appeal Board sh all include the Director, the Commissioner 
for Patents, the Commissioner for Trademarks , and administrative trademark judges who 
are appointed by the Director. 
 
§ 1068.  Action of Director in interf erence, opposition, and proceedings for 
concurrent use registration or for cancellation 
 
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 ther ein, may otherwise rest rict or rectify with 
respect to the register the regi stration of a registered mark , may refuse to register any 
or all of several interfering marks, or may re gister the mark or marks for the person or 
persons entitled thereto, as th e rights of the parties hereund er 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 2 of this Act [15 USCS § 1052(d)]. However, no 
final judgment shall be entered in favor of an applicant under section 1(b) [15 USCS § 
1051(b)] before the mark is registered, if  such applicant cannot prevail without 
establishing constructive use pursuant to section 7(c) [15 USCS § 1057(c)].  
§ 1069.  Application of equitable principles in inter partes proceedings  
 
In all inter partes proceedings  equitable principles of lach es, estoppel, and acquiescence, 
where applicable may be considered and applied. 
 
 
§ 1070.  Appeals to Trademark Trial and Appeal Board from decisions of 
examiners  
 
An appeal may be taken to the Trademark Tria l and Appeal Board from any final decision 
of the examiner in charge of the registration of mark s upon the payment of the 
prescribed fee. IP/N/1/USA/I/3 
Page 14  
 
  
§ 1071.  Appeal to courts 
 
(a) Persons entitled to appeal ; United States Court of Appeals for the Federal Circuit; 
waiver of civil action; election of ci vil action by adverse party; procedure. 
   (1) An applicant for registration of a ma rk, party to an interfer ence proceeding, party 
to an opposition proceeding, pa rty 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 [15 USCS § 1058], or an  applicant for renewal, who is dissatisfied 
with the decision of the Direct or 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 sectio n: 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 noti ce 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 subsec tion (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 Un ited States Court of Appeals for the Federal 
Circuit, the appellant shall file in the Pate nt 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 pr escribes, but in no case less than 60 days 
after that date.    (3) The Director shall transmit to the Un ited 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 docu ments during pendency of the appeal. In an ex parte case, 
the Director shall submit to that court a brief explaining the grounds for the decision of 
the Patent and Trademark Office , addressing all the issues involved in the appeal. The 
court shall, before hearing an appeal, give notice of the time  and place of the hearing to 
the Director and the parties in the appeal. 
   (4) The United States Court of Appeals fo r the Federal Circuit sha ll review the decision 
from which the appeal is taken on the reco rd 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) [15 USCS § 1051(b)] before the mark is registered, if 
such applicant cannot prevail without establis hing constructive use pursuant to section 
7(c) [15 USCS § 1057(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 dissa tisfied 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 decisi on, 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 cancel ed, or such other matter as the issues in the 
proceeding require, as the facts in the ca se may appear. Such adjudication shall 
authorize the Director to take any nece ssary action, upon compliance with the 
requirements of law. However, no final judgment shall be entered in favor of an 
applicant under section 1(b) [15 USCS § 1051(b)] before the mark is registered, if such 
applicant cannot prevail without establishing constructive use pursuant to section 7(c)  IP/N/1/USA/I/3 
 Page 15 
 
 
[15 USCS § 1057(c)]. 
   (2) The Director shall not be made a pa rty 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 adve rse 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 br inging 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 ad mitted on motion of any party, upon such 
terms and conditions as to costs, expenses , and the further cro ss-examination of the 
witnesses as the court imposes, without preju dice to the right of any party to take 
further testimony. The testimon y and exhibits of the record in the Patent and Trademark 
Office, when admitted, shall have the same effe ct as if originally taken and produced in 
the suit. 
   (4) Where there is an adve rse party, such suit may be instituted against the party in 
interest as shown by the records of the Pate nt and Trademark Office at the time of the 
decision complained of, but any party in inte rest may become a party to the action. If 
there be adverse parties residing in a pluralit y of districts not embr aced 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 ju risdiction and may issu e summons against the 
adverse parties directed to the marshal of  any district in which any adverse party 
resides. Summons against adverse parties resi ding in foreign countries may be served 
by publication or otherwise as the court directs. 
 § 1072.  Registration as constructive notice of claim of ownership 
 
Registration of a mark on the principal register provided by this Act or under the Act of 
March 3, 1981, or the Act of February 20, 1905, shall be constructive notice of the 
registrant's claim of  ownership thereof. 
 
 
SUBCHAPTER II - THE SUPPLEMENTAL REGISTER  
 Sec. 1091. Supplemental register 
Sec. 1092. Publication; not subjec t to opposition; cancellation 
Sec. 1093. Registration certificates for mark s on principal and supplemental registers 
to be different 
Sec. 1094. Provisions of chapter applicable to registrations on supplemental register 
Sec. 1095. Registration on prin cipal register not precluded 
Sec. 1096. Registration on supplemental register not us ed to stop importations 
 
§ 1091.  Supplemental register  
(a) Marks registrable. In addi tion 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 gi ve effect to certain provisio ns of the convention for the 
protection of trademarks and commercial name s, made and signed in the city of Buenos 
Aires, in the Argentine Repub lic, 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 principa l register herein provided, except those 
declared to be unregistrable und er subsections (a), (b), (c), (d), and (e)(3) of section 2 
of this Act [15 USCS § 1052], which are in la wful use in commerce by the owner thereof, 
on or in connection with any goods or serv ices may be registered on the supplemental 
register upon the payment of the prescribed fee and compliance with the provisions of IP/N/1/USA/I/3 
Page 16  
 
subsections (a) and (e) of section 1 [15 US CS § 1051] 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 Act, that is  declared to be unregistrable under section 
2(e)(3) [15 USCS § 1052(e)(3)], if such mark  has been in lawful use in commerce by 
the owner thereof, on or in co nnection with any goods or se rvices, since before the date 
of the enactment of the No rth American Free Trade Agr eement Implementation Act 
[enacted Dec. 8, 1993]. 
  
(b) Application and proceedings for registrati on. Upon the filing of an application for 
registration on the supplement al register and payment of th e 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 re gistration shall be granted. If the applicant 
is found not entitled to registration the provisions of subsection (b) of section 12 of this Act [15 USCS § 1062] shall apply. 
  
(c) Nature of mark. For the purposes of re gistration on the su pplemental register, a 
mark may consist of any trade-mark [tradema rk], symbol, label, package, configuration 
of goods, name, word, slogan, phrase, surn ame, geographical name, numeral, device, 
any matter that as a whole is not functional, or any combinat ion of any of the foregoing, 
but such mark must be capable of distingu ishing the applicant's goods or services. 
 
§ 1092.  Publication; not subjec t to opposition; cancellation 
 
Marks for the supplemental register shall not be published for or be subject to 
opposition, but shall be publishe d on registration in the Official Gazette of the Patent and 
Trademark Office. Whenever any person believes that he is or will be damaged by the 
registration of a mark on this register, including as a result of dilution under section 
43(c) [15 USCS § 1125(c)], he may at any ti me, 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 sh all be canceled by the Director. However, 
no final judgment shall be entered in favor of an applicant under section 1(b) [15 USCS 
§ 1051(b)] before the mark is registered, if  such applicant cann ot prevail without 
establishing constructive use pursuant to section 7(c) [15 USCS § 1057(c)]. 
 
§ 1093.  Registration certificates for marks on principal and supplemental 
registers to be different 
 The certificates of registration  for marks registered on the supplemental register shall be 
conspicuously different from certificates i ssued for marks registered on the principal 
register. 
 
§ 1094.  Provisions of chapter applic able to registrations on supplemental 
register 
 
The provisions of this Act shall govern so fa r as applicable applications for registration 
and registrations on the supplem ental register as well as those on the principal register, 
but applications for and regist rations on the supplemental register shall not be subject to 
or receive the advantages of  sections 1(b), 2(e), 2(f), 7(b), 7(c), 12(a), 13 to 18, 
inclusive, 22, 33, and 42 of this Act [1 5 USCS §§ 1051(b), 1052(e), (f), 1057(b), (c), 
1062(a), 1063-1068, 1072, 1115, 1124]. 
  IP/N/1/USA/I/3 
 Page 17 
 
 
§ 1095.  Registration on principal register not precluded 
 
Registration of a mark on th e supplemental register, or un der the Act of March 19, 1920, 
shall not preclude registration by the registra nt on the principal register established by 
this Act. Registration of a mark on the su pplemental register shall not constitute an 
admission that the mark has no t acquired distinctiveness. 
 
§ 1096.  Registration on supplemental register not used to stop importations 
 
Registration on the supplement al register or under the Ac t of March 19, 1920, shall not 
be filed in the Department of the Treasu ry or be used to stop importations. 
 
SUBCHAPTER III - GENERAL PROVISIONS  
 
Sec. 1111. Notice of registra tion; display with mark; reco very of profits and damages 
                    in infringement suit 
Sec. 1112. Classifi cation of goods and services; regi stration in plur ality of classes 
Sec. 1113. Fees 
Sec. 1114. Remedies; infringeme nt; innocent infringement by  printers and publishers 
Sec. 1115. Registration on pr incipal register as evidence  of exclusive right to use 
                    mark; defenses 
Sec. 1116. Injunc tive relief 
Sec. 1117. Recovery for violatio n of rights; profits, damages and costs; attorney fees; 
                    treble damages 
Sec. 1118. Destruction of  infringing articles 
Sec. 1119. Power of court over registration 
Sec. 1120. Civil liability for fals e or fraudulent registration 
Sec. 1121. Jurisdiction of Fede ral courts; State and local requirements that registered  
                     trademarks  be altered or displaye d differently; prohibition 
Sec. 1121a. [Transferred] 
Sec. 1122. Liability of States, instrument alities of States, and State officials 
Sec. 1123. Rules and regulation s for conduct of proceedings in Patent and Trademark  
                    Office 
Sec. 1124. Importation of goods bearing infringing marks or names forbidden 
Sec. 1125. False designations of orig in and false descriptions forbidden 
Sec. 1126. International conventions 
Sec. 1127. Construction  and definitions; intent of chapter 
Sec. 1128. National Intellec tual Property Law Enforc ement Coordination Council 
Sec. 1129. Cyberpiracy prot ection for individuals 
Sec. 1130-1150 [Reserved] 
 
§ 1111.  Notice of registration; display with mark; recovery of profits and 
damages in infringement suit 
 
Notwithstanding the provisions of section 22 hereof [15 USCS § 1072], a registrant of a 
mark registered in the Patent Office, may gi ve 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 (R); and in any 
suit for infringement under this Act by such a registrant failing to give such notice of 
registration, no profits and no damages shall be recovered under the provisions of this 
Act unless the defendant had actual notice of the registration. 
 
§ 1112.  Classification of goods and serv ices; registration in plurality of classes 
 
The Director may establish a classification of goods and services, for convenience of IP/N/1/USA/I/3 
Page 18  
 
Patent and Trademark Office ad ministration, 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 
and services upon 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 re gistration 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 th e Director may issue a single certificate of 
registration for such mark. 
 
§ 1113.  Fees 
 
(a) Applications; services; materials. The Dire ctor shall establish fees for the filing and 
processing of an application for the registrati on of a trademark or other mark and for all 
other services performed by and materials fu rnished 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 th e aggregate, any fluctuations 
during the preceding 12 months in the Cons umer Price Index, as determined by the 
Secretary of Labor. Changes of less than 1 percent may be ignored. No fee established 
under this section shall take effect until at least 30 days after notice of the fee has been 
published in the Federal Register and in the Official Gazette of the Patent and Trademark 
Office. 
  
(b) Waiver; Indian products. The Director may waive the payment of any fee for any 
service or material related to trademarks  or other marks in connection with an 
occasional request made by a department or  agency of the Government, or any officer 
thereof. The Indian Arts and Crafts Board will not be charged any fee to register 
Government trademarks of genuineness and qua lity for Indian products or for products 
of particular Indian tribes and groups. 
 
§ 1114.  Remedies; infringement; innocent infringment by printers and 
publishers 
 
(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 colo rably imitate a registered mark and apply such 
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, 
wrappers, receptacles or advertisements intend ed to be used in commerce upon or in 
connection with the sale, offe ring 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 regi strant for the remedies hereinafter provided. 
Under subsection (b) hereof, th e registrant shall not be enti tled 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 pe rson" 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 authoriz ation 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 author ization and consent of the  IP/N/1/USA/I/3 
 Page 19 
 
 
United States, and any State, and any such instrumentality, officer, or employee, shall 
be subject to the provisions of this Act in the same manner and to the same extent as 
any nongovernmental entity. 
  
(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a 
right infringed under this Act or to a person bringing an action under section 43(a) or (d) 
[15 USCS § 1125(a) or (d)] 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 esta blishes that he or she was an innocent 
infringer or innocent violator , the owner of the right infrin ged or person bringing the 
action under section 43(a) [15 USCS § 1125( a)] shall be entitled  as against such 
infringer or violator only to an in junction against future printing. 
   (B) Where the infringement or violation compla ined 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 de fined in section 2510(12) of ti tle 18, United States Code, 
the remedies of the owner of the right infr inged or person bringing the action under 
section 43(a) [15 USCS § 1125(a)] as agains t the publisher or distributor of such 
newspaper, magazine, or  other similar periodical or el ectronic 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 communi cations. The limitations of this subparagraph 
shall apply only to innocent infringers and innocent violators. 
   (C) Injunctive relief shall not be availabl e to the owner of the right infringed or person 
bringing the action under section 43(a) [15 USCS § 1125(a)] with resp ect to an issue of 
a newspaper, magazine, or ot her 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 de livery of such issue or transmission of 
such electronic communication after the regular time for su ch 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 busine ss practice, and not due to an y 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 de scribed 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 ac tion, regardless of whether the domain name 
is finally determined to in fringe 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 ot her registration authority has-- 
            (aa) not expeditiously deposite d with a court, in which an action has been filed 
regarding the disposition of the domain na me, 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 acti on, 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 registra tion, transferring, temporarily disa bling, or permanently canceling 
a domain name-- 
         (I) in compliance with a court order under section 43(d) [15 USCS § 1125(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. IP/N/1/USA/I/3 
Page 20  
 
      (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 registrati on or maintenance of the domain name. 
      (iv) If a registrar, re gistry, or other registration auth ority 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 clau se (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 Ac t. The court may grant injunctive relief to the 
domain name registrant, including the reactivati on 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 43(a) [15 USCS § 
1125(a)]; and 
      (ii) the term "violating matter" means matter that is the subject of a violation under 
section 43(a) [15 USCS § 1125(a)]. 
 § 1115.  Registration on principal register  as evidence of exclusive right to use 
mark; defenses 
 
(a) Evidentiary value; defenses. Any registra tion issued under the Act of March 3, 1881, 
or the Act of February 20, 1905, or of a ma rk registered on the principal register 
provided by this Act and owned by a party to  an action shall be admissible in evidence 
and shall be prima facie evidence of the va lidity of the register ed mark and of the 
registration of the mark, of the registra nt'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), which might 
have been asserted if such mark had not been registered. 
  
(b) Incontestability; defenses. To the extent that the right to use the registered mark 
has become incontestable under section 15 [1 5 USCS § 1065], the registration shall be 
conclusive evidence of the validity of the regi stered mark and of th e 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 ev idence shall relate to the 
exclusive right to use the mark on or in co nnection with the goods or services specified 
in the affidavit filed under the provisions of section 15 [15 USCS § 1065], or in the 
renewal application filed under the provisions of section 9 [15 USCS § 1059] if the goods 
or services specified in the renewal are fewe r in number, subject to any conditions or 
limitations in the registration or in such affidavit or renewa l application. Such conclusive 
evidence of the right to use th e registered mark shall be sub ject to proof of infringement 
as defined in section 32 [15 USCS § 1114] , 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 permi ssion of the registrant 
or a person in privity with the registrant, so  as to misrepresent the source of the goods  IP/N/1/USA/I/3 
 Page 21 
 
 
or services on or in connection with which the mark is used; or 
   (4) That the use of the name, term, or devi ce charged to be an infringement is a use, 
otherwise than as a mark, of the party's indi vidual 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 7( c) [15 USCS § 1057(c)], (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 12 of this Act [15 USCS § 1062(c)]: 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 12 
of this Act [15 USCS § 1062(c)] of the regi stered mark of the registrant, and not 
abandoned: Provided, however, That this defe nse 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 us ed to violate the antitrust laws of the United 
States; or 
   (8) That the mark is functional; or    (9) That equitable principles, includ ing laches, estoppel, and acquiescence, are 
applicable. 
 
§ 1116.  Injunctive relief 
 
(a) Jurisdiction; service. The several courts vest ed with jurisdiction of civil actions arising 
under this Act shall have power to grant injunc tions, 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 43 [15 USCS § 1125]. 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 th e 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 an d 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 Un ited States, may be se rved on the parties 
against whom such injunction is granted anyw here 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 whic h such injunction was granted, or by any 
other United States district court in whose jurisdiction the defendant may be found. 
  
(b) Transfer of certified copies of court papers . The said courts shall have jurisdiction to 
enforce said injunction, as 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 requir ed to do so by the court before which 
application to enforce said injunction is ma de, transfer without delay to said court a 
certified copy of all papers on file in his office upon which said injunction was granted.   
(c) Notice to Director. It sha ll be the duty of the clerks of  such courts within one month 
after the filing of any action, suit, or proc eeding involving a mark registered under the 
provisions of this Act to give notice thereof in writing to the Director setting forth in 
order so far as known the names and addre sses of the litigants and the designating IP/N/1/USA/I/3 
Page 22  
 
number or numbers of the registration or re gistrations upon which the action, suit, or 
proceeding has been brought, and in the event any other re gistration be subsequently 
included in the action, suit, or proceeding by  amendment, answer, or  other pleading, the 
clerk shall give like notice thereof to th e 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 th e Director on receipt of  such notice forthwith 
to endorse the same upon the f ile wrapper of the said registra tion or registrations and to 
incorporate the same as a part of th e contents of said file wrapper. 
  
(d) Civil actions arising out of  use of counterfeit marks. 
   (1) (A) In the case of a civil action arising under section 32(1)(a) of this Act (15 U.S.C. 
1114) [15 USCS § 1114(1)(a)] 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 g oods 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 
manufacturer, 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 manufactu re or producer was, at the time of the 
manufacture or production in question authorized to use th e 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 Stat es attorney for the ju dicial district in which such order is 
sought. Such attorney may participate in th e 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 ve rified complaint establishing facts sufficient to 
support the findings of fact and conclusi ons 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 pa yment of such damages as any person may 
be entitled to recover as a result of a wr ongful seizure or wrongful attempted seizure 
under this subsection; and 
      (B) the court finds that it cl early appears from specific facts that-- 
         (i) an order other than an ex pa rte seizure order is not adequate to achieve the 
purposes of section 32 of this Act (15 U.S.C. 1114); 
         (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;  IP/N/1/USA/I/3 
 Page 23 
 
 
         (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 agains t whom seizure would be ordered of granting 
the application; and 
         (vii) the person against whom se izure would be ordered, or persons acting in 
concert with such person, wo uld destroy, move, hide, or otherwise make such matter 
inaccessible to the court, if the applicant we re 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 acti on to protect the person against whom an 
order under this subsection is directed from publicity, by or at the behest of the plaintiff, 
about such order and any seizure under such order. 
   (7) Any materials seized under this subsection shall be taken into the custody of the 
court. The court shall enter an appropriate pr otective order with respect to discovery by 
the applicant of any records that have been seized. The protective order shall provide for 
appropriate procedures to assure that confid ential information cont ained in such records 
is not improperly disclosed to the applicant. 
   (8) An order under this subsection, toge ther 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 enfo rcement officer (such as a Un ited 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 ca rry out the seizure unde r the order. The court 
shall issue orders, when appropriate, to pr otect the defendant from undue damage from 
the disclosure of trade secrets or other confid ential information during the course of the 
seizure, including, when appr opriate, orders restricting th e 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 fo r another date or unless the party against 
whom such order is directed consents to anot her 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 conclusion s 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 un der 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 frustratio n of the purposes of such hearing. 
   (11) A person who suffers damage by reason of a wrongful seizure under this 
subsection has a cause of action against th e applicant for the order under which such 
seizure was made, and shall be entitled to recover such relief as may be appropriate, 
including damages for lost profits, cost of materials, loss of good will, and punitive 
damages in instances where the seizure was so ught in bad faith, and, unless the court 
finds extenuating circumstances,  to recover a reasonable atto rney's fee. The court in its 
discretion may award prejudgment interest on relief recovered under this paragraph, at IP/N/1/USA/I/3 
Page 24  
 
an annual interest rate established under section 6621(a)(2) of the Internal Revenue 
Code of 1986 [26 USCS § 6621(a)(2)], comme ncing on the date of service of the 
claimant's pleading setting forth the claim und er this paragraph and ending on the date 
such recovery is granted, or for such sh orter time as the court deems appropriate. 
 
§ 1117.  Recovery for violation of rights; profits, damages and costs; attorney fees; treble damages 
 
(a) When a violation of any right of the registrant of a mark registered in the Patent and 
Trademark Office, a viol ation under section 43(a) or (d) [15 USCS § 1125(a) or (d)], or 
a willful violation under section 43(c) [15 US CS § 1125(c)], shall have been established 
in any civil action arising under this Act, the plaintiff shall be entitled, subject to the 
provisions of sections 29 and 32 [15 USCS §§ 1111, 1114], and subject to the principles 
of equity, to recover (1) defendant's profits,  (2) any damages sustai ned by the plaintiff, 
and (3) the costs of the action. The court sh all assess such profits and damages or cause 
the same to be assessed under its direction. In assessing profits the plaintiff shall be 
required to prove defendant's sales only; defe ndant must prove all elements of cost or 
deduction claimed. In assessi ng damages the court may enter judgment, according to 
the circumstances of the case, for any sum ab ove the amount found as actual damages, 
not exceeding three times such amount. If th e court shall find that  the amount of the 
recovery based on profits is either inad equate 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 abov e 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 ), the court shall, unless the court finds 
extenuating circumstan ces, enter judgment for three ti mes such profits or damages, 
whichever is greater, together with a reason able attorney's fee, in the case of any 
violation of section 32(1)(a) of this Act ( 15 U.S.C. 1114(1)(a)) or section 220506 of title 
36, United States Code, that consists of intentionally using a mark or designation, 
knowing such mark or designat ion is a counterfeit mark (as defined in section 34(d) of 
this Act (15 U.S.C. 1116(d)), in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment 
interest on such amount at an annual inte rest rate established under section 6621(a)(2) 
of the Internal Revenue Code of 1986 [26 USCS § 6621(a)(2)], comm encing on the date 
of the service of the claimant's pleadings setting forth the claim for such entry and 
ending on the date such entry is made, or  for such shorter time as the court deems 
appropriate. 
  
(c) In a case involving the use of a counte rfeit mark (as defined in section 34(d) (15 
U.S.C. 1116(d)) in connection with the sale, offe ring for sale, or dist ribution of goods or 
services, the plaintiff may elec t, at any time before final judgment is rendered by the 
trial court, to recover, instead of actual damages and profits under subsection (a), an 
award of statutory damages for any such use in connection with the sale, offering for 
sale, or distribution of goods or services in the amount of-- 
   (1) not less than $ 500 or more than $ 100,000 per counterfeit mark per type of goods 
or services sold, offered for sale, or dist ributed, as the court considers just; or 
   (2) if the court finds that the use of the counterfeit mark was willful, not more than $ 
1,000,000 per counterfeit mark per type of good s or services sold, offered for sale, or 
distributed, as the court considers just.   
(d) In a case involving a violation of section 43(d)(1) [15 USCS § 1125(d)(1)], the 
plaintiff may elect, at any time before final judgment is rendered by the trial court, to 
recover, instead of actual damages and prof its, an award of stat utory damages in the 
amount of not less than $ 1,000 and not mo re than $ 100,000 per domain name, as the  IP/N/1/USA/I/3 
 Page 25 
 
 
court considers just. 
 
§ 1118.  Destruction of infringing articles  
 
In any action arising under this Act, in which a violation of an y right of the registrant of a 
mark registered in the Patent and Trademar k Office, a violation under section 43(a) [15 
USCS § 1125(a)], or a willfu l violation under section 43(c)  [15 USCS § 1125(c)], 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 vi olation of section 43(a) [15 USCS § 1125(a)] 
or a willful violation under section 43(c) [15 USCS § 1125(c)], th e 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, an d other means of making the same, shall be 
delivered up and destroyed. The party s eeking an order under this section for 
destruction of articles seized under sectio n 34(d) (15 U.S.C. 1116(d)) 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 lesse r 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. 
 
§ 1119.  Power of court over registration 
 In any action involving a registered mark the court may determine the right to 
registration, order the cancelatio n of registrations, in whole or in part, restore canceled 
registrations, and otherwise re ctify 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 re cords of the Patent and Trademark Office, 
and shall be controlled thereby. 
 
§ 1120.  Civil liability for false or fraudulent registration  
 Any person who shall procure re gistration 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. 
 
§ 1121.  Jurisdiction of Federal courts; State and local requirements that 
registered trademarks be altered or displayed differently; prohibition 
 
(a) The district and territorial courts of the United States shall have original jurisdiction, [and] the courts of appeal of the United States (o ther 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 Act, without 
regard to the amount in contro versy or to diversity or lack of diversity of the citizenship 
of the parties. 
  
(b) No State or other jurisdiction of the Unit ed States or any politic al subdivision or any 
agency thereof may require alte ration 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 ma rk be displayed in th e 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. 
 IP/N/1/USA/I/3 
Page 26  
 
§ 1121a.  [Transferred] 
 
§ 1122.  Liability of States, instrumentalities of States, and State officials 
 
(a) Waiver of sovereign immunity by the Unit ed States. The United States, all agencies 
and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authoriz ation 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 Act. 
  
(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 elev enth 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 governme ntal or nongovernmental entity for any 
violation under this Act. 
  
(c) Remedies. In a suit described in subsection (a) or (b) for a violation described 
therein, remedies (inc luding 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 cons ent of the United St ates, or a State, in strumentality of a 
State, or officer or employee of a State or in strumentality of a State acting in his or her 
official capaci ty. Such remedies include injunctive relief under section 34 [15 USCS § 
1116], actual damages, profits,  costs and attorney's fees under section 35 [15 USCS § 
1117], destruction of infringi ng articles under section 36 [15 USCS § 1118], the 
remedies provided for under sections 32, 37, 38, 42 and 43, [15 USCS §§ 1114, 1119, 
1120, 1124, and 1125] and for any other re medies provided under this Act. 
 
§ 1123.  Rules and regulations for conduct of proceedings in Patent and 
Trademark Office 
 The Director shall make rules and regulations, not inconsistent with law, for the conduct 
of proceedings in the Patent and Trademark Office under this Act. 
 
§ 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 [19 USCS § 
1526(d)], no article of imported merchandise which shall copy or simulate the name of 
any domestic manufacture, or ma nufacturer, 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 Act or shall bear a name or mark 
calculated to induce the public to believe th at the article is manufa ctured 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 Stat es; 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 be tween the United States and any foreign country to the 
advantages afforded by law to citizens of th e 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 certific ate of registration of his 
trademark, issued in accordance with the provis ions of this Act, to be recorded in books 
which shall be kept for this purpose in th e Department of the Treasury, under such  IP/N/1/USA/I/3 
 Page 27 
 
 
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 tradem ark, and thereupon th e Secretary of the 
Treasury shall cause one or more copies of th e same to be transmitted to each collector 
or other proper officer of customs. 
 § 1125.  False designations of orig in and false descriptions forbidden 
 
(a) Civil action. 
   (1) Any person who, on or  in connection with any goods or services, or any container 
for goods, uses in commerce any word, term, name, symbol, or device, or any 
combination thereof, or any false designation of origin, false or misleading description of 
fact, or false or misleading representation of fact, which-- 
      (A) is likely to cause confusion, or  to cause mistake, or to deceive as to the 
affiliation, connection, or association of such  person with another person, or as to the 
origin, sponsorship, or approval of his or her goods, services, or comm ercial activities by 
another person, or 
      (B) in commercial advertising or promotion, misrepresents the nature, 
characteristics, qualities, or geographic orig in of his or her or another person's goods, 
services, or commercial activities, 
   shall be liable in a civil action by any pe rson who believes that he or she is or is likely 
to be damaged by such act. 
   (2) As used in this subsection, th e 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 in strumentality, officer, or employee, 
shall be subject to the provisions of this Act in the same manner and to the same extent 
as any nongovernmental entity. 
   (3) In a civil action for trade dress infringement under this Act for trade dress not 
registered on the principal register, the pe rson who asserts trade dress protection has 
the burden of provin g that the matter sought to be protected is not functional. 
  
(b) Importation. Any goods marked or labeled in contravention of the provisions of this 
section shall not be imported into the United States or admitted to entry at any customhouse of the United St ates. The owner, importer, or  consignee of goods refused 
entry at any customhouse under this sectio n may have any recourse by protest or 
appeal that is given under the customs reve nue laws or may have the remedy given by 
this Act in cases involving goods refused entry or seized. 
  
(c) Remedies for dilution of famous marks. 
   (1) The owner of a famous mark shall be entitled, subject to the principles of equity 
and upon such terms as the court deems reas onable, to an injunction against another 
person's commercial use in commerce of a mark  or trade name, if such use begins after 
the mark has become famous and causes diluti on of the distinctive quality of the mark, 
and to obtain such other relief as is provided in this subsection. In determining whether 
a mark is distinctive and famous, a court ma y consider factors such as, but not limited 
to-- 
      (A) the degree of inherent or  acquired distinctiveness of the mark; 
      (B) the duration and extent of use of the mark in connection with the goods or 
services with which the mark is used; 
      (C) the duration and extent of advertising and publicity of the mark; 
      (D) the geographical extent of th e trading area in which the mark is used; 
      (E) the channels of trade for the goods or services with which the mark is used; 
      (F) the degree of recognition of the ma rk in the trading areas and channels of trade 
used by the marks' owner and the person against whom the injunction is sought; 
      (G) the nature and extent of use of the same or similar marks by third parties; and 
      (H) whether the mark was registered under the Act of March 3, 1881, or the Act of IP/N/1/USA/I/3 
Page 28  
 
February 20, 1905, or on the principal register. 
   (2) In an action brought under this subs ection, the owner of the famous mark shall be 
entitled only to injunctive re lief as set forth in section 34 [15 USCS § 1116] unless the 
person against whom the injunction is sought willfully intended to trade on the owner's 
reputation or to cause dilution of the famous mark. If such willful intent is proven, the 
owner of the famous mark shall also be enti tled to the remedies set forth in sections 
35(a) and 36 [15 USCS §§ 1117(a), 1118], subjec t to the discretion of the court and the 
principles of equity. 
   (3) The ownership by a person of a valid registration under the Act of March 3, 1881, 
or the Act of February 20, 1905, or on the pr incipal register shall be a complete bar to 
an action against that person, with respect to that mark, that is brought by another 
person under the common law or a statute of a State and that seeks to prevent dilution 
of the distinctiveness of a mark, label, or form of advertisement. 
   (4) The following shall not be actionable under this section: 
      (A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the comp eting goods or services of the owner of the 
famous mark. 
      (B) Noncommercial use of a mark. 
      (C) All forms of news reporting and news commentary. 
  
(d) Cyberpiracy prevention. 
   (1) (A) A person shall be liable in a civil action by the owner of a mark, including a 
personal name which is protected as a mark under this section, if, without regard to the 
goods or services of th e 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, United States Code. 
      (B) (i) In determining whether a pe rson 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 commercia l 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 tran sfer, sell, or otherwise a ssign 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 fi de 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 registrati on of the domain name, the person's intentional failure to 
maintain accurate contact information, or th e person's prior conduct indicating a pattern 
of such conduct;  IP/N/1/USA/I/3 
 Page 29 
 
 
            (VIII) the person's registration or acquisition of multiple domain names which 
the person knows are identical or confusin gly 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 serv ices 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 
section 43 [subsec. (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, purcha ses, 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, do main 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 protec ted under subsection (a) or (c); 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 inte nt 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 judi cial 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 owne r 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 disp osition 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 acti on, 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 IP/N/1/USA/I/3 
Page 30  
 
court order. 
   (3) The civil action established under pa ragraph (1) and the in rem action established 
under paragraph (2), and any remedy availabl e under either such action, shall be in 
addition to any other civil action  or remedy otherwise applicable. 
   (4) The in rem jurisdiction established und er paragraph (2) shall be in addition to any 
other jurisdiction that otherwise exis ts, whether in rem or in personam. 
 
§ 1126.  International conventions 
 
(a) Register of marks communica ted by international bureaus. The Director shall keep a 
register of all marks communicated to him by  the international bureaus provided for by 
the conventions for the prot ection of industrial prop erty, trademarks, trade and 
commercial names, and the repres sion 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 requ ired in this Act may place the marks so communicated 
upon such register. This register shall sh ow a facsimile of the mark or trade or 
commercial name; the name, citizenship, an d address of the registrant; the number, 
date, and place of the first registration of the mark, in cluding the dates on which 
application for such registration was filed an d granted and the term of such registration; 
a list of goods or services to which the mark is applied as shown by the registration in 
the country of origin, and such other data as may be useful concerning the mark. This 
register shall be a continuation  of the register provided in  section 1(a) of the Act of 
March 19, 1920. 
  (b) Benefits of section to persons whose country of origin is party to convention or 
treaty. Any person whose country of origin is a party to any convention or treaty relating 
to trademarks, trade or commercial names, or the repression of unfair competition, to 
which the United States is also a party, or extends reciprocal rights to nationals of the 
United States by law, shall be entitled to the benefits of this section under the conditions 
expressed herein to the extent necessary to  give effect to any provision of such 
convention, treaty or reciprocal law, in addition to the rights to which any owner of a 
mark is otherwise entitled by this Act. 
  (c) Prior registration in country of origin; country of origin defined. No registration of a 
mark in the United States by a person described in subsection  (b) of this section shall be 
granted until such mark has been registered in the country of orig in of the applicant, 
unless the applicant alleges use in commerce.  For the purposes of  this section, the 
country of origin of the applicant is the country in which he has a bona fide and effective 
industrial or commercial establishment, or if he has not such an establishment the 
country in which he is domiciled, or if he has not a domicile in any of the countries 
described in subsection (b) of this section, the country of which he is a national. 
  (d) Right of priority. An application for registration of a mark under sections 1, 3, 4, or 
23 of this Act [15 USCS §§ 1051, 1053, 1054, or  1091] or under subsection (e) of this 
section filed by a person described in subsec tion (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) shall be accord ed the same force and effect as would be 
accorded to the same application if filed in the United States on th e same date on which 
the application was first filed in such foreign country: Provided, that-- 
   (1) the application in the United States is filed within six months from the date on 
which the application was first filed in the foreign country;    (2) the application conforms as nearly as practicable to the requir ements of this Act, 
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  IP/N/1/USA/I/3 
 Page 31 
 
 
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 registrati on is based on use in commerce. 
  
In like manner and subject to the same condit ions 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 fo reign application: Provided, That any foreign 
application filed prior to such subsequent a pplication has been with drawn, abandoned, or 
otherwise disposed of, without having been laid open to public inspection and without 
leaving any rights outstanding, and has not se rved, nor thereafter shall serve, as a basis 
for claiming a right of priority. 
  
(e) Registration on principal or supplemental register; copy  of foreign registration. A 
mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein 
provided. Such applicant shall submit, within such time period as may be prescribed by 
the Commissioner, a true copy, a photocopy, a certification, or a certified copy of the 
registration in the country of  origin of the applicant. Th e application must state the 
applicant's bona fide intention to use the mark in commerce, but use in commerce shall 
not be required prior to registration. 
  
(f) Domestic registration inde pendent of foreign re gistration. The regist ration of a mark 
under the provisions of subsecti ons (c), (d), and (e) of this section by a person described 
in subsection (b) 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 Act. 
  
(g) Trade or commercial names of foreign nati onals protected withou t registration. Trade 
names or commercial names of persons describe d in subsection (b) of this section shall 
be protected without the obligation of filing or registration whether or not they form 
parts of marks. 
  (h) Protection of foreign nationals against unfair competition. Any person designated in 
subsection (b) of this section as entitled to the benefits and subject to the provisions of 
this Act 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 United States en titled to benefits of section. Citizens or 
residents of the United States shall have the same benefits as are granted by this section 
to persons described in subsec tion (b) of this section. 
 
§ 1127.  Construction and definitions; intent of chapter 
 
In the construction of this Act, unless the contrary is plainly apparent from the context-- 
  
The United States includes an d embraces all territory which is under its jurisdiction and 
control. 
  
The word "commerce" means all commerce which may lawfully be regulated by Congress. 
  
The term "principal register" re fers to the register provided for by sections 1 through 22 
hereof [15 USCS §§ 1051-1072], and the term  "supplemental regist er" refers to the 
register provided for by sections 23 through 28 thereof [15 USCS §§ 1091-1096]. IP/N/1/USA/I/3 
Page 32  
 
  
The term "person" and any other word or term  used to designate the applicant or other 
entitled to a benefit or pri vilege or rendered liable under the provisions of this Act 
includes a juristic person as well as a natura l person. The term "jur istic person" includes 
a firm, corporation, union, asso ciation, 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 corporatio n acting for the United  States and with the 
authorization and consent of the United St ates. The United Stat es, any agency or 
instrumentality thereof, and any individual, firm, or corporation acting for the United 
States and with the authorizat ion and consent of the United States, shall be subject to 
the provisions of this Act 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 instrumental ity, officer, or employee, shall be subject 
to the provisions of this Act in the same manner and to the same extent as any 
nongovernmental entity. 
  
The terms "applicant" and "registrant" embrac e the legal representatives, predecessors, 
successors and assigns of such  applicant or registrant. 
  The term "Director" means th e Under Secretary of Commerce for Intellectual Property 
and Director of the United Stat es Patent and Trademark Office. 
  
The term "related company" means any person  whose use of a mark is controlled by the 
owner of the mark with respect to the nature and quality of the goods or services on or 
in connection with which the mark is used. 
  
The terms "trade name" and "commercial name " mean any name used by a person to 
identify his or her business or vocation. 
  
The term "trademark" includes any word, name, symbol, or device, or any combination 
thereof-- 
   (1) used by a person, or 
   (2) which a person has a bona fide intention to use in commerce and applies to 
register on the principal regist er established by this Act, 
  
to identify and distinguish his or her goods, including a unique product, from those 
manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 
  
The term "service mark" mean s 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 regist er established by this Act, 
  
to identify and distinguish the services of one person, including a unique service, from 
the services of others and to indicate the sour ce 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 th e goods of the sponsor. 
   IP/N/1/USA/I/3 
 Page 33 
 
 
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 applicatio n to register on the principal register 
established by this Act,   
to certify regional or other or igin, material, mode of manufa cture, quality, accuracy, or 
other characteristics of such pe rson's goods or services or that the work or labor on the 
goods or services was performed by memb ers of a union or other organization. 
  
The term "collective mark" means a trademark or service mark-- 
   (1) used by the members of a cooperative, an association, or other collective group or 
organization, or 
   (2) which such cooperative, association, or other collective group or organization has a 
bona fide intention to use in commerce and ap plies to register on the principal register 
established by this Act, 
  
and includes marks indicating membership in a union, an association, or other 
organization. 
  
The term "mark" includes any trademark, service mark, collective mark, or certification 
mark. 
  The term "use in commerce" means the bona fide  use of a mark in the ordinary course of 
trade, and not made merely to reserve a righ t in a mark. For purpos es of this Act, 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 displa yed in the sale or advertising of services and 
the services are rendered in commerce, or th e services are rendered in more than one 
State or in the United  States and a foreign country and the person rendering the services 
is engaged in commerce in connection with the services. 
  
A mark shall be deemed to be "abandon ed" 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 fr om 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 ow ner, including acts of omission as well as 
commission, causes the mark to become the ge neric name for the goods or services on 
or in connection with which it is used or ot herwise to lose its significance as a mark. 
Purchaser motivation shall not be a test  for determining abandonment under this 
paragraph. 
  
The term "dilution" means the lessening of the capacity of a famous mark to identify and 
distinguish goods or services, regard less of the presence or absence of-- 
   (1) competition between the owner of the famous mark and other parties, or 
   (2) likelihood of confusion, mistake, or deception. 
  
The term "colorable imitation" includes any mark which so resembles a registered mark IP/N/1/USA/I/3 
Page 34  
 
as to be likely to cause confus ion or mistake or to deceive. 
  
The term "registered mark" means a mark regi stered in the United States Patent and 
Trademark Office under this Act or under the Act of Ma rch 3, 1881, or the Act of 
February 20, 1905, or the Act of March 19, 19 20. The phrase "marks registered in the 
Patent and Trademark Office " means registered marks. 
  
The term "Act of March 3, 1881," "Act of February 20, 19 05," or "Act of March 19, 
1920," means the respective Act as amended. 
  
A "counterfeit" is a spurious mark which is identical with, or substantially 
indistinguishable from, a registered mark. 
  
The term "domain name" means any alphanumeric designation which is registered with 
or assigned by any domain name registrar,  domain name registry, or other domain 
name registration authority as part of an electronic address on the Internet. 
  
The term "Internet" has the meaning give n that term in section 230(f)(1) of the 
Communications Act of 1934 (47 U.S.C. 230(f)(1)). 
  
Words used in the singular include the plural and vice versa. 
  
The intent of this Act 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 St ate, or territorial 
legislation; to protect persons engaged in su ch commerce against unfair competition; to 
prevent fraud and deception in such commerc e by the use of reproductions, copies, 
counterfeits, or colorable imitations of registered marks; and to provide rights and 
remedies stipulated by treaties and conven tions respecting trademarks, trade names, 
and unfair competition entered into between the United States an d foreign nations. 
 
§ 1128.  National Intellectual Property  Law Enforcement Coordination Council 
 (a) Establishment. There is established the National Intellectual Property Law 
Enforcement Coordination Council (in this section referred to as the "Council"). The 
Council shall consist of the following members-- 
   (1) The Assistant Secretary of Co mmerce and Commissioner of Patents and 
Trademarks [Under Secretary of Commerce for Intellectual Property and Director of the 
United States Patent and Trademark Office], who shall serve as co-chair of the Council. 
   (2) The Assistant Attorney General, Crimin al Division, who shall serve as co-chair of 
the Council. 
   (3) The Under Secretary of State for Economic and Agricultural Affairs.    (4) The Ambassador, Deputy Un ited States Trade Representative. 
   (5) The Commissioner of Customs. 
   (6) The Under Secretary of Co mmerce for International Trade. 
  
(b) Duties. The Council established in subsection (a) shall coordinate domestic and 
international intellectual property law enforcement among federal and foreign entities. 
  
(c) Consultation required. The Council shall consult with the Register of Copyrights on 
law enforcement matters relating to co pyright and related rights and matters. 
  
(d) Non-derogation. Nothing in this sectio n shall derogate from the duties of the 
Secretary of State or from the duties of th e United States Trade Representative as set 
forth in section 141 of the Trade Act of 1974 (19 U.S.C. 2171), or from the duties and 
functions of the Register of Co pyrights, or otherwise alter cu rrent authorities relating to  IP/N/1/USA/I/3 
 Page 35 
 
 
copyright matters. 
  
(e) Report. The Council shall report annually on its coordination activities to the 
President, and to the Committees on Appropri ations and on the Judiciary of the Senate 
and the House of Representatives. 
  (f) Funding. Notwithstanding section 1346 of title 31, United States  Code, or section 610 
of this Act [unclassified], funds made availa ble for fiscal year 2000 and hereafter by this 
or any other Act shall be available for interagency funding of the National Intellectual 
Property Law Enforcement Coordination Council. 
 
§ 1129.  Cyberpiracy protections for individuals 
 
(1) In general. 
   (A) Civil liability. Any person who register s a domain name that consists of the name 
of another living person, or a name substant ially and confusingly similar thereto, without 
that person's consent, with the specific intent to profit from such name by selling the 
domain name for financial gain to that person or any third party, shall be liable in a civil 
action by such person. 
   (B) Exception. A person who in good faith registers a domain name consisting of the 
name of another living person, or a name substantially and confusingly similar thereto, 
shall not be liable under this paragraph if such name is used in, affiliated with, or related 
to a work of authorship protected under titl e 17, United States Co de, including a work 
made for hire as defined in se ction 101 of title 17, United St ates Code, and if the person 
registering the domain name is  the copyright owner or licen see of the work, the person 
intends to sell the domain name in conjunction with the lawful exploitation of the work, 
and such registration is not prohibited by  a contract between the registrant and the 
named person. The exception under this subpara graph shall apply only to a civil action 
brought under paragraph (1) and shall in no manner limit the protec tions afforded under 
the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) or other provision of Federal or 
State law. 
  
(2) Remedies. In any civil action brought under paragraph (1), a court may award injunctive relief, including th e forfeiture or cancellation of the domain name or the 
transfer of the domain name to the plaintiff.  The court may also, in its discretion, award 
costs and attorneys fees to the prevailing party. 
  
(3) Definition. In this subsection, the term  "domain name" has the meaning given that 
term in section 45 of the Tradem ark Act of 1946 (15 U.S.C. 1127). 
  
(4) Effective date. This subsection shall apply to domain names registered on or after the 
date of the enactment of this  Act [enacted Nov. 29, 1999]. 
 
 
§ 1130--1150.  [Reserved] 
 
 
SUBCHAPTER IV - THE MADRID PROTOCOL  
 
Sec. 1141. Definitions 
Sec. 1141a. International applications base d on United States applications or 
registrations 
Sec. 1141b. Certification of th e international application IP/N/1/USA/I/3 
Page 36  
 
Sec. 1141c. Restriction, abandonm ent, cancellation, or expira tion of a basic application 
or basic registration 
Sec. 1141d. Request for extension of prot ection subsequent to international 
registration 
Sec. 1141e. Extension of protection of an inte rnational registration to the United States 
under the Madrid Protocol 
Sec. 1141f. Effect of filing a request for exte nsion of protection of an international 
registration to the United States 
Sec. 1141g. Right of priority for request for ex tension of protection to the United States 
Sec. 1141h. Examination of an d opposition to request fo r extension of protection; 
notification of refusal 
Sec. 1141i. Effect of ex tension of protection 
Sec. 1141j. Dependence of extension of pr otection to the United States on the 
underlying international registration 
Sec. 1141k. Affidavits and fees 
Sec. 1141l. Assignment of an  extension of protection 
Sec. 1141m. Incontestability 
Sec. 1141n. Rights of ex tension of protection 
 
§ 1141.   Definitions  
 
In this title [15 USCS §§ 1141 et seq.]: 
   (1) Basic application. The term "basic  application" means the application for the 
registration of a mark that has been filed wi th an Office of a Cont racting Party and that 
constitutes the basis for an application for th e international registration of that mark. 
   (2) Basic registration. The term "basic re gistration" means the re gistration of a mark 
that has been granted by an Office of a Co ntracting Party and that  constitutes the basis 
for an application for the internat ional registration of that mark. 
   (3) Contracting party. The term "Contr acting Party" means any country or inter-
governmental organizati on 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 intentio n 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 declaratio n 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 eith er 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 protecti on. The term "extension of pr otection" 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 "i nternational application" means an application 
for international registration that is filed under the Madrid Protocol.  IP/N/1/USA/I/3 
 Page 37 
 
 
   (9) International bureau. The term "Int ernational Bureau" me ans the International 
Bureau of the World Intellec tual 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 implem enting regulations require or permit to be 
recorded.    (11) International registration. The te rm "international re gistration" means the 
registration of a mark grante d under the Madrid Protocol. 
   (12) International registration date. The term "international registration date" means 
the date assigned to the international re gistration by the In ternational Bureau. 
   (13) Madrid Protocol. The term "Madrid Protocol" means the Prot ocol Relating to the 
Madrid Agreement Concerning the Internatio nal Registration of Marks, adopted at 
Madrid, Spain, on June 27, 1989. 
   (14) Notification of refusal. The term "not ification of refusal" me ans the notice  sent by 
the United States Patent and Trademark Office to the Intern ational Bureau declaring that 
an extension of protecti on 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 government al entity, of more than 1 Contracting Party 
that is responsible for the regi stration 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 [15 USCS § 1063]. 
November 2, 2003.]  
 
§ 1141a.  International applications ba sed 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 ma y 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), 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. 
 
§ 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. 
 IP/N/1/USA/I/3 
Page 38  
 
§ 1141c.  Restriction, abandonment, cancellation, or expiration of a basic 
application or basic registration 
 
With respect to an international applicatio n transmitted to the International Bureau 
under section 62 [15 USCS § 1141b], the Direct or 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 cancel ed, 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 internat ional registration date if the restriction, 
abandonment, or cancellation of  the basic application or basi c registration resulted from 
an action that began before th e end of that 5-year period. 
 
§ 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 ba sic registration granted by 
the Patent and Trademark Office may requ est 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 an d 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. 
 
§ 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 [15 USCS § 1141h], the holder of 
an international registration shall be entitled to the benefits of exte nsion of protection of 
that international registration to the United St ates to the extent necessary to give effect 
to any provision of the Madrid Protocol. 
  
(b) If the United States is office of or igin. Where the United  States Patent and 
Trademark Office is the office of origin fo r a trademark application or registration, any 
international registration based on such app lication or registration cannot be used to 
obtain the benefits of the Madrid  Protocol in the United States. 
 
§ 1141f.   Effect of filing a requ est 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 internationa l 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 [15 
USCS § 1141h], 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) [15 US CS § 1057(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.  IP/N/1/USA/I/3 
 Page 39 
 
 
   (2) The date of recordal of the request for extension of protection, if the request for 
extension of protection was made afte r the international registration date. 
   (3) The date of priority claimed pursuant to section 67 [15 USCS § 1141g]. 
 
§ 1141g.   Right of priority for request for extension of protection to the United 
States 
 
The holder of an international registration wi th 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 Co nvention for the Protec tion of Industrial 
Property). 
 
§ 1141h.   Examination of and opposition  to request for extension of protection; 
notification of refusal 
 
(a) Examination and opposition.    (1) A request for extension of protecti on described in section 66(a) [15 USCS § 
1141f(a)] 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 [ 15 USCS §§ 1141 et seq.], the Director shall 
cause the mark to be published in the Offici al Gazette of the Unit ed States Patent and 
Trademark Office. 
   (2) Subject to the provisions of subsection (c), a request for extension of protection 
under this title [15 USCS §§ 1141 et seq.] sh all be subject to opposition under section 
13 [15 USCS § 1063].    (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 fo r extension of protection is refused under 
subsection (a), the Director shall declare in a notification of refusal (as provided in 
subsection (c)) 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 wh ich 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 notifica tion 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 af ter the beginning of th e opposition period IP/N/1/USA/I/3 
Page 40  
 
or within 1 month after the end of the o pposition period, whic hever is earlier. 
   (3) If a notification of refusal of a requ est for extension of protection is transmitted 
under paragraph (1) or (2), no grounds for re fusal of such request other than those set 
forth in such notification may be transmitted to the International Bu reau by the Director 
after the expiration of the time periods set fo rth in paragraph (1) or (2), as the case may 
be.    (4) If a notification specified in paragrap h (1) or (2) is not sent to the International 
Bureau within the time period set forth in su ch paragraph, with respect to a request for 
extension of protection, the re quest for extension of protection shall not be refused and 
the Director shall issue a certif icate of extension of protecti on 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 registrati on of the mark may 
designate, by a document file d in the United States Pate nt and Trademark Office, the 
name and address of a person residing in th e 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 leav ing with that person, or mailing to that 
person, a copy thereof at the a ddress 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 th e 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, th e notice or process may be served on the 
Director. 
 § 1141i.   Effect of extension of protection  
 
(a) Issuance of extension of protection. Unless a request fo r extension of protection is 
refused under section 68 [15 USCS § 1141h], the Director shall i ssue a certificate of 
extension of protection pursuant to the reques t 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 prot ection. From the date on which a certificate of extension of 
protection is issued under subsection (a)-- 
   (1) such extension of protection sha ll 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. 
 
§ 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 th e 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 co rresponding extension of protection to the 
United States shall cease to be valid as of th e date of the expiration  of the international 
registration. 
  (c) Transformation of an extension of protec tion into a United States application. The 
holder of an international registration canceled in whole or in part by the International  IP/N/1/USA/I/3 
 Page 41 
 
 
Bureau at the request of  the office of origin, under arti cle 6(4) of the Madrid Protocol, 
may file an application, under section 1 or 44 of this Act [15 USCS § 1051 or 1126], for 
the registration of the same mark for an y 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 67 of this title [15 USCS § 1141g], 
shall enjoy the same priority. Such an app lication shall be entitled to the benefits 
conferred by this subsection only if the app lication 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 1 or 44 [15 USCS § 1051 of 1126]. 
 
§ 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 69 [15 USCS § 1141i] 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 begi nning 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 a ffidavit under subsection (b) together with a 
fee prescribed by the Director; and 
   (2) at the end of the 10-year period begi nning 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 preced ing the expiration of su ch 10-year period the 
holder of the international registration files in the United States Patent and Trademark 
Office an affidavit under subsection (b) togeth er 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) together with  the fee described in subpara graph (A) and the surcharge 
prescribed by the Director. 
  
(b) Contents of affidavit. The affidavit referre d 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 facsimi le showing the current use of the mark in 
commerce, or shall set forth that any nonu se is due to special circumstances which 
excuse such nonuse and is not due to any in tention 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 acce ptance or refusal thereof and, in case of a 
refusal, the reasons therefor. 
  
(d) Service of notice or process. The holder of the international regi stration 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 ma y 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 addr ess given in the last designation, or if the IP/N/1/USA/I/3 
Page 42  
 
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. 
 
§ 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. 
 
§ 1141m.   Incontestability  
 The period of continuous use prescribed und er section 15 [15 USCS § 1065] for a mark 
covered by an extension of protection issued  under this title [15 USCS §§ 1141 et seq.] 
may begin no earlier than the date on which the Director issues th e certificate of the 
extension of protection under section 69 [ 15 USCS § 1141i], except as provided in 
section 74 [15 USCS § 1151n]. 
 
§ 1141n.  Rights of extension of protection   
 
When a United States registra tion and a subsequently issued certificate of extension of 
protection to the United Stat es are owned by the same pers on, identify the same mark, 
and list the same goods or services, the exte nsion of protection shall have the same 
rights that accrued to the regi stration prior to issuance of the certificate of  extension of 
protection.  
__________