b'CHAPTER 22\xe2\x80\x94TRADEMARKS\nSUBCHAPTER I\xe2\x80\x94THE PRINCIPAL REGISTER\nSec.\n\n1051.\n1052.\n1053.\n1054.\n1055.\n1056.\n1057.\n1058.\n1059.\n1060.\n1061.\n1062.\n1063.\n1064.\n1065.\n1066.\n1067.\n\nApplication for registration; verification.\nTrademarks registrable on principal register; concurrent registration.\nService marks registrable.\nCollective marks and certification marks registrable.\nUse by related companies affecting validity and registration.\nDisclaimer of unregistrable matter.\nCertificates of registration.\nDuration, affidavits and fees.\nRenewal of registration.\nAssignment.\nExecution of acknowledgments and verifications.\nPublication.\nOpposition to registration.\nCancellation of registration.\nIncontestability of right to use mark under certain conditions.\nInterference; declaration by Director.\nInterference, opposition, and proceedings for concurrent use registration or for\n\n\x0c1068.\n1069.\n1070.\n1071.\n1072.\n1091.\n1092.\n1093.\n1094.\n1095.\n1096.\n1111.\n1112.\n1113.\n1114.\n1115.\n1116.\n1117.\n1118.\n1119.\n1120.\n1121.\n1121a.\n1122.\n1123.\n1124.\n1125.\n1126.\n1127.\n1128.\n1129.\n1141.\n1141a.\n1141b.\n1141c.\n1141d.\n1141e.\n1141f.\n1141g.\n1141h.\n1141i.\n\ncancellation; notice; Trademark Trial and Appeal Board.\nAction of Director in interference, opposition, and proceedings for concurrent use\nregistration or for cancellation.\nApplication of equitable principles in inter partes proceedings.\nAppeals to Trademark Trial and Appeal Board from decisions of examiners.\nAppeal to courts.\nRegistration as constructive notice of claim of ownership.\nSUBCHAPTER II\xe2\x80\x94THE SUPPLEMENTAL REGISTER\nSupplemental register.\nPublication; not subject to opposition; cancellation.\nRegistration certificates for marks on principal and supplemental registers to be\ndifferent.\nProvisions of chapter applicable to registrations on supplemental register.\nRegistration on principal register not precluded.\nRegistration on supplemental register not used to stop importations.\nSUBCHAPTER III\xe2\x80\x94GENERAL PROVISIONS\nNotice of registration; display with mark; recovery of profits and damages in\ninfringement suit.\nClassification of goods and services; registration in plurality of classes.\nFees.\nRemedies; infringement; innocent infringement by printers and publishers.\nRegistration on principal register as evidence of exclusive right to use mark; defenses.\nInjunctive relief.\nRecovery for violation of rights.\nDestruction of infringing articles.\nPower of court over registration.\nCivil liability for false or fraudulent registration.\nJurisdiction of Federal courts; State and local requirements that registered trademarks\nbe altered or displayed differently; prohibition.\nTransferred.\nLiability of United States and States, and instrumentalities and officials thereof.\nRules and regulations for conduct of proceedings in Patent and Trademark Office.\nImportation of goods bearing infringing marks or names forbidden.\nFalse designations of origin, false descriptions, and dilution forbidden.\nInternational conventions.\nConstruction and definitions; intent of chapter.\nRepealed.\nTransferred.\nSUBCHAPTER IV\xe2\x80\x94THE MADRID PROTOCOL\nDefinitions.\nInternational applications based on United States applications or registrations.\nCertification of the international application.\nRestriction, abandonment, cancellation, or expiration of a basic application or basic\nregistration.\nRequest for extension of protection subsequent to international registration.\nExtension of protection of an international registration to the United States under the\nMadrid Protocol.\nEffect of filing a request for extension of protection of an international registration to\nthe United States.\nRight of priority for request for extension of protection to the United States.\nExamination of and opposition to request for extension of protection; notification of\nrefusal.\nEffect of extension of protection.\n\n\x0c1141j.\n1141k.\n1141l.\n1141m.\n1141n.\n\nDependence of extension of protection to the United States on the underlying\ninternational registration.\nDuration, affidavits and fees.\nAssignment of an extension of protection.\nIncontestability.\nRights of extension of protection.\n\nEFFECTIVE DATE\nThis chapter, act July 5, 1946, ch. 540, 60 Stat. 427, became effective one year from July 5, 1946, and\nrepealed chapter 3 of this title as of that date. See notes under section 1051 of this title.\nPRIOR LAWS\nThe Trade-Mark Act of 1905 superseded the Trade-Mark Act of Mar. 3, 1881, ch. 138, 21 Stat. 502,\nentitled "An Act to authorize the registration of trade-marks and protect the same," and also act Aug. 5, 1882,\nch. 393, 22 Stat. 298, entitled "An Act relating to the registration of trade marks". Former section 109 of this\ntitle repealed all inconsistent acts and parts of acts, except so far as they might apply to certificates of\nregistration issued under the Trade-Mark Act of Mar. 3, 1881, ch. 138, and act Aug. 5, 1882, ch. 393.\n\nSUBCHAPTER I\xe2\x80\x94THE PRINCIPAL REGISTER\n\xc2\xa71051. Application for registration; verification\n(a) Application for use of trademark\n(1) The owner of a trademark used in commerce may request registration of its trademark on the\nprincipal register hereby established by paying the prescribed fee and filing in the Patent and\nTrademark Office an application and a verified statement, in such form as may be prescribed by the\nDirector, and such number of specimens or facsimiles of the mark as used as may be required by the\nDirector.\n(2) The application shall include specification of the applicant\'s domicile and citizenship, the date\nof the applicant\'s first use of the mark, the date of the applicant\'s first use of the mark in commerce,\nthe goods in connection with which the mark is used, and a drawing of the mark.\n(3) The statement shall be verified by the applicant and specify that\xe2\x80\x94\n(A) the person making the verification believes that he or she, or the juristic person in whose\nbehalf he or she makes the verification, to be the owner of the mark sought to be registered;\n(B) to the best of the verifier\'s knowledge and belief, the facts recited in the application are\naccurate;\n(C) the mark is in use in commerce; and\n(D) to the best of the verifier\'s knowledge and belief, no other person has the right to use such\nmark in commerce either in the identical form thereof or in such near resemblance thereto as to be\nlikely, when used on or in connection with the goods of such other person, to cause confusion, or\nto cause mistake, or to deceive, except that, in the case of every application claiming concurrent\nuse, the applicant shall\xe2\x80\x94\n(i) state exceptions to the claim of exclusive use; and\n(ii) shall 1 specify, to the extent of the verifier\'s knowledge\xe2\x80\x94\n(I) any concurrent use by others;\n(II) the goods on or in connection with which and the areas in which each concurrent use\nexists;\n(III) the periods of each use; and\n(IV) the goods and area for which the applicant desires registration.\n(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director.\nThe Director shall promulgate rules prescribing the requirements for the application and for\n\n\x0cobtaining a filing date herein.\n(b) Application for bona fide intention to use trademark\n(1) A person who has a bona fide intention, under circumstances showing the good faith of such\nperson, to use a trademark in commerce may request registration of its trademark on the principal\nregister hereby established by paying the prescribed fee and filing in the Patent and Trademark\nOffice an application and a verified statement, in such form as may be prescribed by the Director.\n(2) The application shall include specification of the applicant\'s domicile and citizenship, the\ngoods in connection with which the applicant has a bona fide intention to use the mark, and a\ndrawing of the mark.\n(3) The statement shall be verified by the applicant and specify\xe2\x80\x94\n(A) that the person making the verification believes that he or she, or the juristic person in\nwhose behalf he or she makes the verification, to be entitled to use the mark in commerce;\n(B) the applicant\'s bona fide intention to use the mark in commerce;\n(C) that, to the best of the verifier\'s knowledge and belief, the facts recited in the application are\naccurate; and\n(D) that, to the best of the verifier\'s knowledge and belief, no other person has the right to use\nsuch mark in commerce either in the identical form thereof or in such near resemblance thereto as\nto be likely, when used on or in connection with the goods of such other person, to cause\nconfusion, or to cause mistake, or to deceive.\nExcept for applications filed pursuant to section 1126 of this title, no mark shall be registered until\nthe applicant has met the requirements of subsections (c) and (d) of this section.\n(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director.\nThe Director shall promulgate rules prescribing the requirements for the application and for\nobtaining a filing date herein.\n(c) Amendment of application under subsection (b) to conform to requirements of subsection\n(a)\nAt any time during examination of an application filed under subsection (b) of this section, an\napplicant who has made use of the mark in commerce may claim the benefits of such use for\npurposes of this chapter, by amending his or her application to bring it into conformity with the\nrequirements of subsection (a) of this section.\n(d) Verified statement that trademark is used in commerce\n(1) Within six months after the date on which the notice of allowance with respect to a mark is\nissued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the\napplicant shall file in the Patent and Trademark Office, together with such number of specimens or\nfacsimiles of the mark as used in commerce as may be required by the Director and payment of the\nprescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the\napplicant\'s first use of the mark in commerce and those goods or services specified in the notice of\nallowance on or in connection with which the mark is used in commerce. Subject to examination and\nacceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a\ncertificate of registration shall be issued for those goods or services recited in the statement of use for\nwhich the mark is entitled to registration, and notice of registration shall be published in the Official\nGazette of the Patent and Trademark Office. Such examination may include an examination of the\nfactors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration\nshall specify the goods or services for which the mark is registered.\n(2) The Director shall extend, for one additional 6-month period, the time for filing the statement\nof use under paragraph (1), upon written request of the applicant before the expiration of the 6-month\nperiod provided in paragraph (1). In addition to an extension under the preceding sentence, the\nDirector may, upon a showing of good cause by the applicant, further extend the time for filing the\nstatement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to\nwritten request of the applicant made before the expiration of the last extension granted under this\n\n\x0cparagraph. Any request for an extension under this paragraph shall be accompanied by a verified\nstatement that the applicant has a continued bona fide intention to use the mark in commerce and\nspecifying those goods or services identified in the notice of allowance on or in connection with\nwhich the applicant has a continued bona fide intention to use the mark in commerce. Any request\nfor an extension under this paragraph shall be accompanied by payment of the prescribed fee. The\nDirector shall issue regulations setting forth guidelines for determining what constitutes good cause\nfor purposes of this paragraph.\n(3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal\nthereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend\nthe statement of use.\n(4) The failure to timely file a verified statement of use under paragraph (1) or an extension\nrequest under paragraph (2) shall result in abandonment of the application, unless it can be shown to\nthe satisfaction of the Director that the delay in responding was unintentional, in which case the time\nfor filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and\n(2) for filing a statement of use.\n(e) Designation of resident for service of process and notices\nIf the applicant is not domiciled in the United States the applicant may designate, by a document\nfiled in the United States Patent and Trademark Office, the name and address of a person resident in\nthe United States on whom may be served notices or process in proceedings affecting the mark. Such\nnotices or process may be served upon the person so designated by leaving with that person or\nmailing to that person a copy thereof at the address specified in the last designation so filed. If the\nperson so designated cannot be found at the address given in the last designation, or if the registrant\ndoes not designate by a document filed in the United States Patent and Trademark Office the name\nand address of a person resident in the United States on whom may be served notices or process in\nproceedings affecting the mark, such notices or process may be served on the Director.\n(July 5, 1946, ch. 540, title I, \xc2\xa71, 60 Stat. 427; Pub. L. 87\xe2\x80\x93772, \xc2\xa71, Oct. 9, 1962, 76 Stat. 769; Pub. L.\n93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7103, Nov. 16, 1988, 102 Stat.\n3935; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7103, title II, \xc2\xa7201(a)(1), Oct. 30, 1998, 112 Stat. 3064, 3069; Pub. L.\n106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583;\nPub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(1), (2), Nov. 2, 2002, 116 Stat. 1906.)\nPRIOR PROVISIONS\nSubsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa71, 2, 33 Stat. 724; May 4, 1906, ch. 2081, \xc2\xa71, 34\nStat. 168; Feb. 18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, \xc2\xa74, 46 Stat. 155; June 10, 1938, ch.\n332, \xc2\xa71, 52 Stat. 638.\nSubsec. (d) is from act Feb. 20, 1905, ch. 592, \xc2\xa73, 33 Stat. 725.\nAMENDMENTS\n2002\xe2\x80\x94Subsec. (d)(1). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(b)(1), in first sentence, substituted "specifying the date of\nthe applicant\'s first use of the mark in commerce and those goods or services specified in the notice of\nallowance on or in connection with which the mark is used in commerce." for "specifying the date of the\napplicant\'s first use of the mark in commerce and,, those goods or services specified in the notice of allowance\non or in connection with which the mark is used in commerce."\nSubsec. (e). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(b)(2), amended subsec. (e) generally. Prior to amendment, subsec. (e)\nrequired applicant not domiciled in United States to designate name and address of some person resident in\nthe United States on whom may be served notices or process in proceedings affecting the mark and provided\nthat notices or process be served by leaving with such person or mailing to him a copy, or upon Director if\ndesignated person cannot be found.\n1999\xe2\x80\x94Subsecs. (a), (b), (d), (e). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever\nappearing.\n1998\xe2\x80\x94Subsec. (a). Pub. L. 105\xe2\x80\x93330, \xc2\xa7103(a), amended subsec. (a) generally. Prior to amendment, subsec.\n(a) related to application by owner of a trademark used in commerce to register the trademark by filing in the\nPatent and Trademark Office a written application in prescribed form and verified by applicant, by paying\nprescribed fee, and by complying with prescribed rules or regulations.\nSubsec. (b). Pub. L. 105\xe2\x80\x93330, \xc2\xa7103(b), amended subsec. (b) generally. Prior to amendment, subsec. (b)\n\n\x0crelated to application, by person with bona fide intention, under circumstances showing good faith, to use a\ntrademark in commerce, to register trademark by filing in the Patent and Trademark Office a written\napplication in prescribed form and verified by applicant, by paying prescribed fee, and by complying with\nprescribed rules or regulations.\nSubsec. (d)(1). Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(1)(A), inserted "and," after "specifying the date of the applicant\'s\nfirst use of the mark in commerce".\nPub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(1)(B), which directed the striking out of "and, the mode or manner in which the\nmark is used on or in connection with such goods or services", was executed by striking out ", and the mode\nor manner in which the mark is used on or in connection with such goods or services" after "notice of\nallowance on or in connection with which the mark is used in commerce", to reflect the probable intent of\nCongress.\nSubsec. (d)(4). Pub. L. 105\xe2\x80\x93330, \xc2\xa7103(c), amended par. (4) generally. Prior to amendment, par. (4) read as\nfollows: "The failure to timely file a verified statement of use under this subsection shall result in\nabandonment of the application."\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7103(1) to (7), inserted "(a)" preceding introductory provisions and\nsubstituted "may apply to register his or her" for "may register his", redesignated former subsecs. (a) to (c) as\npars. (1) to (3), respectively, redesignated former pars. (1) to (3) as subpars. (A) to (C), respectively, in par.\n(1)(A), substituted "used on or in connection with" for "applied to" and "goods on or in connection" for\n"goods in connection", in par. (1)(C), struck out "actually" after "the mark as", and in par. (2), substituted\n"prescribed" for "filing".\nSubsecs. (b), (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7103(3), (9), added subsecs. (b) and (c) and redesignated former\nsubsecs. (b) and (c) as pars. (2) and (3), respectively, of subsec. (a).\nSubsecs. (d), (e). Pub. L. 100\xe2\x80\x93667, \xc2\xa7103(8), (9), added subsec. (d) and redesignated former subsec. (d) as\n(e).\n1975\xe2\x80\x94Subsecs. (a), (b), (d). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Subsec. (a)(1). Pub. L. 87\xe2\x80\x93772 substituted "as to be likely, when applied to the goods of such other\nperson, to cause confusion, or to cause mistake, or to deceive" for "as might be calculated to deceive", and\nstruck out "or services" after "use by others, the goods".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7109(b), Oct. 30, 1998, 112 Stat. 3069, provided that: "This title [see Short Title of\n1998 Amendment note below] and the amendments made by this title shall apply to any application for\nregistration of a trademark pending on, or filed on or after, the effective date of this Act [probably should be\n"this title", see section 110 of Pub. L. 105\xe2\x80\x93330, set out as an Effective Date of 1998 Amendment note below]."\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7110, Oct. 30, 1998, 112 Stat. 3069, provided that: "This title [see Short Title of\n1998 Amendment note below] and the amendments made by this title shall take effect\xe2\x80\x94\n"(1) on the date that is 1 year after the date of the enactment of this Act [Oct. 30, 1998], or\n"(2) upon the entry into force of the Trademark Law Treaty with respect to the United States [Aug. 12,\n2000],\nwhichever occurs first."\nPub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(b), Oct. 30, 1998, 112 Stat. 3070, provided that: "The amendments made by\nthis section [amending this section and sections 1052, 1057, 1064, 1091, 1094, 1113 to 1115, 1121, and 1124\nof this title] shall take effect on the date of enactment of this Act [Oct. 30, 1998], and shall apply only to any\ncivil action filed or proceeding before the United States Patent and Trademark Office commenced on or after\nsuch date relating to the registration of a mark."\nEFFECTIVE DATE OF 1988 AMENDMENT\nPub. L. 100\xe2\x80\x93667, title I, \xc2\xa7136, Nov. 16, 1988, 102 Stat. 3948, provided that: "This title and the amendments\nmade by this title [see Short Title of 1988 Amendment note below] shall become effective on the date which\nis one year after the date of enactment of this Act [Nov. 16, 1988]."\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\n\n\x0cEFFECTIVE DATE\nSection 46(a) of act July 5, 1946, provided that this chapter shall be in force and take effect one year from\nJuly 5, 1946.\nSHORT TITLE OF 2010 AMENDMENT\nPub. L. 111\xe2\x80\x93146, \xc2\xa71, Mar. 17, 2010, 124 Stat. 66, provided that: "This Act [amending sections 1057, 1058,\n1065, 1071, and 1141k of this title] may be cited as the \'Trademark Technical and Conforming Amendment\nAct of 2010\'."\nSHORT TITLE OF 2006 AMENDMENT\nPub. L. 109\xe2\x80\x93312, \xc2\xa71(a), Oct. 6, 2006, 120 Stat. 1730, provided that: "This Act [amending sections 1052,\n1063, 1064, 1092, 1125, and 1127 of this title] may be cited as the \'Trademark Dilution Revision Act of\n2006\'."\nSHORT TITLE OF 2004 AMENDMENT\nPub. L. 108\xe2\x80\x93482, \xc2\xa71, Dec. 23, 2004, 118 Stat. 3912, provided that: "This Act [amending section 1117 of\nthis title, section 504 of Title 17, Copyrights, sections 2318 and 3559 of Title 18, Crimes and Criminal\nProcedure, and sections 85 and 112 of Title 28, Judiciary and Judicial Procedure, and enacting provisions set\nout as notes under this section, section 1117 of this title, sections 2311 and 2318 of Title 18, and listed in a\ntable relating to sentencing guidelines set out as a note under section 994 of Title 28] may be cited as the\n\'Intellectual Property Protection and Courts Amendments Act of 2004\'."\nPub. L. 108\xe2\x80\x93482, title II, \xc2\xa7201, Dec. 23, 2004, 118 Stat. 3916, provided that: "This title [amending section\n1117 of this title, section 504 of Title 17, Copyrights, and section 3559 of Title 18, Crimes and Criminal\nProcedure, and enacting provisions set out as notes under section 1117 of this title and listed in a table relating\nto sentencing guidelines set out as a note under section 994 of Title 28, Judiciary and Judicial Procedure] may\nbe cited as the \'Fraudulent Online Identity Sanctions Act\'."\nSHORT TITLE OF 2002 AMENDMENT\nPub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713401, Nov. 2, 2002, 116 Stat. 1913, provided that: "This subtitle\n[subtitle D (\xc2\xa7\xc2\xa713401\xe2\x80\x9313403) of title III of div. C of Pub. L. 107\xe2\x80\x93273, enacting subchapter IV of this chapter\nand provisions set out as a note under section 1141 of this title] may be cited as the \'Madrid Protocol\nImplementation Act\'."\nSHORT TITLE OF 1999 AMENDMENTS\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73001(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93545,\nprovided that: "This title [enacting section 1129 of this title, amending sections 1114, 1116, 1117, 1125, and\n1127 of this title, section 470a of Title 16, Conservation, and section 1338 of Title 28, Judiciary and Judicial\nProcedure, and enacting provisions set out as notes under this section and sections 1117 and 1125 of this title]\nmay be cited as the \'Anticybersquatting Consumer Protection Act\'."\nPub. L. 106\xe2\x80\x9343, \xc2\xa71, Aug. 5, 1999, 113 Stat. 218, provided that: "This Act [amending sections 1052 to 1054,\n1060, 1063, 1064, 1091, 1092, 1114, 1116 to 1118, 1122, and 1124 to 1127 of this title, enacting provisions\nset out as a note under section 1052 of this title, and amending provisions set out as a note under this section]\nmay be cited as the \'Trademarks Amendments Act of 1999\'."\nSHORT TITLE OF 1998 AMENDMENT\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7101, Oct. 30, 1998, 112 Stat. 3064, provided that: "This title [amending this\nsection and sections 1058 to 1060, 1062, and 1126 of this title and enacting provisions set out as notes under\nthis section and sections 1058 and 1059 of this title] may be cited as the \'Trademark Law Treaty\nImplementation Act\'."\nSHORT TITLE OF 1996 AMENDMENT\nPub. L. 104\xe2\x80\x9398, \xc2\xa71, Jan. 16, 1996, 109 Stat. 985, provided that: "This Act [amending sections 1125 and\n1127 of this title and enacting provisions set out as a note under section 1125 of this title] may be cited as the\n\'Federal Trademark Dilution Act of 1995\'."\nSHORT TITLE OF 1992 AMENDMENT\nPub. L. 102\xe2\x80\x93542, \xc2\xa71, Oct. 27, 1992, 106 Stat. 3567, provided that: "This Act [enacting section 1122 of this\ntitle, amending sections 1114, 1125, and 1127 of this title, and enacting provisions set out as a note under\nsection 1114 of this title] may be cited as the \'Trademark Remedy Clarification Act\'."\n\n\x0cSHORT TITLE OF 1988 AMENDMENT\nPub. L. 100\xe2\x80\x93667, title I, \xc2\xa7101, Nov. 16, 1988, 102 Stat. 3935, provided that: "This title [amending this\nsection and sections 1052 to 1060, 1062 to 1066, 1068, 1069, 1071, 1091, 1092, 1094, 1095, 1111, 1112, 1114\nto 1118, 1121, and 1125 to 1127 of this title, redesignating section 1121a of this title as section 1121(b) of this\ntitle, and enacting provisions set out as notes under sections 1051 and 1058 of this title] may be cited as the\n\'Trademark Law Revision Act of 1988\'."\nSHORT TITLE OF 1984 AMENDMENT\nPub. L. 98\xe2\x80\x93620, title I, \xc2\xa7101, Nov. 8, 1984, 98 Stat. 3335, provided that: "This title [amending sections\n1064 and 1127 of this title and enacting provisions set out as a note under section 1064 of this title] may be\ncited as the \'Trademark Clarification Act of 1984\'."\nSHORT TITLE\nAct July 5, 1946, ch. 540, 60 Stat. 427, which is classified to this chapter, is popularly known as the\n"Lanham Act" and also as the "Trademark Act of 1946".\nREPEAL OF INCONSISTENT PROVISIONS; CERTAIN PROVISIONS NOT AFFECTED\nAct July 5, 1946, ch. 540, title XI, \xc2\xa746(a), 60 Stat. 444, as amended by Pub. L. 106\xe2\x80\x9343, \xc2\xa76(b), Aug. 5, 1999,\n113 Stat. 220, provided in part that all acts and parts of acts inconsistent with this chapter are repealed\neffective one year from July 5, 1946, but that "nothing contained in this Act [this chapter] shall be construed\nas limiting, restricting, modifying, or repealing any statute in force on the effective date of this Act [July 5,\n1947] which does not relate to trademarks, or as restricting or increasing the authority of any Federal\ndepartment or regulatory agency except as may be specifically provided in this Act [this chapter]."\nAct July 5, 1946, ch. 540, title XI, \xc2\xa748, 60 Stat. 446, provided that: "Section 4 of the Act of January 5, 1905\n(U.S.C., title 36, sec. 4), as amended, entitled \'An Act to incorporate the National Red Cross\' [see 18 U.S.C.\n706], and section 7 of the Act of June 15, 1916 (U.S.C., title 36, sec. 27), entitled \'An Act to incorporate the\nBoy Scouts of America, and for other purposes\' [see 36 U.S.C. 30905], and the Act of June 20, 1936 (U.S.C.,\ntitle 22, sec. 248), entitled \'An Act to prohibit the commercial use of the coat of arms of the Swiss\nConfederation\' [see 18 U.S.C. 708], are not repealed or affected by this Act."\nSAVINGS PROVISION\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73008], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93551,\nprovided that: "Nothing in this title [see Short Title of 1999 Amendments note above] shall affect any defense\navailable to a defendant under the Trademark Act of 1946 [15 U.S.C. 1051 et seq.] (including any defense\nunder section 43(c)(4) of such Act [15 U.S.C. 1125(c)(4)] or relating to fair use) or a person\'s right of free\nspeech or expression under the first amendment of the United States Constitution."\nSEPARABILITY\nAct July 5, 1946, ch. 540, title XI, \xc2\xa750, 60 Stat. 446, provided that: "If any provision of this Act [this\nchapter] or the application of such provision to any person or circumstance is held invalid, the remainder of\nthe Act shall not be affected thereby."\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce to\nSecretary of Commerce, with certain exceptions, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2, eff. May 24, 1950, 15\nF.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.\nPENDING PROCEEDINGS AND EXISTING REGISTRATION AND RIGHTS UNDER PRIOR\nACTS\nAct July 5, 1946, ch. 540, title XI, \xc2\xa746(a), 60 Stat. 444, provided in part that this chapter, except as\notherwise specifically provided therein, shall not affect any suit, proceeding or appeal pending on the effective\ndate of this chapter and that the repeal of all inconsistent acts "shall not affect the validity of registrations\ngranted or applied for under any of said Acts prior to the effective date of this Act [July 5, 1947], or rights or\nremedies thereunder except as provided in sections 8, 12, 14, 15, and 47 of this Act [sections 1058, 1062,\n1064, and 1065 of this title and note under this section]."\nAct July 5, 1946, ch. 540, title XI, \xc2\xa7\xc2\xa746(b), 47, 60 Stat. 445, provided:\n"(b) Registrations now existing under the Act of March 3, 1881, or the Act of February 20, 1905 [sections\n81 to 109 of this title], shall continue in full force and effect for the unexpired terms thereof and may be\nrenewed under the provisions of section 9 of this Act [section 1059 of this title]. Such registrations and the\n\n\x0crenewals thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act [this\nchapter] to the same extent and with the same force and effect as though registered on the principal register\nestablished by this Act [this chapter] except as limited in sections 8, 12, 14, and 15 of this Act [sections 1058,\n1062, 1064, 1065, of this title]. Marks registered under the \'ten-year proviso\' of section 5 of the Act of\nFebruary 20, 1905, as amended [former section 85 of this title], shall be deemed to have become distinctive of\nthe registrant\'s goods in commerce under paragraph (f) of section 2 of this Act [section 1052 of this title] and\nmay be renewed under section 9 hereof [section 1059 of this title] as marks coming within said paragraph.\n"Registrations now existing under the Act of March 19, 1920 [former sections 121 to 128 of this title], shall\nexpire six months after the effective date of this Act [July 5, 1947], or twenty years from the dates of their\nregistrations, whichever date is later. Such registrations shall be subject to and entitled to the benefits of the\nprovisions of this Act [this chapter] relating to marks registered on the supplemental register established by\nthis Act [this chapter], and may not be renewed unless renewal is required to support foreign registrations. In\nthat event renewal may be effected on the supplemental register under the provisions of section 9 of this Act\n[section 1059 of this title].\n"Marks registered under previous Acts may, if eligible, also be registered under this Act [this chapter].\n"SEC. 47. (a) All applications for registration pending in the Patent Office at the effective date of this Act\n[July 5, 1947] may be amended, if practicable, to bring them under the provisions of this Act [this chapter].\nThe prosecution of such applications so amended and the grant of registrations thereon shall be proceeded\nwith in accordance with the provisions of this Act [this chapter]. If such amendments are not made, the\nprosecution of said applications shall be proceeded with and registrations thereon granted in accordance with\nthe Acts under which said applications were filed, and said Acts are hereby continued in force to this extent\nand for this purpose only, notwithstanding the foregoing general repeal thereof.\n"(b) In any case in which an appeal is pending before the United States Court of Customs and Patent\nAppeals or any United States Circuit Court of Appeals or the United States Court of Appeals for the District\nof Columbia or the United States Supreme Court at the effective date of this Act [July 5, 1947], the court, if it\nbe of the opinion that the provisions of this Act [this chapter] are applicable to the subject matter of the\nappeal, may apply such provision or may remand the case to the Commissioner [now Director] or to the\ndistrict court for the taking of additional evidence or a new trial or for reconsideration of the decision on the\nrecord as made, as the appellate court may deem proper."\nAct July 5, 1946, ch. 540, title XI, \xc2\xa749, 60 Stat. 446, provided: "Nothing herein [in this chapter] shall\nadversely affect the rights or the enforcement of rights in marks acquired in good faith prior to the effective\ndate of this Act [July 5, 1947]."\nEMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING TRADEMARK CASES\nRelief as to filing date of trademark application or registration and excusal of delayed fees or actions\naffected by postal situation beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970, see note set\nout under section 111 of Title 35, Patents.\n1\n\nSo in original. The word "shall" probably should not appear.\n\n\xc2\xa71052. Trademarks registrable on principal register; concurrent registration\nNo trademark by which the goods of the applicant may be distinguished from the goods of others\nshall be refused registration on the principal register on account of its nature unless it\xe2\x80\x94\n(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may\ndisparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or\nnational symbols, or bring them into contempt, or disrepute; or a geographical indication which,\nwhen used on or in connection with wines or spirits, identifies a place other than the origin of the\ngoods and is first used on or in connection with wines or spirits by the applicant on or after one year\nafter the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into\nforce with respect to the United States.\n(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of\nany State or municipality, or of any foreign nation, or any simulation thereof.\n(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual\nexcept by his written consent, or the name, signature, or portrait of a deceased President of the\nUnited States during the life of his widow, if any, except by the written consent of the widow.\n\n\x0c(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and\nTrademark Office, or a mark or trade name previously used in the United States by another and not\nabandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause\nconfusion, or to cause mistake, or to deceive: Provided, That if the Director determines that\nconfusion, mistake, or deception is not likely to result from the continued use by more than one\nperson of the same or similar marks under conditions and limitations as to the mode or place of use\nof the marks or the goods on or in connection with which such marks are used, concurrent\nregistrations may be issued to such persons when they have become entitled to use such marks as a\nresult of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the\napplications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of\nregistrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing\nin full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act\nof February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending\napplication or a registration shall not be required when the owner of such application or registration\nconsents to the grant of a concurrent registration to the applicant. Concurrent registrations may also\nbe issued by the Director when a court of competent jurisdiction has finally determined that more\nthan one person is entitled to use the same or similar marks in commerce. In issuing concurrent\nregistrations, the Director shall prescribe conditions and limitations as to the mode or place of use of\nthe mark or the goods on or in connection with which such mark is registered to the respective\npersons.\n(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is\nmerely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the\ngoods of the applicant is primarily geographically descriptive of them, except as indications of\nregional origin may be registrable under section 1054 of this title, (3) when used on or in connection\nwith the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is\nprimarily merely a surname, or (5) comprises any matter that, as a whole, is functional.\n(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section,\nnothing in this chapter shall prevent the registration of a mark used by the applicant which has\nbecome distinctive of the applicant\'s goods in commerce. The Director may accept as prima facie\nevidence that the mark has become distinctive, as used on or in connection with the applicant\'s goods\nin commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant\nin commerce for the five years before the date on which the claim of distinctiveness is made.\nNothing in this section shall prevent the registration of a mark which, when used on or in connection\nwith the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and\nwhich became distinctive of the applicant\'s goods in commerce before December 8, 1993.\nA mark which would be likely to cause dilution by blurring or dilution by tarnishment under\nsection 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under\nsection 1063 of this title. A registration for a mark which would be likely to cause dilution by\nblurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a\nproceeding brought under either section 1064 of this title or section 1092 of this title.\n(July 5, 1946, ch. 540, title I, \xc2\xa72, 60 Stat. 428; Pub. L. 87\xe2\x80\x93772, \xc2\xa72, Oct. 9, 1962, 76 Stat. 769; Pub. L.\n93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7104, Nov. 16, 1988, 102 Stat.\n3937; Pub. L. 103\xe2\x80\x93182, title III, \xc2\xa7333(a), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 103\xe2\x80\x93465, title V,\n\xc2\xa7522, Dec. 8, 1994, 108 Stat. 4982; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(2), (12), Oct. 30, 1998, 112\nStat. 3069, 3070; Pub. L. 106\xe2\x80\x9343, \xc2\xa72(a), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106\xe2\x80\x93113, div. B,\n\xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 109\xe2\x80\x93312,\n\xc2\xa73(a), Oct. 6, 2006, 120 Stat. 1732.)\nREFERENCES IN TEXT\nActs March 3, 1881, and February 20, 1905, referred to in subsec. (d), are acts Mar. 3, 1881, ch. 138, 21\nStat. 502, and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this\nchapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to\n109 of this title.\n\n\x0cPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa75, 33 Stat. 725; Mar. 2, 1907, ch. 2573, \xc2\xa71, 34 Stat. 1251; Feb. 18, 1911, ch.\n113, 36 Stat. 918; Jan. 8, 1913, ch. 7, 37 Stat. 649; Mar. 19, 1920, ch. 104, \xc2\xa79, 41 Stat. 535; June 7, 1924, ch.\n341, 43 Stat. 647.\nAMENDMENTS\n2006\xe2\x80\x94Pub. L. 109\xe2\x80\x93312, which directed substitution of "A mark which would be likely to cause dilution by\nblurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only\npursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be\nlikely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be\ncanceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title."\nfor last two sentences in subsec. (f) of this section, was executed by making the substitution for "A mark\nwhich when used would cause dilution under section 1125(c) of this title may be refused registration only\npursuant to a proceeding brought under section 1063 of this title. A registration for a mark which when used\nwould cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought\nunder either section 1064 of this title or section 1092 of this title." in concluding provisions of section to\nreflect the probable intent of Congress.\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343 inserted concluding provisions.\nSubsecs. (d), (f). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(12), substituted "trademark" for "trade-mark" in introductory provisions.\nSubsec. (e). Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(2)(A), struck out "or" before "(4)" and inserted ", or (5) comprises\nany matter that, as a whole, is functional" before period at end.\nSubsec. (f). Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(2)(B), substituted "subsections (a), (b), (c), (d), (e)(3), and (e)(5)" for\n"paragraphs (a), (b), (c), (d), and (e)(3)".\n1994\xe2\x80\x94Subsec. (a). Pub. L. 103\xe2\x80\x93465 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as\nfollows: "Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage\nor falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring\nthem into contempt, or disrepute."\n1993\xe2\x80\x94Subsec. (e). Pub. L. 103\xe2\x80\x93182, \xc2\xa7333(a)(1), amended subsec. (e) generally. Prior to amendment,\nsubsec. (e) read as follows: "Consists of a mark which, (1) when used on or in connection with the goods of\nthe applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection\nwith the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them,\nexcept as indications of regional origin may be registrable under section 1054 of this title, or (3) is primarily\nmerely a surname."\nSubsec. (f). Pub. L. 103\xe2\x80\x93182, \xc2\xa7333(a)(2), substituted "(d), and (e)(3)" for "and (d)" and inserted at end\n"Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the\ngoods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became\ndistinctive of the applicant\'s goods in commerce before December 8, 1993."\n1988\xe2\x80\x94Subsec. (d). Pub. L. 100\xe2\x80\x93667, \xc2\xa7104(1), amended subsec. (d) generally. Prior to amendment, subsec.\n(d) read as follows: "Consists of or comprises a mark which so resembles a mark registered in the Patent and\nTrademark Office or a mark or trade name previously used in the United States by another and not abandoned,\nas to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to\ndeceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely\nto result from the continued use by more than one person of the same or similar marks under conditions and\nlimitations as to the mode or place of use of the marks or the goods in connection with which such marks are\nused, concurrent registrations may be issued to such persons when they have become entitled to use such\nmarks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the\napplications pending or of any registration issued under this chapter; or (ii) July 5, 1947, in the case of\nregistrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full\nforce and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February\n20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner\nwhen a court of competent jurisdiction has finally determined that more than one person is entitled to use the\nsame or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe\nconditions and limitations as to the mode or place of use of the mark or the goods in connection with which\nsuch mark is registered to the respective persons."\nSubsec. (e). Pub. L. 100\xe2\x80\x93667, \xc2\xa7104(2), substituted "used on or in connection with" for "applied to" in two\nplaces.\nSubsec. (f). Pub. L. 100\xe2\x80\x93667, \xc2\xa7104(3), substituted "used on or in connection with" for "applied to" and "five\n\n\x0cyears before the date on which the claim of distinctiveness is made" for "five years next preceding the date of\nthe filing of the application for its registration"\n1975\xe2\x80\x94Subsec. (d). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Subsec. (d). Pub. L. 87\xe2\x80\x93772, among other changes, substituted provisions authorizing the issuance\nof concurrent registrations to persons when they have become entitled to use such marks as a result of their\nconcurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any\nregistration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under the\nact of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in\nthe case of applications under the act of Feb. 20, 1905, and registered after July 5, 1947, for provisions which\nrestricted issuance of concurrent registrations to persons entitled to use such mark as a result of their\nconcurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved, and\nprovisions directing that issuance of the mark be upon such conditions and limitations as to the mode or place\nof use of the marks or the goods in connection with which such marks are used, for provisions which required\nissuance under conditions and limitations as to the mode or place of use of the goods in connection with which\nsuch registrations may be granted, and eliminated provisions which limited confusion, mistake, or deception\nto purchasers, required written notice of applications for concurrent registrations and of hearings thereon, and\npublication in the Official Gazette upon a decision to grant such a registration and permitted a court to order\nsuch a registration under section 4915 of the Revised Statutes.\nEFFECTIVE DATE OF 1999 AMENDMENTS\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nPub. L. 106\xe2\x80\x9343, \xc2\xa72(e), Aug. 5, 1999, 113 Stat. 218, provided that: "The amendments made by this section\n[amending this section and sections 1063, 1064, and 1092 of this title] shall take effect on the date of\nenactment of this Act [Aug. 5, 1999] and shall apply only to any application for registration filed on or after\nJanuary 16, 1996."\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1994 AMENDMENT\nPub. L. 103\xe2\x80\x93465, title V, \xc2\xa7523, Dec. 8, 1994, 108 Stat. 4982, provided that: "The amendments made by this\nsubtitle [subtitle B (\xc2\xa7\xc2\xa7521\xe2\x80\x93523) of title V of Pub. L. 103\xe2\x80\x93465, amending this section and section 1127 of this\ntitle] take effect one year after the date on which the WTO Agreement enters into force with respect to the\nUnited States [Jan. 1, 1995]."\nEFFECTIVE DATE OF 1993 AMENDMENT\nPub. L. 103\xe2\x80\x93182, title III, \xc2\xa7335, Dec. 8, 1993, 107 Stat. 2116, provided that:\n"(a) IN GENERAL.\xe2\x80\x94Subject to subsections (b) and (c), the amendments made by this subtitle [subtitle C\n(\xc2\xa7\xc2\xa7331\xe2\x80\x93335) of title III of Pub. L. 103\xe2\x80\x93182, enacting section 104A of Title 17, Copyrights, amending this\nsection, section 1091 of this title, and section 104 of Title 35, Patents, and amending provisions set out as a\nnote under section 109 of Title 17] take effect on the date the Agreement [North American Free Trade\nAgreement] enters into force with respect to the United States [Jan. 1, 1994].\n"(b) SECTION 331.\xe2\x80\x94The amendments made by section 331 [amending section 104 of Title 35] shall apply\nto all patent applications that are filed on or after the date of the enactment of this Act [Dec. 8, 1993]:\nProvided, That an applicant for a patent, or a patentee, may not establish a date of invention by reference to\nknowledge or use thereof, or other activity with respect thereto, in a NAFTA country, except as provided in\nsections 119 and 365 of title 35, United States Code, that is earlier than the date of the enactment of this Act.\n"(c) SECTION 333.\xe2\x80\x94The amendments made by section 333 [amending this section and section 1091 of\nthis title] shall apply only to trademark applications filed on or after the date of the enactment of this Act."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\n\n\x0cAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce to\nSecretary of Commerce, with certain exceptions, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2, eff. May 24, 1950, 15\nF.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.\nURUGUAY ROUND AGREEMENTS: ENTRY INTO FORCE\nThe Uruguay Round Agreements, including the World Trade Organization Agreement and agreements\nannexed to that Agreement, as referred to in section 3511(d) of Title 19, Customs Duties, entered into force\nwith respect to the United States on Jan. 1, 1995. See note set out under section 3511 of Title 19.\nMARKS REGISTERED UNDER TEN-YEAR PROVISO OF TRADE-MARK ACT OF 1905\nMarks registered under the "ten-year proviso" of section 5 of the act of Feb. 20, 1905, as amended, deemed\nto have become distinctive of the registrant\'s goods in commerce under par. (f) of this section, see section\n46(b) of act July 5, 1946, set out in note under section 1051 of this title.\n\n\xc2\xa71053. Service marks registrable\nSubject to the provisions relating to the registration of trademarks, so far as they are applicable,\nservice marks shall be registrable, in the same manner and with the same effect as are trademarks,\nand when registered they shall be entitled to the protection provided in this chapter in the case of\ntrademarks. Applications and procedure under this section shall conform as nearly as practicable to\nthose prescribed for the registration of trademarks.\n(July 5, 1946, ch. 540, title I, \xc2\xa73, 60 Stat. 429; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7105, Nov. 16, 1988, 102\nStat. 3938; Pub. L. 106\xe2\x80\x9343, \xc2\xa76(b), Aug. 5, 1999, 113 Stat. 220.)\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343 substituted "trademarks" for "trade-marks" wherever appearing.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 struck out "used in commerce" after "applicable, service marks" and ", except\nwhen used so as to represent falsely that the owner thereof makes or sells the goods on which such mark is\nused. The Commissioner may establish a separate register for such service marks" after "case of trade-marks".\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71054. Collective marks and certification marks registrable\nSubject to the provisions relating to the registration of trademarks, so far as they are applicable,\ncollective and certification marks, including indications of regional origin, shall be registrable under\nthis chapter, in the same manner and with the same effect as are trademarks, by persons, and nations,\n\n\x0cStates, municipalities, and the like, exercising legitimate control over the use of the marks sought to\nbe registered, even though not possessing an industrial or commercial establishment, and when\nregistered they shall be entitled to the protection provided in this chapter in the case of trademarks,\nexcept in the case of certification marks when used so as to represent falsely that the owner or a user\nthereof makes or sells the goods or performs the services on or in connection with which such mark\nis used. Applications and procedure under this section shall conform as nearly as practicable to those\nprescribed for the registration of trademarks.\n(July 5, 1946, ch. 540, title I, \xc2\xa74, 60 Stat. 429; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7106, Nov. 16, 1988, 102\nStat. 3938; Pub. L. 106\xe2\x80\x9343, \xc2\xa76(b), Aug. 5, 1999, 113 Stat. 220.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa71, 33 Stat. 724; May 4, 1906, ch. 2081, \xc2\xa71, 34 Stat. 168; Feb. 18, 1909, ch.\n144, 35 Stat. 628; Apr. 11, 1930, ch. 132, \xc2\xa74, 46 Stat. 155; June 10, 1938, ch. 332, \xc2\xa71, 52 Stat. 638.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343 substituted "trademarks" for "trade-marks" wherever appearing.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 substituted "origin," for "origin used in commerce," and "except in the case of\ncertification marks when" for "except when" and struck out after first sentence "The Commissioner may\nestablish a separate register for such collective marks and certification marks."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71055. Use by related companies affecting validity and registration\nWhere a registered mark or a mark sought to be registered is or may be used legitimately by\nrelated companies, such use shall inure to the benefit of the registrant or applicant for registration,\nand such use shall not affect the validity of such mark or of its registration, provided such mark is\nnot used in such manner as to deceive the public. If first use of a mark by a person is controlled by\nthe registrant or applicant for registration of the mark with respect to the nature and quality of the\ngoods or services, such first use shall inure to the benefit of the registrant or applicant, as the case\nmay be.\n(July 5, 1946, ch. 540, title I, \xc2\xa75, 60 Stat. 429; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7107, Nov. 16, 1988, 102\nStat. 3938.)\nAMENDMENTS\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 inserted at end "If first use of a mark by a person is controlled by the registrant or\napplicant for registration of the mark with respect to the nature and quality of the goods or services, such first\nuse shall inure to the benefit of the registrant or applicant, as the case may be."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\n\n\x0cRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71056. Disclaimer of unregistrable matter\n(a) Compulsory and voluntary disclaimers\nThe Director may require the applicant to disclaim an unregistrable component of a mark\notherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be\nregistered.\n(b) Prejudice of rights\nNo disclaimer, including those made under subsection (e) of section 1057 of this title, shall\nprejudice or affect the applicant\'s or registrant\'s rights then existing or thereafter arising in the\ndisclaimed matter, or his right of registration on another application if the disclaimed matter be or\nshall have become distinctive of his goods or services.\n(July 5, 1946, ch. 540, title I, \xc2\xa76, 60 Stat. 429; Pub. L. 87\xe2\x80\x93772, \xc2\xa73, Oct. 9, 1962, 76 Stat. 769; Pub. L.\n100\xe2\x80\x93667, title I, \xc2\xa7108, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV,\n\xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583.)\nAMENDMENTS\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1988\xe2\x80\x94Subsec. (b). Pub. L. 100\xe2\x80\x93667 substituted "subsection (e)" for "paragraph (d)".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772, among other changes, provided that an applicant may voluntarily disclaim a\ncomponent of a mark sought to be registered.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71057. Certificates of registration\n(a) Issuance and form\nCertificates of registration of marks registered upon the principal register shall be issued in the\nname of the United States of America, under the seal of the United States Patent and Trademark\nOffice, and shall be signed by the Director or have his signature placed thereon, and a record thereof\nshall be kept in the United States Patent and Trademark Office. The registration shall reproduce the\nmark, and state that the mark is registered on the principal register under this chapter, the date of the\nfirst use of the mark, the date of the first use of the mark in commerce, the particular goods or\n\n\x0cservices for which it is registered, the number and date of the registration, the term thereof, the date\non which the application for registration was received in the United States Patent and Trademark\nOffice, and any conditions and limitations that may be imposed in the registration.\n(b) Certificate as prima facie evidence\nA certificate of registration of a mark upon the principal register provided by this chapter shall be\nprima facie evidence of the validity of the registered mark and of the registration of the mark, of the\nowner\'s ownership of the mark, and of the owner\'s exclusive right to use the registered mark in\ncommerce on or in connection with the goods or services specified in the certificate, subject to any\nconditions or limitations stated in the certificate.\n(c) Application to register mark considered constructive use\nContingent on the registration of a mark on the principal register provided by this chapter, the\nfiling of the application to register such mark shall constitute constructive use of the mark,\nconferring a right of priority, nationwide in effect, on or in connection with the goods or services\nspecified in the registration against any other person except for a person whose mark has not been\nabandoned and who, prior to such filing\xe2\x80\x94\n(1) has used the mark;\n(2) has filed an application to register the mark which is pending or has resulted in registration\nof the mark; or\n(3) has filed a foreign application to register the mark on the basis of which he or she has\nacquired a right of priority, and timely files an application under section 1126(d) of this title to\nregister the mark which is pending or has resulted in registration of the mark.\n(d) Issuance to assignee\nA certificate of registration of a mark may be issued to the assignee of the applicant, but the\nassignment must first be recorded in the United States Patent and Trademark Office. In case of\nchange of ownership the Director shall, at the request of the owner and upon a proper showing and\nthe payment of the prescribed fee, issue to such assignee a new certificate of registration of the said\nmark in the name of such assignee, and for the unexpired part of the original period.\n(e) Surrender, cancellation, or amendment by owner\nUpon application of the owner the Director may permit any registration to be surrendered for\ncancellation, and upon cancellation appropriate entry shall be made in the records of the United\nStates Patent and Trademark Office. Upon application of the owner and payment of the prescribed\nfee, the Director for good cause may permit any registration to be amended or to be disclaimed in\npart: Provided, That the amendment or disclaimer does not alter materially the character of the mark.\nAppropriate entry shall be made in the records of the United States Patent and Trademark Office and\nupon the certificate of registration.\n(f) Copies of United States Patent and Trademark Office records as evidence\nCopies of any records, books, papers, or drawings belonging to the United States Patent and\nTrademark Office relating to marks, and copies of registrations, when authenticated by the seal of the\nUnited States Patent and Trademark Office and certified by the Director, or in his name by an\nemployee of the Office duly designated by the Director, shall be evidence in all cases wherein the\noriginals would be evidence; and any person making application therefor and paying the prescribed\nfee shall have such copies.\n(g) Correction of United States Patent and Trademark Office mistake\nWhenever a material mistake in a registration, incurred through the fault of the United States\nPatent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the\nfact and nature of such mistake shall be issued without charge and recorded and a printed copy\nthereof shall be attached to each printed copy of the registration and such corrected registration shall\nthereafter have the same effect as if the same had been originally issued in such corrected form, or in\nthe discretion of the Director a new certificate of registration may be issued without charge. All\ncertificates of correction heretofore issued in accordance with the rules of the United States Patent\n\n\x0cand Trademark Office and the registrations to which they are attached shall have the same force and\neffect as if such certificates and their issue had been specifically authorized by statute.\n(h) Correction of applicant\'s mistake\nWhenever a mistake has been made in a registration and a showing has been made that such\nmistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a\ncertificate of correction or, in his discretion, a new certificate upon the payment of the prescribed\nfee: Provided, That the correction does not involve such changes in the registration as to require\nrepublication of the mark.\n(July 5, 1946, ch. 540, title I, \xc2\xa77, 60 Stat. 430; Aug. 17, 1950, ch. 733, 64 Stat. 459; Pub. L. 87\xe2\x80\x93772,\n\xc2\xa74, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title\nI, \xc2\xa7109, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(3), Oct. 30, 1998, 112 Stat.\n3070; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93583; Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a), Mar. 17, 2010, 124 Stat. 66.)\nPRIOR PROVISIONS\nSubsecs. (a) and (c) are from acts Feb. 20, 1905, ch. 592, \xc2\xa711, 33 Stat. 727; Mar. 4, 1925, ch. 535, \xc2\xa73, 43\nStat. 1269.\nSubsec. (e) is from act Mar. 19, 1920, ch. 104, \xc2\xa77, 41 Stat. 535.\nSubsec. (f) is from act Mar. 4, 1925, ch. 535, \xc2\xa71, 43 Stat. 1268.\nAMENDMENTS\n2010\xe2\x80\x94Subsec. (a). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(1), inserted "United States" before "Patent and Trademark\nOffice" wherever appearing.\nSubsec. (b). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(2), substituted "owner\'s" for "registrant\'s" in two places.\nSubsec. (d). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(1), inserted "United States" before "Patent and Trademark Office".\nSubsec. (e). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(1), (3), inserted "United States" before "Patent and Trademark Office"\nin two places, substituted "owner" for "registrant" in two places, and struck out "or, if said certificate is lost or\ndestroyed, upon a certified copy thereof" after "certificate of registration".\nSubsec. (f). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(1), inserted "United States" before "Patent and Trademark Office" in\ntwo places.\nSubsec. (g). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(a)(4), amended subsec. (g) generally. Prior to amendment, text read as\nfollows: "Whenever a material mistake in a registration, incurred through the fault of the Patent and\nTrademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of\nsuch mistake, shall be issued without charge and recorded and a printed copy thereof shall be attached to each\nprinted copy of the registration certificate and such corrected registration shall thereafter have the same effect\nas if the same had been originally issued in such corrected form, or in the discretion of the Director a new\ncertificate of registration may be issued without charge. All certificates of correction heretofore issued in\naccordance with the rules of the Patent and Trademark Office and the registrations to which they are attached\nshall have the same force and effect as if such certificates and their issue had been specifically authorized by\nstatute."\n1999\xe2\x80\x94Subsecs. (a), (d) to (h). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever\nappearing.\n1998\xe2\x80\x94Subsec. (a). Pub. L. 105\xe2\x80\x93330 struck out second period at end of first sentence.\n1988\xe2\x80\x94Subsec. (b). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(1), amended subsec. (b) generally. Prior to amendment, subsec.\n(b) read as follows: "A certificate of registration of a mark upon the principal register provided by this chapter\nshall be prima facie evidence of the validity of the registration, registrant\'s ownership of the mark, and of\nregistrant\'s exclusive right to use the mark in commerce in connection with the goods or services specified in\nthe certificate, subject to any conditions and limitations stated therein."\nSubsec. (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(3), added subsec. (c). Former subsec. (c) redesignated (d).\nSubsec. (d). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(2), (4), redesignated former subsec. (c) as (d) and substituted\n"prescribed fee" for "fee herein provided". Former subsec. (d) redesignated (e).\nSubsec. (e). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(2), redesignated former subsec. (d) as (e). Former subsec. (e)\nredesignated (f).\nSubsec. (f). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(2), (5), redesignated former subsec. (e) as (f) and substituted "prescribed\nfee" for "fee required by law". Former subsec. (f) redesignated (g).\nSubsec. (g). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(2), redesignated former subsec. (f) as (g). Former subsec. (g)\n\n\x0credesignated (h).\nSubsec. (h). Pub. L. 100\xe2\x80\x93667, \xc2\xa7109(2), (6), redesignated former subsec. (g) as (h) and substituted\n"prescribed fee" for "required fee".\n1975\xe2\x80\x94Subsecs. (a), (c) to (f). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent\nOffice".\n1962\xe2\x80\x94Subsec. (a). Pub. L. 87\xe2\x80\x93772 substituted "signature placed" for "name printed", and struck out\nprovisions requiring an attestation by an assistant commissioner or by one of the law examiners designated by\nthe Commissioner, together with printed copies of the drawing and statement of the applicant, to be kept in\nbooks for that purpose.\nSubsec. (d). Pub. L. 87\xe2\x80\x93772, among other charges, removed the requirement of a fee in connection with the\nvoluntary surrender or cancellation of a registration.\nSubsec. (e). Pub. L. 87\xe2\x80\x93772 substituted "an employee of the Office" for "a chief of division", among other\nchanges.\nSubsec. (f). Pub. L. 87\xe2\x80\x93772, among other changes, struck out ", signed by the Commissioner and sealed\nwith the seal of the Patent Office" after "nature of such mistake".\n1950\xe2\x80\x94Subsec. (a). Act Aug. 17, 1950, made it unnecessary to include in the certificate a statement of the\napplicant.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71058. Duration, affidavits and fees\n(a) Time periods for required affidavits\nEach registration shall remain in force for 10 years, except that the registration of any mark shall\nbe canceled by the Director unless the owner of the registration files in the United States Patent and\nTrademark Office affidavits that meet the requirements of subsection (b), within the following time\nperiods:\n(1) Within the 1-year period immediately preceding the expiration of 6 years following the date\nof registration under this chapter or the date of the publication under section 1062(c) of this title.\n(2) Within the 1-year period immediately preceding the expiration of 10 years following the\ndate of registration, and each successive 10-year period following the date of registration.\n\n\x0c(3) The owner may file the affidavit required under this section within the 6-month grace period\nimmediately following the expiration of the periods established in paragraphs (1) and (2), together\nwith the fee described in subsection (b) and the additional grace period surcharge prescribed by\nthe Director.\n(b) Requirements for affidavit\nThe affidavit referred to in subsection (a) shall\xe2\x80\x94\n(1)(A) state that the mark is in use in commerce;\n(B) set forth the goods and services recited in the registration on or in connection with which\nthe mark is in use in commerce;\n(C) be accompanied by such number of specimens or facsimiles showing current use of the\nmark in commerce as may be required by the Director; and\n(D) be accompanied by the fee prescribed by the Director; or\n(2)(A) set forth the goods and services recited in the registration on or in connection with which\nthe mark is not in use in commerce;\n(B) include a showing that any nonuse is due to special circumstances which excuse such\nnonuse and is not due to any intention to abandon the mark; and\n(C) be accompanied by the fee prescribed by the Director.\n(c) Deficient affidavit\nIf any submission filed within the period set forth in subsection (a) is deficient, including that the\naffidavit was not filed in the name of the owner of the registration, the deficiency may be corrected\nafter the statutory time period, within the time prescribed after notification of the deficiency. Such\nsubmission shall be accompanied by the additional deficiency surcharge prescribed by the Director.\n(d) Notice of requirement\nSpecial notice of the requirement for such affidavit shall be attached to each certificate of\nregistration and notice of publication under section 1062(c) of this title.\n(e) Notification of acceptance or refusal\nThe Director shall notify any owner who files any affidavit required by this section of the\nDirector\'s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.\n(f) Designation of resident for service of process and notices\nIf the owner is not domiciled in the United States, the owner may designate, by a document filed\nin the United States Patent and Trademark Office, the name and address of a person resident in the\nUnited States on whom may be served notices or process in proceedings affecting the mark. Such\nnotices or process may be served upon the person so designated by leaving with that person or\nmailing to that person a copy thereof at the address specified in the last designation so filed. If the\nperson so designated cannot be found at the last designated address, or if the owner does not\ndesignate by a document filed in the United States Patent and Trademark Office the name and\naddress of a person resident in the United States on whom may be served notices or process in\nproceedings affecting the mark, such notices or process may be served on the Director.\n(July 5, 1946, ch. 540, title I, \xc2\xa78, 60 Stat. 431; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub.\nL. 97\xe2\x80\x93247, \xc2\xa78, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7110, Nov. 16, 1988, 102 Stat.\n3939; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7105, Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106\xe2\x80\x93113, div. B,\n\xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B), (C)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L.\n107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(3), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 111\xe2\x80\x93146, \xc2\xa73(d)(1),\nMar. 17, 2010, 124 Stat. 67.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa712, 33 Stat. 727.\nAMENDMENTS\n2010\xe2\x80\x94Pub. L. 111\xe2\x80\x93146 amended section generally. Prior to amendment, section related to duration of\nregistrations, affidavits of continuing use, grace period for submissions and correction of deficiencies, certain\n\n\x0cnotice requirements related to affidavits, and designation of resident for service of process and notices.\n2002\xe2\x80\x94Subsec. (f). Pub. L. 107\xe2\x80\x93273 amended subsec. (f) generally. Prior to amendment, text read as\nfollows: "If the registrant is not domiciled in the United States, the registrant shall designate by a written\ndocument filed in the Patent and Trademark Office the name and address of some person resident in the\nUnited States on whom may be served notices or process in proceedings affecting the mark. Such notices or\nprocess may be served upon the person so designated by leaving with that person or mailing to that person a\ncopy thereof at the address specified in the last designation so filed. If the person so designated cannot be\nfound at the address given in the last designation, such notice or process may be served upon the Director."\n1999\xe2\x80\x94Subsecs. (a) to (c). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director"\nfor "Commissioner" wherever appearing.\nSubsec. (e). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B), (C)], amended subsec. (e) identically,\nsubstituting "Director" for "Commissioner".\nSubsec. (f). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner".\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330 amended section catchline and text generally. Prior to amendment, text consisted\nof subsecs. (a) to (c) relating to affidavits of continuing use, registrations published under other provisions of\nlaw, and notification of acceptance or refusal of affidavits.\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667 substituted "ten" for "twenty" and "setting forth those goods or\nservices recited in the registration on or in connection with which the mark is in use in commerce and\nattaching to the affidavit a specimen or facsimile showing current use of the mark, or showing that any" for\n"showing that said mark is in use in commerce or showing that its".\n1982\xe2\x80\x94Subsecs. (a), (b). Pub. L. 97\xe2\x80\x93247 struck out "still" after "showing that said mark is", and inserted "in\ncommerce" after "use".\n1975\xe2\x80\x94Subsecs. (a), (b). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7109(a), Oct. 30, 1998, 112 Stat. 3069, provided that: "The provisions of section 8\nof the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to a\nregistration for trademark issued or renewed for a 20-year term, if the expiration date of the registration is on\nor after the effective date of this Act [probably should be "this title", see section 110 of Pub. L. 105\xe2\x80\x93330, set\nout as an Effective Date of 1998 Amendment note under section 1051 of this title]."\nFor provisions relating to applicability of amendment by Pub. L. 105\xe2\x80\x93330 to applications for registration of\ntrademarks, see section 109(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7109(c), Oct. 30, 1998, 112 Stat. 3069, provided that: "The provisions of section 8\nof the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to the\nfiling of an affidavit if the sixth or tenth anniversary of the registration, or the sixth anniversary of publication\nof the registration under section 12(c) of the Trademark Act of 1946 [15 U.S.C. 1062(c)], for which the\naffidavit is filed is on or after the effective date of this Act [probably should be "this title", see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as an Effective Date of 1998 Amendment note under section 1051 of this title]."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L.\n97\xe2\x80\x93247, set out as a note under section 294 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\n\n\x0cRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, and saving clause, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nREFERENCES TO TRADEMARK ACT OF 1946\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7102, Oct. 30, 1998, 112 Stat. 3064, provided that: "For purposes of this title [see\nShort Title of 1998 Amendment note set out under section 1051 of this title], the Act entitled \'An Act to\nprovide for the registration and protection of trademarks used in commerce, to carry out the provisions of\ncertain international conventions, and for other purposes\', approved July 5, 1946 (15 U.S.C. 1051 et seq.),\nshall be referred to as the \'Trademark Act of 1946\'."\nPENDING APPLICATIONS\nAct July 5, 1946, ch. 540, title XI, \xc2\xa751, as added Nov. 16, 1988, Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7135, 102 Stat.\n3948, provided that: "All certificates of registration based upon applications for registration pending in the\nPatent and Trademark Office on the effective date of the Trademark Law Revision Act of 1988 [see Effective\nDate of 1988 Amendment note set out under section 1051 of this title] shall remain in force for a period of 10\nyears."\n\n\xc2\xa71059. Renewal of registration\n(a) Period of renewal; time for renewal\nSubject to the provisions of section 1058 of this title, each registration may be renewed for periods\nof 10 years at the end of each successive 10-year period following the date of registration upon\npayment of the prescribed fee and the filing of a written application, in such form as may be\nprescribed by the Director. Such application may be made at any time within 1 year before the end of\neach successive 10-year period for which the registration was issued or renewed, or it may be made\nwithin a grace period of 6 months after the end of each successive 10-year period, upon payment of a\nfee and surcharge prescribed therefor. If any application filed under this section is deficient, the\ndeficiency may be corrected within the time prescribed after notification of the deficiency, upon\npayment of a surcharge prescribed therefor.\n(b) Notification of refusal of renewal\nIf the Director refuses to renew the registration, the Director shall notify the registrant of the\nCommissioner\'s 1 refusal and the reasons therefor.\n(c) Designation of resident for service of process and notices\nIf the registrant is not domiciled in the United States the registrant may designate, by a document\nfiled in the United States Patent and Trademark Office, the name and address of a person resident in\nthe United States on whom may be served notices or process in proceedings affecting the mark. Such\nnotices or process may be served upon the person so designated by leaving with that person or\nmailing to that person a copy thereof at the address specified in the last designation so filed. If the\nperson so designated cannot be found at the address given in the last designation, or if the registrant\ndoes not designate by a document filed in the United States Patent and Trademark Office the name\nand address of a person resident in the United States on whom may be served notices or process in\nproceedings affecting the mark, such notices or process may be served on the Director.\n(July 5, 1946, ch. 540, title I, \xc2\xa79, 60 Stat. 431; Pub. L. 87\xe2\x80\x93772, \xc2\xa75, Oct. 9, 1962, 76 Stat. 770; Pub. L.\n100\xe2\x80\x93667, title I, \xc2\xa7111, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7106, Oct. 30, 1998,\n112 Stat. 3067; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B), (C)], Nov. 29, 1999,\n113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(4), Nov. 2, 2002, 116 Stat.\n1907.)\n\n\x0cPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa712, 33 Stat. 727.\nAMENDMENTS\n2002\xe2\x80\x94Subsec. (c). Pub. L. 107\xe2\x80\x93273 amended subsec. (c) generally. Prior to amendment, text read as\nfollows: "If the registrant is not domiciled in the United States, the registrant shall designate by a written\ndocument filed in the Patent and Trademark Office the name and address of some person resident in the\nUnited States on whom may be served notices or process in proceedings affecting the mark. Such notices or\nprocess may be served upon the person so designated by leaving with that person or mailing to that person a\ncopy thereof at the address specified in the last designation so filed. If the person so designated cannot be\nfound at the address given in the last designation, such notice or process may be served upon the Director."\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner".\nSubsec. (b). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B), (C)], amended subsec. (b) identically,\nsubstituting "Director" for "Commissioner" in two places.\nSubsec. (c). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner".\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330 amended section catchline and text generally. Prior to amendment, text consisted\nof subsecs. (a) to (c) relating to period of renewal and time for renewal, notification of refusal of renewal, and\napplicants for renewal not domiciled in the United States.\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7111(1), substituted "ten" for "twenty".\nSubsec. (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7111(2), substituted "1051(e)" for "1051(d)".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 designated existing provisions as subsecs. (a) and (c), added subsec. (b), and among\nother changes, amended subsec. (a) by substituting provisions requiring a verified application specifying the\ngoods or services recited in the registration on or in connection with which the mark is still in use in\ncommerce and having attached a specimen showing current use of the mark, or showing that any nonuse is\ndue to special circumstances which excuse the nonuse and that it\'s not due to an intention to abandon the\nmark, for provisions requiring an affidavit by the registrant stating that the mark is still in use in commerce.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nFor provisions relating to applicability of amendment by Pub. L. 105\xe2\x80\x93330 to applications for registration of\ntrademarks, see section 109(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nPub. L. 105\xe2\x80\x93330, title I, \xc2\xa7109(d), Oct. 30, 1998, 112 Stat. 3069, provided that: "The amendment made by\nsection 106 [amending this section] shall apply to the filing of an application for renewal of a registration if\nthe expiration date of the registration for which the renewal application is filed is on or after the effective date\nof this Act [probably should be "this title", see section 110 of Pub. L. 105\xe2\x80\x93330, set out as an Effective Date of\n1998 Amendment note under section 1051 of this title]."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nRENEWAL UNDER PRIOR ACTS\nRenewal of registrations under prior acts, see section 46(b) of act July 5, 1946, set out as a note under\nsection 1051 of this title.\nEXTENSION OF TIME FOR RENEWAL BY FOREIGN REGISTRANT\nAct July 17, 1946, ch. 587, 60 Stat. 568, provided for extension of time for renewal by a foreign registrant\nand expired by its own terms July 17, 1949.\n\n\x0c1\n\nSo in original. Probably should be "Director\'s".\n\n\xc2\xa71060. Assignment\n(a)(1) A registered mark or a mark for which an application to register has been filed shall be\nassignable with the good will of the business in which the mark is used, or with that part of the good\nwill of the business connected with the use of and symbolized by the mark. Notwithstanding the\npreceding sentence, no application to register a mark under section 1051(b) of this title shall be\nassignable prior to the filing of an amendment under section 1051(c) of this title to bring the\napplication into conformity with section 1051(a) of this title or the filing of the verified statement of\nuse under section 1051(d) of this title, except for an assignment to a successor to the business of the\napplicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.\n(2) In any assignment authorized by this section, it shall not be necessary to include the good will\nof the business connected with the use of and symbolized by any other mark used in the business or\nby the name or style under which the business is conducted.\n(3) Assignments shall be by instruments in writing duly executed. Acknowledgment shall be\nprima facie evidence of the execution of an assignment, and when the prescribed information\nreporting the assignment is recorded in the United States Patent and Trademark Office, the record\nshall be prima facie evidence of execution.\n(4) An assignment shall be void against any subsequent purchaser for valuable consideration\nwithout notice, unless the prescribed information reporting the assignment is recorded in the United\nStates Patent and Trademark Office within 3 months after the date of the assignment or prior to the\nsubsequent purchase.\n(5) The United States Patent and Trademark Office shall maintain a record of information on\nassignments, in such form as may be prescribed by the Director.\n(b) An assignee not domiciled in the United States may designate by a document filed in the\nUnited States Patent and Trademark Office the name and address of a person resident in the United\nStates on whom may be served notices or process in proceedings affecting the mark. Such notices or\nprocess may be served upon the person so designated by leaving with that person or mailing to that\nperson a copy thereof at the address specified in the last designation so filed. If the person so\ndesignated cannot be found at the address given in the last designation, or if the assignee does not\ndesignate by a document filed in the United States Patent and Trademark Office the name and\naddress of a person resident in the United States on whom may be served notices or process in\nproceedings affecting the mark, such notices or process may be served upon the Director.\n(July 5, 1946, ch. 540, title I, \xc2\xa710, 60 Stat. 431; Pub. L. 87\xe2\x80\x93772, \xc2\xa76, Oct. 9, 1962, 76 Stat. 770; Pub.\nL. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7112, Nov. 16, 1988, 102 Stat.\n3939; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7107, Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106\xe2\x80\x9343, \xc2\xa76(a), Aug. 5,\n1999, 113 Stat. 220; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999,\n113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(5), Nov. 2, 2002, 116 Stat.\n1907.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa710, 33 Stat. 727.\nAMENDMENTS\n2002\xe2\x80\x94Subsecs. (a), (b). Pub. L. 107\xe2\x80\x93273 amended subsecs. (a) and (b) generally, in subsec. (a) substituting\npars. (1) to (5) for substantially identical undesignated provisions, and in subsec. (b) adding provisions\nrelating to service on Director if assignee does not designate name and address of a person resident in the\nUnited States on whom may be served notices or process.\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343, \xc2\xa76(a)(2), (3), which directed the amendment of this section by substituting "mark."\nfor "mark," in the first sentence and striking out a second period at the end of the third sentence, could not be\nexecuted because "mark," and the second period did not appear subsequent to amendment by Pub. L.\n105\xe2\x80\x93330. See 1998 Amendment note below.\n\n\x0cSubsec. (a). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner" in last sentence.\nPub. L. 106\xe2\x80\x9343, \xc2\xa76(a)(1), which directed the amendment of the penultimate sentence of this section by\nsubstituting "assignment" for "subsequent purchase", was executed by making the substitution for "subsequent\npurchase" in two places in the penultimate sentence of subsec. (a), after "date of the" and "prior to the", to\nreflect the probable intent of Congress.\nSubsec. (b). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner" in last sentence.\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330 amended section catchline and text generally. Prior to amendment, text read as\nfollows:\n"A registered mark or a mark for which application to register has been filed shall be assignable with the\ngoodwill of the business in which the mark is used, or with that part of the goodwill of the business connected\nwith the use of and symbolized by the mark,. However, no application to register a mark under section\n1051(b) of this title shall be assignable prior to the filing of the verified statement of use under section 1051(d)\nof this title, except to a successor to the business of the applicant, or portion thereof, to which the mark\npertains, if that business is ongoing and existing. In any assignment authorized by this section it shall not be\nnecessary to include the goodwill of the business connected with the use of and symbolized by any other mark\nused in the business or by the name or style under which the business is conducted. Assignments shall be by\ninstruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an\nassignment and when recorded in the Patent and Trademark Office the record shall be prima facie evidence of\nexecution. An assignment shall be void as against any subsequent purchaser for a valuable consideration\nwithout notice, unless it is recorded in the Patent and Trademark Office within three months after the date\nthereof or prior to such subsequent purchase. A separate record of assignments submitted for recording\nhereunder shall be maintained in the Patent and Trademark Office.\n"An assignee not domiciled in the United States shall be subject to and comply with the provisions of\nsection 1051(e) of this title."\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 substituted ". However, no application to register a mark under section 1051(b) of\nthis title shall be assignable prior to the filing of the verified statement of use under section 1051(d) of this\ntitle, except to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if\nthat business is ongoing and existing. In any assignment authorized by this section" for "and in any such\nassignment" in first par., and "1051(e)" for "1051(d)" in last par.\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 substituted provisions which require a separate record of assignments to be kept in\nthe Patent Office, for provisions which required the Commissioner to keep such record, and eliminated\nprovisions permitting the cancellation of any assigned registration at any time if the registered mark is being\nused by, or with the permission of, the assignee so as to misrepresent the source of the goods or services in\nconnection with which the mark is used.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nFor provisions relating to applicability of amendment by Pub. L. 105\xe2\x80\x93330 to applications for registration of\ntrademarks, see section 109(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\x0cTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71061. Execution of acknowledgments and verifications\nAcknowledgments and verifications required under this chapter may be made before any person\nwithin the United States authorized by law to administer oaths, or, when made in a foreign country,\nbefore any diplomatic or consular officer of the United States or before any official authorized to\nadminister oaths in the foreign country concerned whose authority is proved by a certificate of a\ndiplomatic or consular officer of the United States, or apostille of an official designated by a foreign\ncountry which, by treaty or convention, accords like effect to apostilles of designated officials in the\nUnited States, and shall be valid if they comply with the laws of the state or country where made.\n(July 5, 1946, ch. 540, title I, \xc2\xa711, 60 Stat. 432; Pub. L. 97\xe2\x80\x93247, \xc2\xa714(c), Aug. 27, 1982, 96 Stat. 321.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa72, 33 Stat. 724; Feb. 18, 1909, ch. 144, 35 Stat. 627.\nAMENDMENTS\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93247 substituted "is" for "shall be" after "whose authority", and inserted ", or apostille of\nan official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of\ndesignated officials in the United States".\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97\xe2\x80\x93247, set out as a\nnote under section 41 of Title 35, Patents.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71062. Publication\n(a) Examination and publication\nUpon the filing of an application for registration and payment of the prescribed fee, the Director\nshall refer the application to the examiner in charge of the registration of marks, who shall cause an\nexamination to be made and, if on such examination it shall appear that the applicant is entitled to\nregistration, or would be entitled to registration upon the acceptance of the statement of use required\nby section 1051(d) of this title, the Director shall cause the mark to be published in the Official\nGazette of the Patent and Trademark Office: Provided, That in the case of an applicant claiming\nconcurrent use, or in the case of an application to be placed in an interference as provided for in\nsection 1066 of this title the mark, if otherwise registrable, may be published subject to the\ndetermination of the rights of the parties to such proceedings.\n(b) Refusal of registration; amendment of application; abandonment\nIf the applicant is found not entitled to registration, the examiner shall advise the applicant thereof\nand of the reasons therefor. The applicant shall have a period of six months in which to reply or\namend his application, which shall then be reexamined. This procedure may be repeated until (1) the\nexaminer finally refuses registration of the mark or (2) the applicant fails for a period of six months\nto reply or amend or appeal, whereupon the application shall be deemed to have been abandoned,\nunless it can be shown to the satisfaction of the Director that the delay in responding was\nunintentional, whereupon such time may be extended.\n\n\x0c(c) Republication of marks registered under prior acts\nA registrant of a mark registered under the provisions of the Act of March 3, 1881, or the Act of\nFebruary 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the\npayment of the prescribed fee file with the Director an affidavit setting forth those goods stated in the\nregistration on which said mark is in use in commerce and that the registrant claims the benefits of\nthis chapter for said mark. The Director shall publish notice thereof with a reproduction of said mark\nin the Official Gazette, and notify the registrant of such publication and of the requirement for the\naffidavit of use or nonuse as provided for in subsection (b) of section 1058 of this title. Marks\npublished under this subsection shall not be subject to the provisions of section 1063 of this title.\n(July 5, 1946, ch. 540, title I, \xc2\xa712, 60 Stat. 432; Pub. L. 87\xe2\x80\x93772, \xc2\xa77, Oct. 9, 1962, 76 Stat. 770; Pub.\nL. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7113, Nov. 16, 1988, 102 Stat.\n3940; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7104, Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106\xe2\x80\x93113, div. B,\n\xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583.)\nREFERENCES IN TEXT\nActs March 3, 1881 and February 20, 1905, referred to in subsec. (c), are acts Mar. 3, 1881, ch. 138, 21\nStat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this\nchapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to\n109 of this title.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa76, 33 Stat. 726; Mar. 2, 1907, ch. 2573, \xc2\xa72, 34 Stat. 1252.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\n1998\xe2\x80\x94Subsec. (b). Pub. L. 105\xe2\x80\x93330 substituted "unintentional" for "unavoidable" in last sentence.\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667 substituted "prescribed fee" for "fee herein provided", and "entitled to\nregistration, or would be entitled to registration upon the acceptance of the statement of use required by\nsection 1051(d) of this title, the" for "entitled to registration, the".\n1975\xe2\x80\x94Subsec. (a). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Subsec. (a). Pub. L. 87\xe2\x80\x93772 inserted proviso permitting publication of the mark in the case of an\napplicant claiming concurrent use, or an application to be placed in an interference, if such mark is otherwise\nregistrable, subject to the determination of the rights of the parties.\nSubsec. (c). Pub. L. 87\xe2\x80\x93772 inserted "Marks published under" before "this subsection shall not be subject".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nFor provisions relating to applicability of amendment by Pub. L. 105\xe2\x80\x93330 to applications for registration of\ntrademarks, see section 109(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\n\n\x0cFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71063. Opposition to registration\n(a) Any person who believes that he would be damaged by the registration of a mark upon the\nprincipal register, including the registration of any mark which would be likely to cause dilution by\nblurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the\nprescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor,\nwithin thirty days after the publication under subsection (a) of section 1062 of this title of the mark\nsought to be registered. Upon written request prior to the expiration of the thirty-day period, the time\nfor filing opposition shall be extended for an additional thirty days, and further extensions of time for\nfiling opposition may be granted by the Director for good cause when requested prior to the\nexpiration of an extension. The Director shall notify the applicant of each extension of the time for\nfiling opposition. An opposition may be amended under such conditions as may be prescribed by the\nDirector.\n(b) Unless registration is successfully opposed\xe2\x80\x94\n(1) a mark entitled to registration on the principal register based on an application filed under\nsection 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent\nand Trademark Office, a certificate of registration shall be issued, and notice of the registration\nshall be published in the Official Gazette of the Patent and Trademark Office; or\n(2) a notice of allowance shall be issued to the applicant if the applicant applied for registration\nunder section 1051(b) of this title.\n(July 5, 1946, ch. 540, title I, \xc2\xa713, 60 Stat. 433; Pub. L. 87\xe2\x80\x93772, \xc2\xa78, Oct. 9, 1962, 76 Stat. 771; Pub.\nL. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93\xe2\x80\x93600, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1955; Pub. L.\n97\xe2\x80\x93247, \xc2\xa79(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7114, Nov. 16, 1988, 102 Stat.\n3940; Pub. L. 106\xe2\x80\x9343, \xc2\xa72(b), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title\nIV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 109\xe2\x80\x93312, \xc2\xa73(b), Oct. 6,\n2006, 120 Stat. 1732.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa76, 7, 33 Stat. 726; Mar. 2, 1907, ch. 2573, \xc2\xa72, 34 Stat. 1252.\nAMENDMENTS\n2006\xe2\x80\x94Subsec. (a). Pub. L. 109\xe2\x80\x93312 substituted "the registration of any mark which would be likely to\ncause dilution by blurring or dilution by tarnishment" for "as a result of dilution".\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\nPub. L. 106\xe2\x80\x9343 inserted ", including as a result of dilution under section 1125(c) of this title," after\n"principal register" in first sentence.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 designated existing provisions as subsec. (a), substituted "prescribed fee" for\n"required fee", and added subsec. (b).\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93247 substituted "an" for "a verified" after "required fee, file", inserted "when requested\nprior to the expiration of an extension" after "Commissioner for good cause" and struck out provision that an\nunverified opposition could be filed by a duly authorized attorney, but such opposition would be null and void\nunless verified by the opposer within a reasonable time after such filing is fixed by the Commissioner.\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93600 substituted provisions relating to extensions of time for filing opposition upon\nwritten request prior to the expiration of the thirty-day period for an additional thirty days, and further\nextensions for good cause, for provisions relating to extensions of the time for filing opposition for good cause\nshown.\nPub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 inserted "An opposition may be amended under such conditions as may be\nprescribed by the Commissioner", and struck out "notice of" after "file a verified" and "time for filing".\n\n\x0cEFFECTIVE DATE OF 1999 AMENDMENTS\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nAmendment by Pub. L. 106\xe2\x80\x9343 effective Aug. 5, 1999, and applicable only to any application for\nregistration filed on or after Jan. 16, 1996, see section 2(e) of Pub. L. 106\xe2\x80\x9343, set out as a note under section\n1052 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L.\n97\xe2\x80\x93247, set out as a note under section 294 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENTS\nPub. L. 93\xe2\x80\x93600, \xc2\xa74, Jan. 2, 1975, 88 Stat. 1955, provided that: "This Act [amending this section and\nsections 1071 and 1117 of this title] shall become effective upon enactment [Jan. 2, 1975], but shall not affect\nany suit, proceeding, or appeal then pending."\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71064. Cancellation of registration\nA petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment\nof the prescribed fee, be filed as follows by any person who believes that he is or will be damaged,\nincluding as a result of a likelihood of dilution by blurring or dilution by tarnishment under section\n1125(c) of this title, by the registration of a mark on the principal register established by this chapter,\nor under the Act of March 3, 1881, or the Act of February 20, 1905:\n(1) Within five years from the date of the registration of the mark under this chapter.\n(2) Within five years from the date of publication under section 1062(c) of this title of a mark\nregistered under the Act of March 3, 1881, or the Act of February 20, 1905.\n(3) At any time if the registered mark becomes the generic name for the goods or services, or a\nportion thereof, for which it is registered, or is functional, or has been abandoned, or its\nregistration was obtained fraudulently or contrary to the provisions of section 1054 of this title or\nof subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or\ncontrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or\nif the registered mark is being used by, or with the permission of, the registrant so as to\nmisrepresent the source of the goods or services on or in connection with which the mark is used.\nIf the registered mark becomes the generic name for less than all of the goods or services for\nwhich it is registered, a petition to cancel the registration for only those goods or services may be\nfiled. A registered mark shall not be deemed to be the generic name of goods or services solely\nbecause such mark is also used as a name of or to identify a unique product or service. The\nprimary significance of the registered mark to the relevant public rather than purchaser motivation\nshall be the test for determining whether the registered mark has become the generic name of\ngoods or services on or in connection with which it has been used.\n\n\x0c(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February\n20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this\ntitle.\n(5) At any time in the case of a certification mark on the ground that the registrant (A) does not\ncontrol, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in\nthe production or marketing of any goods or services to which the certification mark is applied, or\n(C) permits the use of the certification mark for purposes other than to certify, or (D)\ndiscriminately refuses to certify or to continue to certify the goods or services of any person who\nmaintains the standards or conditions which such mark certifies:\nProvided, That the Federal Trade Commission may apply to cancel on the grounds specified in\nparagraphs (3) and (5) of this section any mark registered on the principal register established by this\nchapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to\nprohibit the registrant from using its certification mark in advertising or promoting recognition of the\ncertification program or of the goods or services meeting the certification standards of the registrant.\nSuch uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long\nas the registrant does not itself produce, manufacture, or sell any of the certified goods or services to\nwhich its identical certification mark is applied.\n(July 5, 1946, ch. 540, title I, \xc2\xa714, 60 Stat. 433; Pub. L. 87\xe2\x80\x93772, \xc2\xa79, Oct. 9, 1962, 76 Stat. 771; Pub.\nL. 97\xe2\x80\x93247, \xc2\xa79(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98\xe2\x80\x93620, title I, \xc2\xa7102, Nov. 8, 1984, 98 Stat.\n3335; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7115, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105\xe2\x80\x93330, title II,\n\xc2\xa7201(a)(4), title III, \xc2\xa7301, Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106\xe2\x80\x9343, \xc2\xa72(c), Aug. 5, 1999, 113\nStat. 218; Pub. L. 109\xe2\x80\x93312, \xc2\xa73(c), Oct. 6, 2006, 120 Stat. 1732.)\nREFERENCES IN TEXT\nActs March 3, 1881 and February 20, 1905, referred to in opening par. and pars. (2) and (4), are acts Mar. 3,\n1881, ch. 138, 21 Stat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as\ninconsistent with this chapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was\nclassified to sections 81 to 109 of this title.\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa713, 33 Stat. 728.\nAMENDMENTS\n2006\xe2\x80\x94Pub. L. 109\xe2\x80\x93312 substituted ", including as a result of a likelihood of dilution by blurring or dilution\nby tarnishment under section 1125(c) of this title," for ", including as a result of dilution under section 1125(c)\nof this title," in introductory provisions.\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343 inserted ", including as a result of dilution under section 1125(c) of this title," after\n"damaged" in introductory provisions.\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330, \xc2\xa7301, inserted at end "Nothing in paragraph (5) shall be deemed to prohibit the\nregistrant from using its certification mark in advertising or promoting recognition of the certification program\nor of the goods or services meeting the certification standards of the registrant. Such uses of the certification\nmark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself\nproduce, manufacture, or sell any of the certified goods or services to which its identical certification mark is\napplied."\nPar. (3). Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(4), inserted "or is functional," before "or has been abandoned".\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(1), (7), in introductory provisions, inserted "as follows" and substituted\n"1905:" for "1905\xe2\x80\x94", and in concluding proviso substituted "paragraphs (3) and (5)" for "subsections (c) and\n(e)".\nPar. (1). Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(2), substituted "(1) Within" for "(a) within" and "chapter." for "chapter; or".\nPar. (2). Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(3), substituted "(2) Within" for "(b) within", and "1905." for "1905; or".\nPar. (3). Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(4), substituted "(3)" for "(c)" and amended text generally. Prior to\namendment, text read as follows: "at any time if the registered mark becomes the common descriptive name of\nan article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the\nprovisions of section 1054 of this title or of subsections (a), (b), or (c) of section 1052 of this title for a\nregistration hereunder, or contrary to similar prohibitory provisions of said prior Acts for a registration\n\n\x0cthereunder, or if the registered mark is being used by, or with the permission of, the registrant so as to\nmisrepresent the source of the goods or services in connection with which the mark is used. A registered mark\nshall not be deemed to be the common descriptive name of goods or services solely because such mark is also\nused as a name of or to identify a unique product or service. The primary significance of the registered mark\nto the relevant public rather than purchaser motivation shall be the test for determining whether the registered\nmark has become the common descriptive name of goods or services in connection with which it has been\nused; or".\nPar. (4). Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(5), substituted "(4) At" for "(d) at", and "title." for "title; or".\nPar. (5). Pub. L. 100\xe2\x80\x93667, \xc2\xa7115(6), substituted "(5) At" for "(e) at" and redesignated former pars. (1) to (4)\nas subpars. (A) to (D), respectively.\n1984\xe2\x80\x94Par. (c). Pub. L. 98\xe2\x80\x93620 inserted provision that a registered mark shall not be deemed to be the\ncommon descriptive name of goods or services solely because such mark is also used as a name of or to\nidentify a unique product or service, and that the primary significance of the registered mark to the relevant\npublic rather than purchaser motivation shall be the test for determining whether the registered mark has\nbecome the common descriptive name of goods or services in connection with which it has been used.\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93247 struck out "verified" before "petition to cancel" in provision preceding par. (a).\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 inserted provisions which require a verified petition to cancel a registration,\nredesignated par. (d) as (e), added par. (d) which is composed of provisions formerly part of par. (c), and in\nsaid par. (c), substituted "registrant" for "assignee", and struck out "on which the patent has expired" before\n"or has been abandoned", and "has been assigned and" before "is being used by".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x9343 effective Aug. 5, 1999, and applicable only to any application for\nregistration filed on or after Jan. 16, 1996, see section 2(e) of Pub. L. 106\xe2\x80\x9343, set out as a note under section\n1052 of this title.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by section 201(a)(4) of Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any\ncivil action filed or proceeding before the United States Patent and Trademark Office commenced on or after\nsuch date relating to the registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under\nsection 1051 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L.\n97\xe2\x80\x93247, set out as a note under section 294 of Title 35, Patents.\nFINALITY OF JUDGMENTS PRIOR TO NOVEMBER 8, 1984\nPub. L. 98\xe2\x80\x93620, title I, \xc2\xa7104, Nov. 8, 1984, 98 Stat. 3336, provided that: "Nothing in this title [amending\nthis section and section 1127 of this title and enacting provisions set out as a note under section 1051 of this\ntitle] shall be construed to provide a basis for reopening of any final judgment entered prior to the date of\nenactment of this title [Nov. 8, 1984]."\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of Federal Trade Commission, with certain exceptions, to Chairman of such\nCommission, see Reorg. Plan No. 8 of 1950, \xc2\xa71, eff. May 24, 1950, 15 F.R. 3175, 64 Stat. 1264, set out under\nsection 41 of this title.\nRESTRICTION ON USE OF FUNDS TO CANCEL REGISTRATION OF TRADEMARKS\nFor provisions restricting the use of funds authorized to be appropriated to carry out section 41 et seq. of\nthis title for fiscal year 1980, 1981, or 1982, for the purpose of taking any action under this section with\nrespect to the cancellation of the registration of any mark on the ground that such mark has become the\n\n\x0ccommon descriptive name of an article or substance, see section 18 of Pub. L. 96\xe2\x80\x93252, set out as a note under\nsection 57c of this title.\n\n\xc2\xa71065. Incontestability of right to use mark under certain conditions\nExcept on a ground for which application to cancel may be filed at any time under paragraphs (3)\nand (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark\nregistered on the principal register infringes a valid right acquired under the law of any State or\nTerritory by use of a mark or trade name continuing from a date prior to the date of registration\nunder this chapter of such registered mark, the right of the owner to use such registered mark in\ncommerce for the goods or services on or in connection with which such registered mark has been in\ncontinuous use for five consecutive years subsequent to the date of such registration and is still in use\nin commerce, shall be incontestable: Provided, That\xe2\x80\x94\n(1) there has been no final decision adverse to the owner\'s claim of ownership of such mark for\nsuch goods or services, or to the owner\'s right to register the same or to keep the same on the\nregister; and\n(2) there is no proceeding involving said rights pending in the United States Patent and\nTrademark Office or in a court and not finally disposed of; and\n(3) an affidavit is filed with the Director within one year after the expiration of any such\nfive-year period setting forth those goods or services stated in the registration on or in connection\nwith which such mark has been in continuous use for such five consecutive years and is still in use\nin commerce, and other matters specified in paragraphs (1) and (2) of this section; and\n(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or\nservices or a portion thereof, for which it is registered.\nSubject to the conditions above specified in this section, the incontestable right with reference to a\nmark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881,\nor the Act of February 20, 1905, upon the filing of the required affidavit with the Director within one\nyear after the expiration of any period of five consecutive years after the date of publication of a\nmark under the provisions of subsection (c) of section 1062 of this title.\nThe Director shall notify any registrant who files the above-prescribed affidavit of the filing\nthereof.\n(July 5, 1946, ch. 540, title I, \xc2\xa715, 60 Stat. 433; Pub. L. 87\xe2\x80\x93772, \xc2\xa710, Oct. 9, 1962, 76 Stat. 771; Pub.\nL. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97\xe2\x80\x93247, \xc2\xa710, Aug. 27, 1982, 96 Stat. 320; Pub. L.\n100\xe2\x80\x93667, title I, \xc2\xa7116, Nov. 16, 1988, 102 Stat. 3941; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV,\n\xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 111\xe2\x80\x93146, \xc2\xa73(b), Mar. 17, 2010,\n124 Stat. 67.)\nREFERENCES IN TEXT\nActs March 3, 1881 and February 20, 1905, referred to in text, are acts Mar. 3, 1881, ch. 138, 21 Stat. 502\nand Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by act\nJuly 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title.\nAMENDMENTS\n2010\xe2\x80\x94Pub. L. 111\xe2\x80\x93146, \xc2\xa73(b)(1), substituted "right of the owner" for "right of the registrant" in\nintroductory provisions.\nPar. (1). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(b)(2), amended par. (1) generally. Prior to amendment, par. (1) read as\nfollows: "there has been no final decision adverse to registrant\'s claim of ownership of such mark for such\ngoods or services, or to registrant\'s right to register the same or to keep the same on the register; and".\nPar. (2). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(b)(3), inserted "United States" before "Patent and Trademark Office".\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" in par. (3) and in two places in\nconcluding provisions.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667, in introductory provisions, substituted "paragraphs (3) and (5)" for "subsections\n(c) and (e)", in par. (3) "paragraphs" for "subsections", and in par. (4) "the generic name for the goods or\n\n\x0cservices or a portion thereof, for which it is registered" for "the common descriptive name of any article or\nsubstance, patented or otherwise".\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93247 substituted "registration" for "the publication" in provision preceding par. (1).\n1975\xe2\x80\x94Par. (2). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 substituted "(c) and (e) of section 1064" for "(c) and (d) of section 1064" in\nprovision preceding par. (1), and struck out "or trade name" after "in a mark" in par. (4).\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L.\n97\xe2\x80\x93247, set out as a note under section 294 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71066. Interference; declaration by Director\nUpon petition showing extraordinary circumstances, the Director may declare that an interference\nexists when application is made for the registration of a mark which so resembles a mark previously\nregistered by another, or for the registration of which another has previously made application, as to\nbe likely when used on or in connection with the goods or services of the applicant to cause\nconfusion or mistake or to deceive. No interference shall be declared between an application and the\nregistration of a mark the right to the use of which has become incontestable.\n(July 5, 1946, ch. 540, title I, \xc2\xa716, 60 Stat. 434; Pub. L. 87\xe2\x80\x93772, \xc2\xa711, Oct. 9, 1962, 76 Stat. 771; Pub.\nL. 97\xe2\x80\x93247, \xc2\xa711, Aug. 27, 1982, 96 Stat. 321; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7117, Nov. 16, 1988, 102 Stat.\n3941; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa77, 33 Stat. 726.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 substituted "used on or in connection with the goods or services" for "applied to\nthe goods or when used in connection with the services".\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93247 substituted "Upon petition showing extraordinary circumstances, the Commissioner\nmay declare that an interference exists when application is made for the registration of a mark which so\nresembles a mark previously registered by another, or for the registration of which another has previously\nmade application, as to be likely when applied to the goods or when used in connection with the services of\n\n\x0cthe applicant to cause confusion or mistake or to deceive" for "Whenever application is made for the\nregistration of a mark which so resembles a mark previously registered by another, or for the registration of\nwhich another has previously made application, as to be likely when applied to the goods or when used in\nconnection with the services of the applicant to cause confusion or mistake or to deceive, the Commissioner\nmay declare that an interference exists".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 struck out "purchasers" after "or to deceive".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L.\n97\xe2\x80\x93247, set out as a note under section 294 of Title 35, Patents.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71067. Interference, opposition, and proceedings for concurrent use registration\nor for cancellation; notice; Trademark Trial and Appeal Board\n(a) In every case of interference, opposition to registration, application to register as a lawful\nconcurrent user, or application to cancel the registration of a mark, the Director shall give notice to\nall parties and shall direct a Trademark Trial and Appeal Board to determine and decide the\nrespective rights of registration.\n(b) The Trademark Trial and Appeal Board shall include the Director, Deputy 1 Director of the\nUnited States Patent and Trademark Office 2 the Commissioner for Patents, the Commissioner for\nTrademarks, and administrative trademark judges who are appointed by the Secretary of Commerce,\nin consultation with the Director.\n(c) AUTHORITY OF THE SECRETARY.\xe2\x80\x94The Secretary of Commerce may, in his or her\ndiscretion, deem the appointment of an administrative trademark judge who, before August 12, 2008,\nheld office pursuant to an appointment by the Director to take effect on the date on which the\nDirector initially appointed the administrative trademark judge.\n(d) DEFENSE TO CHALLENGE OF APPOINTMENT.\xe2\x80\x94It shall be a defense to a challenge to\nthe appointment of an administrative trademark judge on the basis of the judge\'s having been\noriginally appointed by the Director that the administrative trademark judge so appointed was acting\nas a de facto officer.\n(July 5, 1946, ch. 540, title I, \xc2\xa717, 60 Stat. 434; Pub. L. 85\xe2\x80\x93609, \xc2\xa71(a), Aug. 8, 1958, 72 Stat. 540;\nPub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96\xe2\x80\x93455, \xc2\xa71, Oct. 15, 1980, 94 Stat. 2024;\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74716], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93580;\nPub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713203(a)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 110\xe2\x80\x93313,\n\xc2\xa71(b), Aug. 12, 2008, 122 Stat. 3014.)\nPRIOR PROVISIONS\n\n\x0cAct Feb. 20, 1905, ch. 592, \xc2\xa77, 33 Stat. 726.\nAMENDMENTS\n2008\xe2\x80\x94Subsec. (b). Pub. L. 110\xe2\x80\x93313, \xc2\xa71(b)(1), inserted "Deputy Director of the United States Patent and\nTrademark Office" after "Director," and substituted "appointed by the Secretary of Commerce, in consultation\nwith the Director" for "appointed by the Director".\nSubsecs. (c), (d). Pub. L. 110\xe2\x80\x93313, \xc2\xa71(b)(2), added subsecs. (c) and (d).\n2002\xe2\x80\x94Subsec. (b). Pub. L. 107\xe2\x80\x93273, which directed amendment of subsec. (b) by inserting "the Deputy\nCommissioner," after "Commissioner,", could not be executed because "Commissioner," does not appear in\ntext.\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 amended section generally. Prior to amendment, section read as follows:\n"In every case of interference, opposition to registration, application to register as a lawful concurrent user,\nor application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall\ndirect a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.\n"The Trademark Trial and Appeal Board shall include the Commissioner, the Deputy Commissioner, the\nAssistant Commissioners, and members appointed by the Commissioner. Employees of the Patent and\nTrademark Office and other persons, all of whom shall be competent in trademark law, shall be eligible for\nappointment as members. Each case shall be heard by at least three members of the Board, the members\nhearing such case to be designated by the Commissioner."\n1980\xe2\x80\x94Pub. L. 96\xe2\x80\x93455 inserted provisions requiring that the Trademark Trial and Appeal Board include the\nDeputy Commissioner and members appointed by the Commissioner and provisions that employees of the\nPatent and Trademark Office and other persons, all of whom shall be competent in trademark law, shall be\neligible for appointment as members; and struck out provision that the Board include Patent and Trademark\nOffice employees, designated by the Commissioner and whose qualifications have been approved by the Civil\nService Commission as being adequate for appointment to the position of examiner in charge of interferences.\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1958\xe2\x80\x94Pub. L. 85\xe2\x80\x93609 substituted "a Trademark Trial and Appeal Board" for "the examiner in charge of\ninterferences" in first paragraph, and inserted second paragraph relating to the composition of the Board.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1980 AMENDMENT; BOARD MEMBERSHIP AS OF OCTOBER 15, 1980,\nUNAFFECTED\nPub. L. 96\xe2\x80\x93455, \xc2\xa72, Oct. 15, 1980, 94 Stat. 2024, provided that: "This amendment [amending this section]\nshall become effective on the date of its enactment [Oct. 15, 1980]. Members of the Trademark Trial and\nAppeal Board on the date of enactment shall continue to be members under and in accordance with the\nprovisions of section 17 of the Act of July 5, 1946, as amended [this section], in effect immediately preceding\nthe date of enactment."\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nEFFECTIVE DATE OF 1958 AMENDMENT\nPub. L. 85\xe2\x80\x93609, \xc2\xa73, Aug. 8, 1958, 72 Stat. 541, provided that: "This Act [amending this section and\nsections 1070, 1071, 1092, and 1113 of this title] shall take effect on approval [Aug. 8, 1958]; it shall apply to\nex parte appeals taken to the Commissioner prior to the date of approval which have not been heard but shall\nnot apply to any such appeal which has been heard or decided in which event further proceedings may be had\nas though this Act had not been passed; it shall apply to inter partes cases instituted prior to the date of\napproval which have not been heard by an examiner of interferences, but shall not apply to any such case\nwhich has been heard or decided by an examiner of interferences in which event further proceedings may be\nhad as though this Act had not passed."\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\x0cTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nREORGANIZATION PLAN NO. 5 OF 1950\nPub. L. 85\xe2\x80\x93609, \xc2\xa72, Aug. 8, 1958, 72 Stat. 540, provided that: "The provisions of this Act [amending this\nsection and sections 1070, 1071, 1092, and 1113 of this title] shall be subject to Reorganization Plan No. 5 of\n1950 (64 Stat. 1263)."\n1\n\nSo in original. Probably should be preceded by "the".\n\n2\n\nSo in original. Probably should be followed by a comma.\n\n\xc2\xa71068. Action of Director in interference, opposition, and proceedings for\nconcurrent use registration or for cancellation\nIn such proceedings the Director may refuse to register the opposed mark, may cancel the\nregistration, in whole or in part, may modify the application or registration by limiting the goods or\nservices specified therein, may otherwise restrict or rectify with respect to the register the registration\nof a registered mark, may refuse to register any or all of several interfering marks, or may register\nthe mark or marks for the person or persons entitled thereto, as the rights of the parties under this\nchapter may be established in the proceedings: Provided, That in the case of the registration of any\nmark based on concurrent use, the Director shall determine and fix the conditions and limitations\nprovided for in subsection (d) of section 1052 of this title. However, no final judgment shall be\nentered in favor of an applicant under section 1051(b) of this title before the mark is registered, if\nsuch applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of\nthis title.\n(July 5, 1946, ch. 540, title I, \xc2\xa718, 60 Stat. 434; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7118, Nov. 16, 1988, 102\nStat. 3941; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa77, 13, 33 Stat. 726, 728.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" in two places.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 substituted "the registration, in whole or in part, may modify the application or\nregistration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to\nthe register" for "or restrict", and "may refuse" for "or may refuse", and inserted provisions that no final\njudgment be entered before mark is registered if applicant cannot prevail without establishing constructive\nuse.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\x0cTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71069. Application of equitable principles in inter partes proceedings\nIn all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where\napplicable may be considered and applied.\n(July 5, 1946, ch. 540, title I, \xc2\xa719, 60 Stat. 434; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub.\nL. 100\xe2\x80\x93667, title I, \xc2\xa7119, Nov. 16, 1988, 102 Stat. 3941.)\nAMENDMENTS\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 struck out at end "The provisions of this section shall also govern proceedings\nheretofore begun in the Patent and Trademark Office and not finally determined."\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71070. Appeals to Trademark Trial and Appeal Board from decisions of\nexaminers\nAn appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the\nexaminer in charge of the registration of marks upon the payment of the prescribed fee.\n(July 5, 1946, ch. 540, title I, \xc2\xa720, 60 Stat. 435; Pub. L. 85\xe2\x80\x93609, \xc2\xa71(b), Aug. 8, 1958, 72 Stat. 540.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa78, 13, 33 Stat. 726, 728.\nAMENDMENTS\n1958\xe2\x80\x94Pub. L. 85\xe2\x80\x93609 substituted "Trademark Trial and Appeal Board" for "Commissioner in person" and\n"fee" for "fees", and struck out "of interferences or" after "examiner in charge".\nEFFECTIVE DATE OF 1958 AMENDMENT\nFor effective date and applicability of amendment by Pub. L. 85\xe2\x80\x93609, see section 3 of Pub. L. 85\xe2\x80\x93609, set\nout as a note under section 1067 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\n\n\x0cand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nREORGANIZATION PLAN NO. 5 OF 1950\nAmendment by Pub. L. 85\xe2\x80\x93609 as subject to Reorganization Plan No. 5 of 1950, see note set out under\nsection 1067 of this title.\n\n\xc2\xa71071. Appeal to courts\n(a) Persons entitled to appeal; United States Court of Appeals for the Federal Circuit; waiver\nof civil action; election of civil action by adverse party; procedure\n(1) An applicant for registration of a mark, party to an interference proceeding, party to an\nopposition proceeding, party to an application to register as a lawful concurrent user, party to a\ncancellation proceeding, a registrant who has filed an affidavit as provided in section 1058 of this\ntitle or section 1141k of this title, or an applicant for renewal, who is dissatisfied with the decision of\nthe Director or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals\nfor the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section:\nProvided, That such appeal shall be dismissed if any adverse party to the proceeding, other than the\nDirector, shall, within twenty days after the appellant has filed notice of appeal according to\nparagraph (2) of this subsection, files notice with the Director that he elects to have all further\nproceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall\nhave thirty days thereafter within which to file a civil action under subsection (b) of this section, in\ndefault of which the decision appealed from shall govern the further proceedings in the case.\n(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the\nappellant shall file in the United States Patent and Trademark Office a written notice of appeal\ndirected to the Director, within such time after the date of the decision from which the appeal is\ntaken as the Director prescribes, but in no case less than 60 days after that date.\n(3) The Director shall transmit to the United States Court of Appeals for the Federal Circuit a\ncertified list of the documents comprising the record in the United States Patent and Trademark\nOffice. The court may request that the Director forward the original or certified copies of such\ndocuments during pendency of the appeal. In an ex parte case, the Director shall submit to that court\na brief explaining the grounds for the decision of the United States Patent and Trademark Office,\naddressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice\nof the time and place of the hearing to the Director and the parties in the appeal.\n(4) The United States Court of Appeals for the Federal Circuit shall review the decision from\nwhich the appeal is taken on the record before the United States Patent and Trademark Office. Upon\nits determination the court shall issue its mandate and opinion to the Director, which shall be entered\nof record in the United States Patent and Trademark Office and shall govern the further proceedings\nin the case. However, no final judgment shall be entered in favor of an applicant under section\n1051(b) of this title before the mark is registered, if such applicant cannot prevail without\nestablishing constructive use pursuant to section 1057(c) of this title.\n(b) Civil action; persons entitled to; jurisdiction of court; status of Director; procedure\n(1) Whenever a person authorized by subsection (a) of this section to appeal to the United States\nCourt of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or\nTrademark Trial and Appeal Board, said person may, unless appeal has been taken to said United\nStates Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within\nsuch time after such decision, not less than sixty days, as the Director appoints or as provided in\nsubsection (a) of this section. The court may adjudge that an applicant is entitled to a registration\n\n\x0cupon the application involved, that a registration involved should be canceled, or such other matter\nas the issues in the proceeding require, as the facts in the case may appear. Such adjudication shall\nauthorize the Director to take any necessary action, upon compliance with the requirements of law.\nHowever, no final judgment shall be entered in favor of an applicant under section 1051(b) of this\ntitle before the mark is registered, if such applicant cannot prevail without establishing constructive\nuse pursuant to section 1057(c) of this title.\n(2) The Director shall not be made a party to an inter partes proceeding under this subsection, but\nhe shall be notified of the filing of the complaint by the clerk of the court in which it is filed and\nshall have the right to intervene in the action.\n(3) In any case where there is no adverse party, a copy of the complaint shall be served on the\nDirector, and, unless the court finds the expenses to be unreasonable, all the expenses of the\nproceeding shall be paid by the party bringing the case, whether the final decision is in favor of such\nparty or not. In suits brought hereunder, the record in the United States Patent and Trademark Office\nshall be admitted on motion of any party, upon such terms and conditions as to costs, expenses, and\nthe further cross-examination of the witnesses as the court imposes, without prejudice to the right of\nany party to take further testimony. The testimony and exhibits of the record in the United States\nPatent and Trademark Office, when admitted, shall have the same effect as if originally taken and\nproduced in the suit.\n(4) Where there is an adverse party, such suit may be instituted against the party in interest as\nshown by the records of the United States Patent and Trademark Office at the time of the decision\ncomplained of, but any party in interest may become a party to the action. If there are adverse parties\nresiding in a plurality of districts not embraced within the same State, or an adverse party residing in\na foreign country, the United States District Court for the Eastern District of Virginia shall have\njurisdiction and may issue summons against the adverse parties directed to the marshal of any district\nin which any adverse party resides. Summons against adverse parties residing in foreign countries\nmay be served by publication or otherwise as the court directs.\n(July 5, 1946, ch. 540, title I, \xc2\xa721, 60 Stat. 435; July 19, 1952, ch. 950, \xc2\xa72, 66 Stat. 814; Pub. L.\n85\xe2\x80\x93609, \xc2\xa71(c), Aug. 8, 1958, 72 Stat. 540; Pub. L. 87\xe2\x80\x93772, \xc2\xa712, Oct. 9, 1962, 76 Stat. 771; Pub. L.\n93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93\xe2\x80\x93600, \xc2\xa72, Jan. 2, 1975, 88 Stat. 1955; Pub. L.\n97\xe2\x80\x93164, title I, \xc2\xa7162(1), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98\xe2\x80\x93620, title IV, \xc2\xa7414(b), Nov. 8, 1984, 98\nStat. 3363; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7120, Nov. 16, 1988, 102 Stat. 3942; Pub. L. 106\xe2\x80\x93113, div. B,\n\xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 111\xe2\x80\x93146,\n\xc2\xa73(c), Mar. 17, 2010, 124 Stat. 67; Pub. L. 112\xe2\x80\x9329, \xc2\xa79(a), Sept. 16, 2011, 125 Stat. 316.)\nCODIFICATION\nPub. L. 93\xe2\x80\x93596, which provided for the substitution of "Patent and Trademark Office" for "Patent Office"\neach time appearing in this chapter, became effective Jan. 2, 1975, as did Pub. L. 93\xe2\x80\x93600, which in the course\nof amending subsec. (a)(3) and (4) of this section, referred merely to "Patent Office". "Patent and Trademark\nOffice" has been substituted for "Patent Office" in subsec. (a)(3) and (4) on authority of Pub. L. 93\xe2\x80\x93596.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa79, 22, 33 Stat. 727, 729; Mar. 2, 1929, ch. 488, \xc2\xa72(b), 45 Stat. 1478.\nAMENDMENTS\n2011\xe2\x80\x94Subsec. (b)(4). Pub. L. 112\xe2\x80\x9329 substituted "United States District Court for the Eastern District of\nVirginia" for "United States District Court for the District of Columbia".\n2010\xe2\x80\x94Subsec. (a)(1). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(c)(2), inserted "or section 1141k of this title" after "section\n1058 of this title".\nSubsec. (a)(2) to (4). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(c)(1), inserted "United States" before "Patent and Trademark\nOffice" wherever appearing.\nSubsec. (b)(3). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(c)(1), inserted "United States" before "Patent and Trademark Office" in\ntwo places.\nSubsec. (b)(4). Pub. L. 111\xe2\x80\x93146, \xc2\xa73(c)(1), (3), inserted "United States" before "Patent and Trademark\nOffice" and substituted "If there are" for "If there be".\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\n\n\x0c1988\xe2\x80\x94Subsec. (a)(1). Pub. L. 100\xe2\x80\x93667, \xc2\xa7120(1), made technical amendments to references in the original\nact to subsection (b) of this section resulting in no change in text, and substituted "paragraph (2) of this\nsubsection" for "subsection (a)(2) of this section" and "action under subsection" for "action under said\nsubsection".\nSubsec. (a)(4). Pub. L. 100\xe2\x80\x93667, \xc2\xa7120(2), inserted provision that no final judgment be entered before mark\nis registered if applicant cannot prevail without establishing constructive use.\nSubsec. (b)(1). Pub. L. 100\xe2\x80\x93667, \xc2\xa7120(3), made technical amendments to references in the original act to\nsubsection (a) of this section resulting in no change in text and inserted provision that no final judgment be\nentered before mark is registered if applicant cannot prevail without establishing constructive use.\nSubsec. (b)(3). Pub. L. 100\xe2\x80\x93667, \xc2\xa7120(4), amended first sentence generally. Prior to amendment, first\nsentence read as follows: "In all cases where there is no adverse party, a copy of the complaint shall be served\non the Commissioner; and all the expenses of the proceedings shall be paid by the party bringing them,\nwhether the final decision is in his favor or not."\n1984\xe2\x80\x94Subsec. (a)(2). Pub. L. 98\xe2\x80\x93620 substituted provisions requiring the appellant to file a written notice\nof appeal in the Patent and Trademark Office directed to the Commissioner for provisions requiring the\nappellant to file the notice of appeal with the Commissioner, and struck out provision which required the\nnotice of appeal to specify the party or parties taking the appeal, to designate the decision or part thereof\nappealed from, and to state that the appeal was being taken to the United States Court of Appeals for the\nFederal Circuit.\nSubsec. (a)(3). Pub. L. 98\xe2\x80\x93620 substituted provisions requiring the Commissioner to transmit to the United\nStates Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the\nPatent and Trademark Office for provisions which required the Commissioner to transmit to the court certified\ncopies of all the necessary original papers and evidence in the case specified by the appellant, and any\nadditional papers and evidence specified by the appellee, and inserted provision that the court may request that\nthe Commissioner forward the original or certified copies of such documents during the pendency of the\nappeal.\nSubsec. (a)(4). Pub. L. 98\xe2\x80\x93620 substituted provisions requiring the court to review the decision from which\nthe appeal is taken on the record before the Patent and Trademark Office, and, upon its determination, to issue\nits mandate and opinion to the Commissioner for provisions which required the court to decide such appeal on\nthe evidence produced before the Patent and Trademark Office and to return to the Commissioner a certificate\nof its proceedings and decision.\n1982\xe2\x80\x94Subsecs. (a)(1), (2), (b)(1). Pub. L. 97\xe2\x80\x93164 substituted "United States Court of Appeals for the\nFederal Circuit" for "United States Court of Customs and Patent Appeals" and "Court of Customs and Patent\nAppeals" wherever appearing.\n1975\xe2\x80\x94Subsec. (a)(2). Pub. L. 93\xe2\x80\x93600 substituted provisions relating to filing of notice of appeal with the\nCommissioner and the contents of such notice of appeal, for provisions relating to giving notice of appeal to\nthe Commissioner and requiring filing in the Patent Office reasons for appeal.\nSubsec. (a)(3). Pub. L. 93\xe2\x80\x93600 inserted provision requiring the Commissioner to furnish the court with a\nbrief explaining the grounds of the decision of the Office.\nPub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nSubsec. (a)(4). Pub. L. 93\xe2\x80\x93600 substituted "decide" for "hear and determine" and struck out "Upon its\ndetermination," before "the court shall return" and provision requiring the decision to be confined to the points\nset forth in the reasons of appeal.\nPub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office" in two places.\nSubsec. (b)(3), (4). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 amended section generally, and among other changes, incorporated with necessary\nchanges in language, the various provisions of Title 35, Patents, relating to the procedure of appeals to the\nCourt of Customs and Patent Appeals and review by civil action in patent cases, which had previously been\nincorporated by reference only.\n1958\xe2\x80\x94Pub. L. 85\xe2\x80\x93609 authorized appeals by persons dissatisfied with the decision of the Trademark Trial\nand Appeal Board, and substituted "Trademark Trial and Appeal Board" for "Commissioner" in proviso.\n1952\xe2\x80\x94Act July 19, 1952, substituted references to new title 35 for repealed section of title 35.\nEFFECTIVE DATE OF 2011 AMENDMENT\nPub. L. 112\xe2\x80\x9329, \xc2\xa79(b), Sept. 16, 2011, 125 Stat. 316, provided that: "The amendments made by this section\n[amending this section and sections 32, 145, 146, 154, and 293 of Title 35, Patents] shall take effect on the\ndate of the enactment of this Act [Sept. 16, 2011] and shall apply to any civil action commenced on or after\nthat date."\n\n\x0cEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1984 AMENDMENT\nAmendment by Pub. L. 98\xe2\x80\x93620 applicable to proceedings pending in the Patent and Trademark Office on\nNov. 8, 1984, and to appeals pending in the United States Court of Appeals for the Federal Circuit on that\ndate, see section 414(c) of Pub. L. 98\xe2\x80\x93620, set out as a note under section 142 of Title 35, Patents.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93164 effective Oct. 1, 1982, see section 402 of Pub. L. 97\xe2\x80\x93164, set out as a note\nunder section 171 of Title 28, Judiciary and Judicial Procedure.\nEFFECTIVE DATE OF 1975 AMENDMENTS\nAmendment by Pub. L. 93\xe2\x80\x93600 effective Jan. 2, 1975, but not to affect any suit, proceeding, or appeal then\npending, see section 4 of Pub. L. 93\xe2\x80\x93600, set out as a note under section 1063 of this title.\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nEFFECTIVE DATE OF 1958 AMENDMENT\nFor effective date and applicability of amendment by Pub. L. 85\xe2\x80\x93609, see section 3 of Pub. L. 85\xe2\x80\x93609, set\nout as a note under section 1067 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nREORGANIZATION PLAN NO. 5 OF 1950\nAmendment by Pub. L. 85\xe2\x80\x93609 as subject to Reorganization Plan No. 5 of 1950, see note set out under\nsection 1067 of this title.\n\n\xc2\xa71072. Registration as constructive notice of claim of ownership\nRegistration of a mark on the principal register provided by this chapter or under the Act of March\n3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant\'s claim of\nownership thereof.\n(July 5, 1946, ch. 540, title I, \xc2\xa722, 60 Stat. 435.)\nREFERENCES IN TEXT\nActs March 3, 1881, and February 20, 1905, referred to in text, are acts Mar. 3, 1881, ch. 138, 21 Stat. 502\nand Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by act\nJuly 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\x0cSUBCHAPTER II\xe2\x80\x94THE SUPPLEMENTAL REGISTER\n\xc2\xa71091. Supplemental register\n(a) Marks registerable\nIn addition to the principal register, the Director shall keep a continuation of the register provided\nin paragraph (b) of section 1 of the Act of March 19, 1920, entitled "An Act to give effect to certain\nprovisions of the convention for the protection of trademarks and commercial names, made and\nsigned in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other\npurposes", to be called the supplemental register. All marks capable of distinguishing applicant\'s\ngoods or services and not registrable on the principal register provided in this chapter, except those\ndeclared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title,\nwhich are in lawful use in commerce by the owner thereof, on or in connection with any goods or\nservices may be registered on the supplemental register upon the payment of the prescribed fee and\ncompliance with the provisions of subsections (a) and (e) of section 1051 of this title so far as they\nare applicable. Nothing in this section shall prevent the registration on the supplemental register of a\nmark, capable of distinguishing the applicant\'s goods or services and not registrable on the principal\nregister under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if\nsuch mark has been in lawful use in commerce by the owner thereof, on or in connection with any\ngoods or services, since before December 8, 1993.\n(b) Application and proceedings for registration\nUpon the filing of an application for registration on the supplemental register and payment of the\nprescribed fee the Director shall refer the application to the examiner in charge of the registration of\nmarks, who shall cause an examination to be made and if on such examination it shall appear that the\napplicant is entitled to registration, the registration shall be granted. If the applicant is found not\nentitled to registration the provisions of subsection (b) of section 1062 of this title shall apply.\n(c) Nature of mark\nFor the purposes of registration on the supplemental register, a mark may consist of any\ntrademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname,\ngeographical name, numeral, device, any matter that as a whole is not functional, or any combination\nof any of the foregoing, but such mark must be capable of distinguishing the applicant\'s goods or\nservices.\n(July 5, 1946, ch. 540, title II, \xc2\xa723, 60 Stat. 435; Pub. L. 87\xe2\x80\x93772, \xc2\xa713, Oct. 9, 1962, 76 Stat. 773;\nPub. L. 100\xe2\x80\x93667, title I, \xc2\xa7121, Nov. 16, 1988, 102 Stat. 3942; Pub. L. 103\xe2\x80\x93182, title III, \xc2\xa7333(b),\nDec. 8, 1993, 107 Stat. 2114; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(5), Oct. 30, 1998, 112 Stat. 3070;\nPub. L. 106\xe2\x80\x9343, \xc2\xa76(b), Aug. 5, 1999, 113 Stat. 220; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV,\n\xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 107\xe2\x80\x93273, div. C, title III,\n\xc2\xa713207(b)(6), Nov. 2, 2002, 116 Stat. 1908.)\nREFERENCES IN TEXT\nParagraph (b) of section 1 of the Act of March 19, 1920, referred to in subsec. (a), is paragraph (b) of\nsection 1 of act Mar. 19, 1920, ch. 104, 41 Stat. 533, which was classified to section 121(b) of this title, and\nrepealed by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444, insofar as inconsistent.\nPRIOR PROVISIONS\nActs Mar. 19, 1920, ch. 104, \xc2\xa71, 41 Stat. 533; Apr. 11, 1930, ch. 132, \xc2\xa74, 46 Stat. 155; June 10, 1938, ch.\n332, \xc2\xa72, 52 Stat. 638.\nAMENDMENTS\n2002\xe2\x80\x94Subsec. (c). Pub. L. 107\xe2\x80\x93273 struck out second comma after "numeral".\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\nPub. L. 106\xe2\x80\x9343 substituted "trademarks" for "trade-marks".\n\n\x0cSubsec. (b). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1998\xe2\x80\x94Subsec. (c). Pub. L. 105\xe2\x80\x93330 substituted ", device, any matter that as a whole is not functional," for\n"or device".\n1993\xe2\x80\x94Subsec. (a). Pub. L. 103\xe2\x80\x93182 substituted "(d), and (e)(3)" for "and (d)" and inserted at end "Nothing\nin this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing\nthe applicant\'s goods or services and not registrable on the principal register under this chapter, that is declared\nto be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by\nthe owner thereof, on or in connection with any goods or services, since before December 8, 1993."\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667, \xc2\xa7121(6), struck out undesignated concluding par. which read as follows: "Upon a\nproper showing by the applicant that he requires domestic registration as a basis for foreign protection of his\nmark, the Commissioner may waive the requirement of a full year\'s use and may grant registration forthwith."\nSubsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7121(1), (4), designated first par. as subsec. (a), made technical amendment\nto reference in the original act to subsections (a), (b), (c), and (d) of section 1052 of this title resulting in no\nchange in text, substituted "are in lawful use in commerce by the owner thereof, on" for "have been in lawful\nuse in commerce by the proprietor thereof, upon", struck out "for the year preceding the filing of the\napplication" after "any goods and services", and inserted "subsections (a) and (e) of" before "section 1051".\nSubsec. (b). Pub. L. 100\xe2\x80\x93667, \xc2\xa7121(2), (5), designated second par. as subsec. (b) and substituted\n"prescribed fee" for "fee herein provided".\nSubsec. (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7121(3), designated third par. as subsec. (c).\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 struck out "has begun the lawful use of his mark in foreign commerce and that he"\nbefore "requires domestic registration" in last par.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1993 AMENDMENT\nAmendment by Pub. L. 103\xe2\x80\x93182 applicable only to trademark applications filed on or after Dec. 8, 1993,\nsee section 335(c) of Pub. L. 103\xe2\x80\x93182, set out in a note under section 1052 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71092. Publication; not subject to opposition; cancellation\nMarks for the supplemental register shall not be published for or be subject to opposition, but shall\nbe published on registration in the Official Gazette of the Patent and Trademark Office. Whenever\nany person believes that such person is or will be damaged by the registration of a mark on the\nsupplemental register\xe2\x80\x94\n(1) for which the effective filing date is after the date on which such person\'s mark became\nfamous and which would be likely to cause dilution by blurring or dilution by tarnishment under\n\n\x0csection 1125(c) of this title; or\n(2) on grounds other than dilution by blurring or dilution by tarnishment,\nsuch person may at any time, upon payment of the prescribed fee and the filing of a petition\nstating the ground therefor, apply to the Director to cancel such registration. The Director shall refer\nsuch application to the Trademark Trial and Appeal Board which shall give notice thereof to the\nregistrant. If it is found after a hearing before the Board that the registrant is not entitled to\nregistration, or that the mark has been abandoned, the registration shall be canceled by the Director.\nHowever, no final judgment shall be entered in favor of an applicant under section 1051(b) of this\ntitle before the mark is registered, if such applicant cannot prevail without establishing constructive\nuse pursuant to section 1057(c) of this title.\n(July 5, 1946, ch. 540, title II, \xc2\xa724, 60 Stat. 436; Pub. L. 85\xe2\x80\x93609, \xc2\xa71(d), Aug. 8, 1958, 72 Stat. 540;\nPub. L. 87\xe2\x80\x93772, \xc2\xa714, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub.\nL. 100\xe2\x80\x93667, title I, \xc2\xa7122, Nov. 16, 1988, 102 Stat. 3943; Pub. L. 106\xe2\x80\x9343, \xc2\xa72(d), Aug. 5, 1999, 113\nStat. 218; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93583; Pub. L. 109\xe2\x80\x93312, \xc2\xa73(d), Oct. 6, 2006, 120 Stat. 1732.)\nPRIOR PROVISIONS\nAct Mar. 19, 1920, ch. 104, \xc2\xa72, 41 Stat. 534.\nAMENDMENTS\n2006\xe2\x80\x94Pub. L. 109\xe2\x80\x93312 amended second sentence generally. Prior to amendment, second sentence read as\nfollows: "Whenever any person believes that he is or will be damaged by the registration of a mark on this\nregister, including as a result of dilution under section 1125(c) of this title, he may at any time, upon payment\nof the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel\nsuch registration." The words following "tarnishment," in second sentence are shown as a flush provision\nnotwithstanding directory language showing them as part of cl. (2), to reflect the probable intent of Congress.\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\nPub. L. 106\xe2\x80\x9343 inserted ", including as a result of dilution under section 1125(c) of this title," after\n"register" in second sentence.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 struck out "verified" after "filing of a", substituted "is not entitled to registration,"\nfor "was not entitled to register the mark at the time of his application for registration thereof," struck out "is\nnot used by the registrant or" after "that the mark", and inserted provision that no final judgment be entered\nbefore mark is registered if applicant cannot prevail without establishing constructive use.\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 provided for payment of the prescribed fee and the filing of a verified petition.\n1958\xe2\x80\x94Pub. L. 85\xe2\x80\x93609 substituted provisions requiring the Commissioner to refer applications to the\nTrademark Trial and Appeal Board for provisions which required referral to the examiner in charge of\ninterferences.\nEFFECTIVE DATE OF 1999 AMENDMENTS\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nAmendment by Pub. L. 106\xe2\x80\x9343 effective Aug. 5, 1999, and applicable only to any application for\nregistration filed on or after Jan. 16, 1996, see section 2(e) of Pub. L. 106\xe2\x80\x9343, set out as a note under section\n1052 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nEFFECTIVE DATE OF 1958 AMENDMENT\nFor effective date and applicability of amendment by Pub. L. 85\xe2\x80\x93609, see section 3 of Pub. L. 85\xe2\x80\x93609, set\n\n\x0cout as a note under section 1067 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nREORGANIZATION PLAN NO. 5 OF 1950\nAmendment by Pub. L. 85\xe2\x80\x93609 as subject to Reorganization Plan No. 5 of 1950, see note set out under\nsection 1067 of this title.\n\n\xc2\xa71093. Registration certificates for marks on principal and supplemental\nregisters to be different\nThe certificates of registration for marks registered on the supplemental register shall be\nconspicuously different from certificates issued for marks registered on the principal register.\n(July 5, 1946, ch. 540, title II, \xc2\xa725, 60 Stat. 436.)\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71094. Provisions of chapter applicable to registrations on supplemental register\nThe provisions of this chapter shall govern so far as applicable applications for registration and\nregistrations on the supplemental register as well as those on the principal register, but applications\nfor and registrations on the supplemental register shall not be subject to or receive the advantages of\nsections 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063 to 1068, inclusive, 1072, 1115\nand 1124 of this title.\n(July 5, 1946, ch. 540, title II, \xc2\xa726, 60 Stat. 436; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7123, Nov. 16, 1988, 102\nStat. 3943; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(6), Oct. 30, 1998, 112 Stat. 3070.)\nPRIOR PROVISIONS\nAct Mar. 19, 1920, ch. 104, \xc2\xa76, 41 Stat. 535.\nAMENDMENTS\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330 substituted ", 1057(c)," for "1057(c),,".\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 inserted reference to sections 1051(b) and 1057(c).\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\n\n\x0cand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71095. Registration on principal register not precluded\nRegistration of a mark on the supplemental register, or under the Act of March 19, 1920, shall not\npreclude registration by the registrant on the principal register established by this chapter.\nRegistration of a mark on the supplemental register shall not constitute an admission that the mark\nhas not acquired distinctiveness.\n(July 5, 1946, ch. 540, title II, \xc2\xa727, 60 Stat. 436; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7124, Nov. 16, 1988, 102\nStat. 3943.)\nREFERENCES IN TEXT\nAct of March 19, 1920, referred to in text, is act Mar. 19, 1920, ch. 104, \xc2\xa7\xc2\xa71\xe2\x80\x939, 41 Stat. 533, which was\ngenerally classified to sections 121 to 128 of this title, and which was repealed insofar as inconsistent with this\nchapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444.\nAMENDMENTS\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 inserted at end "Registration of a mark on the supplemental register shall not\nconstitute an admission that the mark has not acquired distinctiveness."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71096. Registration on supplemental register not used to stop importations\nRegistration on the supplemental register or under the Act of March 19, 1920, shall not be filed in\nthe Department of the Treasury or be used to stop importations.\n(July 5, 1946, ch. 540, title II, \xc2\xa728, 60 Stat. 436.)\nREFERENCES IN TEXT\nAct of March 19, 1920, referred to in text, is act Mar. 19, 1920, ch. 104, \xc2\xa7\xc2\xa71\xe2\x80\x939, 41 Stat. 533, which was\ngenerally classified to sections 121 to 128 of this title, and which was repealed insofar as inconsistent with this\nchapter by act July 5, 1946, ch. 540, \xc2\xa746(b), 60 Stat. 444.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\nSUBCHAPTER III\xe2\x80\x94GENERAL PROVISIONS\n\xc2\xa71111. Notice of registration; display with mark; recovery of profits and damages\nin infringement suit\nNotwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the\nPatent and Trademark Office, may give notice that his mark is registered by displaying with the mark\nthe words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the\nletter R enclosed within a circle, thus \xc2\xae; and in any suit for infringement under this chapter by such a\n\n\x0cregistrant failing to give such notice of registration, no profits and no damages shall be recovered\nunder the provisions of this chapter unless the defendant had actual notice of the registration.\n(July 5, 1946, ch. 540, title III, \xc2\xa729, 60 Stat. 436; Pub. L. 87\xe2\x80\x93772, \xc2\xa715, Oct. 9, 1962, 76 Stat. 773;\nPub. L. 93\xe2\x80\x93596, \xc2\xa7\xc2\xa71, 2, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7125, Nov. 16, 1988,\n102 Stat. 3943.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa728, 33 Stat. 730; Mar. 19, 1920, ch. 104, \xc2\xa7\xc2\xa75, 6, 41 Stat. 534, 535.\nAMENDMENTS\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 struck out "as used" after "with the mark".\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office, may give notice that his mark is\nregistered by displaying with the mark as used the words \'Registered in U.S. Patent and Trademark Office\' or\n\'Reg. U.S. Pat. & Tm. Off.\' " for "Patent Office, may give notice that his mark is registered by displaying with\nthe mark as used the words \'Registered in U.S. Patent Office\' or \'Reg. U.S. Pat. Off.\' ".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 substituted "in the Patent Office, may" for "under the Act of March 3, 1881, or the\nAct of February 20, 1905, or on the principal register established by this chapter, shall", and "to give such\nnotice of registration," for "so to mark goods bearing the registered mark, or by a registrant under the Act of\nMarch 19, 1920, or by the registrant of a mark on the supplemental register provided by this chapter".\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nPub. L. 93\xe2\x80\x93596, \xc2\xa74, Jan. 2, 1975, 88 Stat. 1949, provided that: "This Act [amending this section, sections\n1051, 1052, 1057, 1058, 1060, 1062, 1063, 1065, 1067, 1069, 1071, 1092, 1112, 1113, 1116 to 1120, 1123,\nand 1127 of this title, and sections 2 to 4, 6 to 8, 10, 11, 21 to 26, 31 to 33, 41, 104, 119, 121, 122, 135, 142 to\n144, 146, 152, 153, 253 to 255, 261, 288, and 293 of Title 35, Patents, and enacting provisions set out as a\nnote under section 1 of title 35] shall become effective upon enactment [Jan. 2, 1975]. However, any registrant\nmay continue to give notice of his registration in accordance with section 29 of the Trademark Act of 1946\n(60 Stat. 427), as amended Oct. 9, 1962 (76 Stat. 769) [this section], as an alternative to notice in accordance\nwith section 29 of the Trademark Act as amended by section 2 of this Act, regardless of whether his mark was\nregistered before or after the effective date of this Act."\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71112. Classification of goods and services; registration in plurality of classes\nThe Director may establish a classification of goods and services, for convenience of Patent and\nTrademark Office administration, but not to limit or extend the applicant\'s or registrant\'s rights. The\napplicant may apply to register a mark for any or all of the goods or services on or in connection\nwith which he or she is using or has a bona fide intention to use the mark in commerce: Provided,\nThat if the Director by regulation permits the filing of an application for the registration of a mark\nfor goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for\nfiling an application in each class shall be paid, and the Director may issue a single certificate of\nregistration for such mark.\n(July 5, 1946, ch. 540, title IV, \xc2\xa730, 60 Stat. 436; Pub. L. 87\xe2\x80\x93772, \xc2\xa716, Oct. 9, 1962, 76 Stat. 773;\nPub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7126, Nov. 16, 1988, 102\nStat. 3943; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nAct May 4, 1906, ch. 2081, \xc2\xa72, 34 Stat. 169.\n\n\x0cAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 inserted "or registrant\'s" after "applicant\'s" and substituted "may apply" for "may\nfile an application", "goods or services on or in connection with which he or she is using or has a bona fide\nintention to use the mark in commerce:" for "goods and services upon or in connection with which he is\nactually using the mark:", and "Provided, That if the Commissioner by regulation permits the filing of an\napplication for the registration of a mark for goods or services which fall" for "Provided, That when such\ngoods or services fall".\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772, among other changes, substituted "may" for "shall".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71113. Fees\n(a) Applications; services; materials\nThe Director shall establish fees for the filing and processing of an application for the registration\nof a trademark or other mark and for all other services performed by and materials furnished by the\nPatent and Trademark Office related to trademarks and other marks. Fees established under this\nsubsection may be adjusted by the Director once each year to reflect, in the aggregate, any\nfluctuations during the preceding 12 months in the Consumer Price Index, as determined by the\nSecretary of Labor. Changes of less than 1 percent may be ignored. No fee established under this\nsection shall take effect until at least 30 days after notice of the fee has been published in the Federal\nRegister and in the Official Gazette of the Patent and Trademark Office.\n(b) Waiver; Indian products\nThe Director may waive the payment of any fee for any service or material related to trademarks\nor other marks in connection with an occasional request made by a department or agency of the\nGovernment, or any officer thereof. The Indian Arts and Crafts Board will not be charged any fee to\nregister Government trademarks of genuineness and quality for Indian products or for products of\nparticular Indian tribes and groups.\n(July 5, 1946, ch. 540, title V, \xc2\xa731, 60 Stat. 437; Pub. L. 85\xe2\x80\x93609, \xc2\xa71(e), Aug. 8, 1958, 72 Stat. 540;\nPub. L. 89\xe2\x80\x9383, \xc2\xa73, July 24, 1965, 79 Stat. 260; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub.\nL. 96\xe2\x80\x93517, \xc2\xa75, Dec. 12, 1980, 94 Stat. 3018; Pub. L. 97\xe2\x80\x93247, \xc2\xa73(f), Aug. 27, 1982, 96 Stat. 319; Pub.\n\n\x0cL. 97\xe2\x80\x93256, title I, \xc2\xa7103, Sept. 8, 1982, 96 Stat. 816; Pub. L. 102\xe2\x80\x93204, \xc2\xa75(f)(1), Dec. 10, 1991, 105\nStat. 1640; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(7), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106\xe2\x80\x93113, div.\nB, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa714, 15, 33 Stat. 728; Mar. 19, 1920, ch. 104, \xc2\xa78, 41 Stat. 535; Apr. 11, 1930,\nch. 132, \xc2\xa74, 46 Stat. 155.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner" wherever appearing.\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330 made technical amendment relating to section catchline.\n1991\xe2\x80\x94Subsec. (a). Pub. L. 102\xe2\x80\x93204 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as\nfollows: "The Commissioner will establish fees for the filing and processing of an application for the\nregistration of a trademark or other mark and for all other services performed by and materials furnished by\nthe Patent and Trademark Office related to trademarks and other marks. However, no fee for the filing or\nprocessing of an application for the registration of a trademark or other mark or for the renewal or assignment\nof a trademark or other mark will be adjusted more than once every three years. No fee established under this\nsection will take effect prior to sixty days following notice in the Federal Register."\n1982\xe2\x80\x94Subsec. (a). Pub. L. 97\xe2\x80\x93256 struck out "of Patents" after "Commissioner".\nPub. L. 97\xe2\x80\x93247 struck out provisions directing that fees be set and adjusted by the Commissioner to recover\nin aggregate 50 per centum of the estimated average cost to the Office of processing and that fees for all other\nservices or materials related to trademarks and other marks recover the estimated average cost to the Office of\nperforming the service or furnishing the material.\n1980\xe2\x80\x94Subsec. (a). Pub. L. 96\xe2\x80\x93517 in revising fee provisions required the Commissioner to establish fees\nbased on recovery of estimated average cost of processing applications, performing services and providing\nmaterial; authorized triennial adjustments; and prescribed an effective date for fees; deleted prior provisions\ncontaining statutory schedule covering fees for filing: applications for registration and renewals, affidavits,\nrevival petitions for abandoned applications, opposition or application for cancellation, disclaimers, and notice\nof benefits for a mark to be published; and fees covering: appeals from examiners in charge of registration,\ncertificates of amendment, certifying, printed copies of registered marks, and recordation of documents and\npapers relating to property in a registration or application.\nSubsec. (b). Pub. L. 96\xe2\x80\x93517 added subsec. (b) and struck out former subsec. (b) authorizing Commissioner\nto establish charges for copies of records, publications, or services of Patent and Trademark Office. See\nsubsec. (a).\nSubsec. (c). Pub. L. 96\xe2\x80\x93517 in revising fee provisions struck out subsec. (c) authorizing Commissioner to\nrefund any mistaken or excessive payments.\n1975\xe2\x80\x94Subsec. (a). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nSubsec. (b). Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1965\xe2\x80\x94Pub. L. 89\xe2\x80\x9383 increased fees for filing an application for registration of a mark from $25 to $35; for\nissuance of a new certificate of registration following a change of ownership of a mark or correction of a\nregistrant\'s mistake from $10 to $15; for a certificate of correction of registrant\'s mistake from $10 to $15; for\nfiling a disclaimer from $10 to $15; and for recording an assignment, agreement, or other paper relating to the\nproperty in a registration or application from $3 for documents not exceeding six pages plus $1 for each\nadditional two pages or less and 50 cents additional for each additional registration or application included in\none writing, to a $20 fee for every document plus an additional fee of $3 for each additional item where the\ndocument relates to more than one application or registration; eliminated provisions which established fees for\nthe surrender or cancellation of a registration, for an abstract of title, for a title report required for office use,\nfor certificates that marks have not been registered, and for copies of various specified records and documents;\nadded the fees for filing and affidavit under section 1058(a) or (b) of this title and for filing a petition for the\nrevival of an abandoned application; empowered the Commissioner to establish charges for copies of records,\npublications or services furnished by the Patent Office; and made the provisions relating to refunds of sums\npaid by mistake permissive.\n1958\xe2\x80\x94Pub. L. 85\xe2\x80\x93609 struck out "to the Commissioner" after "on appeal from an examiner in charge of the\nregistration of marks", and provisions which required payment of a $25 fee on appeals from an examiner in\ncharge of interferences to the Commissioner.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\n\x0c\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93247 effective Oct. 1, 1982, see section 17(a) of Pub. L. 97\xe2\x80\x93247, set out as a note\nunder section 41 of Title 35, Patents.\nEFFECTIVE DATE OF 1980 AMENDMENT\nAmendment by Pub. L. 96\xe2\x80\x93517 effective Dec. 12, 1980, with provision for continuation of fees in effect as\nof such date until corresponding fees are established under this section, see section 8(a), (d) of Pub. L.\n96\xe2\x80\x93517, set out as a note under section 41 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nEFFECTIVE DATE OF 1965 AMENDMENT\nFor effective date and applicability of amendment by Pub. L. 89\xe2\x80\x9383, see section 7(a), (d) of Pub. L. 89\xe2\x80\x9383,\nset out as a note under section 41 of Title 35, Patents.\nEFFECTIVE DATE OF 1958 AMENDMENT\nFor effective date and applicability of amendment by Pub. L. 85\xe2\x80\x93609, see section 3 of Pub. L. 85\xe2\x80\x93609, set\nout as a note under section 1067 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\nAPPROPRIATIONS AND FEES AUTHORIZED TO BE CARRIED OVER\nFor provisions authorizing fees collected under this chapter, and certain appropriations, to remain available\nuntil expended, see section 2 of Pub. L. 99\xe2\x80\x93607, set out as a note under section 42 of Title 35, Patents.\nTRADEMARK FEES\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74203], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93554, as\namended by Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713208, Nov. 2, 2002, 116 Stat. 1908, provided that:\n"Notwithstanding the second sentence of section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)), the\nUnder Secretary of Commerce for Intellectual Property and Director of the United States Patent and\nTrademark Office is authorized in fiscal year 2000 to adjust trademark fees without regard to fluctuations in\nthe Consumer Price Index during the preceding 12 months."\nPub. L. 103\xe2\x80\x93179, \xc2\xa74, Dec. 3, 1993, 107 Stat. 2040, provided that: "Effective on the date of the enactment of\nthis Act [Dec. 3, 1993], the fee under section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for\nfiling an application for the registration of a trademark shall be $245. Any adjustment of such fee under the\nsecond sentence of such section may not be effective before October 1, 1994."\nPub. L. 102\xe2\x80\x93204, \xc2\xa75(f)(2), Dec. 10, 1991, 105 Stat. 1640, provided that fees established by Commissioner\nof Patents and Trademarks under 15 U.S.C. 1113(a) during fiscal year 1992 could reflect fluctuations during\nthe preceding 3 years in the Consumer Price Index and could take effect on or after 1 day after such fees are\npublished in the Federal Register and that the last sentence of 31 U.S.C. 31(a) and 5 U.S.C. 553 did not apply\nto the establishment of such fees.\nSimilar provisions were contained in the following prior appropriation acts:\n\n\x0cPub. L. 100\xe2\x80\x93703, title I, \xc2\xa7103(a), Nov. 19, 1988, 102 Stat. 4674.\nPub. L. 99\xe2\x80\x93607, \xc2\xa73(a), Nov. 6, 1986, 100 Stat. 3470.\nREORGANIZATION PLAN NO. 5 OF 1950\nAmendment by Pub. L. 85\xe2\x80\x93609 as subject to Reorganization Plan No. 5 of 1950, see note set out under\nsection 1067 of this title.\n\n\xc2\xa71114. Remedies; infringement; innocent infringement by printers and\npublishers\n(1) Any person who shall, without the consent of the registrant\xe2\x80\x94\n(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered\nmark in connection with the sale, offering for sale, distribution, or advertising of any goods or\nservices on or in connection with which such use is likely to cause confusion, or to cause mistake,\nor to deceive; or\n(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such\nreproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers,\nreceptacles or advertisements intended to be used in commerce upon or in connection with the\nsale, offering for sale, distribution, or advertising of goods or services on or in connection with\nwhich such use is likely to cause confusion, or to cause mistake, or to deceive,\nshall be liable in a civil action by the registrant for the remedies hereinafter provided. Under\nsubsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts\nhave been committed with knowledge that such imitation is intended to be used to cause confusion,\nor to cause mistake, or to deceive.\nAs used in this paragraph, the term "any person" includes the United States, all agencies and\ninstrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the\nUnited States and with the authorization and consent of the United States, and any State, any\ninstrumentality of a State, and any officer or employee of a State or instrumentality of a State acting\nin his or her official capacity. The United States, all agencies and instrumentalities thereof, and all\nindividuals, firms, corporations, other persons acting for the United States and with the authorization\nand consent of the United States, and any State, and any such instrumentality, officer, or employee,\nshall be subject to the provisions of this chapter in the same manner and to the same extent as any\nnongovernmental entity.\n(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right\ninfringed under this chapter or to a person bringing an action under section 1125(a) or (d) of this title\nshall be limited as follows:\n(A) Where an infringer or violator is engaged solely in the business of printing the mark or\nviolating matter for others and establishes that he or she was an innocent infringer or innocent\nviolator, the owner of the right infringed or person bringing the action under section 1125(a) of\nthis title shall be entitled as against such infringer or violator only to an injunction against future\nprinting.\n(B) Where the infringement or violation complained of is contained in or is part of paid\nadvertising matter in a newspaper, magazine, or other similar periodical or in an electronic\ncommunication as defined in section 2510(12) of title 18, the remedies of the owner of the right\ninfringed or person bringing the action under section 1125(a) of this title as against the publisher\nor distributor of such newspaper, magazine, or other similar periodical or electronic\ncommunication shall be limited to an injunction against the presentation of such advertising matter\nin future issues of such newspapers, magazines, or other similar periodicals or in future\ntransmissions of such electronic communications. The limitations of this subparagraph shall apply\nonly to innocent infringers and innocent violators.\n(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing\nthe action under section 1125(a) of this title with respect to an issue of a newspaper, magazine, or\n\n\x0cother similar periodical or an electronic communication containing infringing matter or violating\nmatter where restraining the dissemination of such infringing matter or violating matter in any\nparticular issue of such periodical or in an electronic communication would delay the delivery of\nsuch issue or transmission of such electronic communication after the regular time for such\ndelivery or transmission, and such delay would be due to the method by which publication and\ndistribution of such periodical or transmission of such electronic communication is customarily\nconducted in accordance with sound business practice, and not due to any method or device\nadopted to evade this section or to prevent or delay the issuance of an injunction or restraining\norder with respect to such infringing matter or violating matter.\n(D)(i)(I) A domain name registrar, a domain name registry, or other domain name registration\nauthority that takes any action described under clause (ii) affecting a domain name shall not be\nliable for monetary relief or, except as provided in subclause (II), for injunctive relief, to any\nperson for such action, regardless of whether the domain name is finally determined to infringe or\ndilute the mark.\n(II) A domain name registrar, domain name registry, or other domain name registration\nauthority described in subclause (I) may be subject to injunctive relief only if such registrar,\nregistry, or other registration authority has\xe2\x80\x94\n(aa) not expeditiously deposited with a court, in which an action has been filed regarding the\ndisposition of the domain name, documents sufficient for the court to establish the court\'s\ncontrol and authority regarding the disposition of the registration and use of the domain name;\n(bb) transferred, suspended, or otherwise modified the domain name during the pendency of\nthe action, except upon order of the court; or\n(cc) willfully failed to comply with any such court order.\n(ii) An action referred to under clause (i)(I) is any action of refusing to register, removing from\nregistration, transferring, temporarily disabling, or permanently canceling a domain name\xe2\x80\x94\n(I) in compliance with a court order under section 1125(d) of this title; or\n(II) in the implementation of a reasonable policy by such registrar, registry, or authority\nprohibiting the registration of a domain name that is identical to, confusingly similar to, or\ndilutive of another\'s mark.\n(iii) A domain name registrar, a domain name registry, or other domain name registration\nauthority shall not be liable for damages under this section for the registration or maintenance of a\ndomain name for another absent a showing of bad faith intent to profit from such registration or\nmaintenance of the domain name.\n(iv) If a registrar, registry, or other registration authority takes an action described under clause\n(ii) based on a knowing and material misrepresentation by any other person that a domain name is\nidentical to, confusingly similar to, or dilutive of a mark, the person making the knowing and\nmaterial misrepresentation shall be liable for any damages, including costs and attorney\'s fees,\nincurred by the domain name registrant as a result of such action. The court may also grant\ninjunctive relief to the domain name registrant, including the reactivation of the domain name or\nthe transfer of the domain name to the domain name registrant.\n(v) A domain name registrant whose domain name has been suspended, disabled, or transferred\nunder a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil\naction to establish that the registration or use of the domain name by such registrant is not\nunlawful under this chapter. The court may grant injunctive relief to the domain name registrant,\nincluding the reactivation of the domain name or transfer of the domain name to the domain name\nregistrant.\n(E) As used in this paragraph\xe2\x80\x94\n(i) the term "violator" means a person who violates section 1125(a) of this title; and\n(ii) the term "violating matter" means matter that is the subject of a violation under section\n1125(a) of this title.\n\n\x0c(3)(A) Any person who engages in the conduct described in paragraph (11) of section 110 of title\n17 and who complies with the requirements set forth in that paragraph is not liable on account of\nsuch conduct for a violation of any right under this chapter. This subparagraph does not preclude\nliability, nor shall it be construed to restrict the defenses or limitations on rights granted under this\nchapter, of a person for conduct not described in paragraph (11) of section 110 of title 17, even if that\nperson also engages in conduct described in paragraph (11) of section 110 of such title.\n(B) A manufacturer, licensee, or licensor of technology that enables the making of limited portions\nof audio or video content of a motion picture imperceptible as described in subparagraph (A) is not\nliable on account of such manufacture or license for a violation of any right under this chapter, if\nsuch manufacturer, licensee, or licensor ensures that the technology provides a clear and conspicuous\nnotice at the beginning of each performance that the performance of the motion picture is altered\nfrom the performance intended by the director or copyright holder of the motion picture. The\nlimitations on liability in subparagraph (A) and this subparagraph shall not apply to a manufacturer,\nlicensee, or licensor of technology that fails to comply with this paragraph.\n(C) The requirement under subparagraph (B) to provide notice shall apply only with respect to\ntechnology manufactured after the end of the 180-day period beginning on April 27, 2005.\n(D) Any failure by a manufacturer, licensee, or licensor of technology to qualify for the exemption\nunder subparagraphs (A) and (B) shall not be construed to create an inference that any such party\nthat engages in conduct described in paragraph (11) of section 110 of title 17 is liable for trademark\ninfringement by reason of such conduct.\n(July 5, 1946, ch. 540, title VI, \xc2\xa732, 60 Stat. 437; Pub. L. 87\xe2\x80\x93772, \xc2\xa717, Oct. 9, 1962, 76 Stat. 773;\nPub. L. 100\xe2\x80\x93667, title I, \xc2\xa7127, Nov. 16, 1988, 102 Stat. 3943; Pub. L. 102\xe2\x80\x93542, \xc2\xa73(a), Oct. 27, 1992,\n106 Stat. 3567; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(8), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106\xe2\x80\x9343,\n\xc2\xa74(a), Aug. 5, 1999, 113 Stat. 219; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73004], Nov. 29,\n1999, 113 Stat. 1536, 1501A\xe2\x80\x93549; Pub. L. 109\xe2\x80\x939, title II, \xc2\xa7202(b), Apr. 27, 2005, 119 Stat. 223.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa716, 33 Stat. 728; Mar. 19, 1920, ch. 104, \xc2\xa74, 41 Stat. 534.\nAMENDMENTS\n2005\xe2\x80\x94Par. (3). Pub. L. 109\xe2\x80\x939 added par. (3).\n1999\xe2\x80\x94Par. (1). Pub. L. 106\xe2\x80\x9343, in undesignated par., inserted after "includes" in first sentence "the United\nStates, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons\nacting for the United States and with the authorization and consent of the United States, and" and, in second\nsentence, substituted "The United States, all agencies and instrumentalities thereof, and all individuals, firms,\ncorporations, other persons acting for the United States and with the authorization and consent of the United\nStates, and any" for "Any".\nPar. (2). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73004(1)], in introductory provisions, substituted "under\nsection 1125(a) or (d) of this title" for "under section 1125(a) of this title".\nPar. (2)(D), (E). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73004(2)], added subpar. (D) and redesignated\nformer subpar. (D) as (E).\n1998\xe2\x80\x94Par. (1). Pub. L. 105\xe2\x80\x93330 substituted "As used in this paragraph" for "As used in this subsection" in\nlast paragraph.\n1992\xe2\x80\x94Par. (1). Pub. L. 102\xe2\x80\x93542 inserted at end "As used in this subsection, the term \'any person\' includes\nany State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State\nacting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be\nsubject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental\nentity."\n1988\xe2\x80\x94Par. (2). Pub. L. 100\xe2\x80\x93667 amended par. (2) generally. Prior to amendment, par. (2) read as follows:\n"Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed\nshall be limited as follows: (a) Where an infringer in engaged solely in the business of printing the mark for\nothers and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as\nagainst such infringer only to an injunction against future printing; (b) where the infringement complained of\nis contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the\nremedies of the owner of the right infringed as against the publisher or distributor of such newspaper,\nmagazine, or other similar periodical shall be confined to an injunction against the presentation of such\n\n\x0cadvertising matter in future issues of such newspapers, magazines, or other similar periodical: Provided, That\nthese limitations shall apply only to innocent infringers; (c) injunction relief shall not be available to the\nowner of the right infringed in respect of an issue of a newspaper, magazine, or other similar periodical\ncontaining infringing matter when restraining the dissemination of such infringing matter in any particular\nissue of such periodical would delay the delivery of such issue after the regular time therefor, and such delay\nwould be due to the method by which publication and distribution of such periodical is customarily conducted\nin accordance with sound business practice, and not to any method or device adopted for the evasion of this\nsection or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing\nmatter."\n1962\xe2\x80\x94Par. (1). Pub. L. 87\xe2\x80\x93772 amended provisions generally, and among other changes, inserted\n"distribution", and struck out "purchasers as to the source of origin of such goods or services" after "or to\ndeceive" in subsec. (a), inserted provisions regarding the likelihood of such use causing confusion, mistake, or\ndeception, in subsec. (b), and struck out the limitation on recovery under subsec. (b) to acts committed with\nknowledge that such acts would deceive purchasers.\nPar. (2)(b). Pub. L. 87\xe2\x80\x93772 substituted "publisher" for "published".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 applicable to all domain names registered before, on, or after Nov. 29,\n1999, see section 1000(a)(9) [title III, \xc2\xa73010] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1117 of this\ntitle.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1992 AMENDMENT\nPub. L. 102\xe2\x80\x93542, \xc2\xa74, Oct. 27, 1992, 106 Stat. 3568, provided that: "The amendments made by this Act\n[enacting section 1122 of this title and amending this section and sections 1125 and 1127 of this title] shall\ntake effect with respect to violations that occur on or after the date of the enactment of this Act [Oct. 27,\n1992]."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71115. Registration on principal register as evidence of exclusive right to use\nmark; defenses\n(a) Evidentiary value; defenses\nAny registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a\nmark registered on the principal register provided by this chapter and owned by a party to an action\nshall be admissible in evidence and shall be prima facie evidence of the validity of the registered\nmark and of the registration of the mark, of the registrant\'s ownership of the mark, and of the\nregistrant\'s exclusive right to use the registered mark in commerce on or in connection with the\ngoods or services specified in the registration subject to any conditions or limitations stated therein,\nbut shall not preclude another person from proving any legal or equitable defense or defect,\nincluding those set forth in subsection (b) of this section, which might have been asserted if such\nmark had not been registered.\n(b) Incontestability; defenses\nTo the extent that the right to use the registered mark has become incontestable under section 1065\n\n\x0cof this title, the registration shall be conclusive evidence of the validity of the registered mark and of\nthe registration of the mark, of the registrant\'s ownership of the mark, and of the registrant\'s\nexclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the\nexclusive right to use the mark on or in connection with the goods or services specified in the\naffidavit filed under the provisions of section 1065 of this title, or in the renewal application filed\nunder the provisions of section 1059 of this title if the goods or services specified in the renewal are\nfewer in number, subject to any conditions or limitations in the registration or in such affidavit or\nrenewal application. Such conclusive evidence of the right to use the registered mark shall be subject\nto proof of infringement as defined in section 1114 of this title, and shall be subject to the following\ndefenses or defects:\n(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or\n(2) That the mark has been abandoned by the registrant; or\n(3) That the registered mark is being used by or with the permission of the registrant or a person\nin privity with the registrant, so as to misrepresent the source of the goods or services on or in\nconnection with which the mark is used; or\n(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise\nthan as a mark, of the party\'s individual name in his own business, or of the individual name of\nanyone in privity with such party, or of a term or device which is descriptive of and used fairly\nand in good faith only to describe the goods or services of such party, or their geographic origin;\nor\n(5) That the mark whose use by a party is charged as an infringement was adopted without\nknowledge of the registrant\'s prior use and has been continuously used by such party or those in\nprivity with him from a date prior to (A) the date of constructive use of the mark established\npursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the\napplication for registration is filed before the effective date of the Trademark Law Revision Act of\n1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title:\nProvided, however, That this defense or defect shall apply only for the area in which such\ncontinuous prior use is proved; or\n(6) That the mark whose use is charged as an infringement was registered and used prior to the\nregistration under this chapter or publication under subsection (c) of section 1062 of this title of\nthe registered mark of the registrant, and not abandoned: Provided, however, That this defense or\ndefect shall apply only for the area in which the mark was used prior to such registration or such\npublication of the registrant\'s mark; or\n(7) That the mark has been or is being used to violate the antitrust laws of the United States; or\n(8) That the mark is functional; or\n(9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.\n(July 5, 1946, ch. 540, title VI, \xc2\xa733, 60 Stat. 438; Pub. L. 87\xe2\x80\x93772, \xc2\xa718, Oct. 9, 1962, 76 Stat. 774;\nPub. L. 100\xe2\x80\x93667, title I, \xc2\xa7128(a), (b), Nov. 16, 1988, 102 Stat. 3944; Pub. L. 105\xe2\x80\x93330, title II,\n\xc2\xa7201(a)(9), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(7), Nov. 2,\n2002, 116 Stat. 1908.)\nREFERENCES IN TEXT\nActs March 3, 1881, and February 20, 1905, referred to in subsec. (a), are acts Mar. 3, 1881, ch. 138, 21\nStat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this\nchapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to\n109 of this title.\nThe effective date of the Trademark Law Revision Act of 1988, referred to in subsec. (b)(5), is one year\nafter Nov. 16, 1988. See section 136 of Pub. L. 100\xe2\x80\x93667, set out as an Effective Date of 1988 Amendment\nnote under section 1051 of this title.\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa716, 21, 33 Stat. 728, 729.\nAMENDMENTS\n2002\xe2\x80\x94Subsec. (b)(8). Pub. L. 107\xe2\x80\x93273 realigned margins.\n\n\x0c1998\xe2\x80\x94Subsec. (b)(8), (9). Pub. L. 105\xe2\x80\x93330 added par. (8) and redesignated former par. (8) as (9).\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(a), inserted "the validity of the registered mark and of the\nregistration of the mark, of the registrant\'s ownership of the mark, and of the" after "facie evidence of",\ninserted "or in connection with" after "in commerce on", substituted "another person" for "an opposing party",\nand inserted ", including those set forth in subsection (b) of this section," after "or defect".\nSubsec. (b). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(b)(1), amended introductory provisions generally. Prior to amendment,\nintroductory provisions read as follows: "If the right to use the registered mark has become incontestable\nunder section 1065 of this title, the registration shall be conclusive evidence of the registrant\'s exclusive right\nto use the registered mark in commerce on or in connection with the goods or services specified in the\naffidavit filed under the provisions of said section 1065 subject to any conditions or limitations stated therein\nexcept when one of the following defenses or defects is established:".\nSubsec. (b)(3). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(b)(2), inserted "on or" after "goods or services".\nSubsec. (b)(4). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(b)(3), struck out "trade or service" after "than as a" and "to users"\nafter "only to describe".\nSubsec. (b)(5). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(b)(4), substituted "(A) the date of constructive use of the mark\nestablished pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the\napplication for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or\n(C)" for "registration of the mark under this chapter or".\nSubsec. (b)(8). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(b)(5), (6), added par. (8).\n1962\xe2\x80\x94Subsec. (a). Pub. L. 87\xe2\x80\x93772 substituted "registration subject to" for "certificate subject to", and\nstruck out "certificate of" before "registration issued".\nSubsec. (b). Pub. L. 87\xe2\x80\x93772 substituted "registration shall" for "certificate shall", and "affidavit filed under\nthe provisions of said section 1065" for "certificate" in text preceding par. (1), substituted "registrant or a\nperson in privity with the registrant," for "assignee", and struck out "has been assigned and" after "registered\nmark" in par. (3), substituted "registration of the mark under this chapter or" for "the", and struck out "(a) or"\nbefore "(c) of section 1062" in par. (5), inserted "registration under this chapter", substituted "such registration\nor such" for "the date of", and struck out "(a) or" before "(c) of section 1062", "only where the said mark has\nbeen published pursuant to subsections (c) of section 1062 of this title and shall apply" after "defect shall\napply", and "under subsection (a) or (c) of section 1062 of this title" after "registrant\'s mark", in par. (6).\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71116. Injunctive relief\n(a) Jurisdiction; service\nThe several courts vested with jurisdiction of civil actions arising under this chapter shall have\npower to grant injunctions, according to the principles of equity and upon such terms as the court\nmay deem reasonable, to prevent the violation of any right of the registrant of a mark registered in\nthe Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section\n1125 of this title. Any such injunction may include a provision directing the defendant to file with\nthe court and serve on the plaintiff within thirty days after the service on the defendant of such\ninjunction, or such extended period as the court may direct, a report in writing under oath setting\nforth in detail the manner and form in which the defendant has complied with the injunction. Any\nsuch injunction granted upon hearing, after notice to the defendant, by any district court of the\n\n\x0cUnited States, may be served on the parties against whom such injunction is granted anywhere in the\nUnited States where they may be found, and shall be operative and may be enforced by proceedings\nto punish for contempt, or otherwise, by the court by which such injunction was granted, or by any\nother United States district court in whose jurisdiction the defendant may be found.\n(b) Transfer of certified copies of court papers\nThe said courts shall have jurisdiction to enforce said injunction, as provided in this chapter, as\nfully as if the injunction had been granted by the district court in which it is sought to be enforced.\nThe clerk of the court or judge granting the injunction shall, when required to do so by the court\nbefore which application to enforce said injunction is made, transfer without delay to said court a\ncertified copy of all papers on file in his office upon which said injunction was granted.\n(c) Notice to Director\nIt shall be the duty of the clerks of such courts within one month after the filing of any action, suit,\nor proceeding involving a mark registered under the provisions of this chapter to give notice thereof\nin writing to the Director setting forth in order so far as known the names and addresses of the\nlitigants and the designating number or numbers of the registration or registrations upon which the\naction, suit, or proceeding has been brought, and in the event any other registration be subsequently\nincluded in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall\ngive like notice thereof to the Director, and within one month after the judgment is entered or an\nappeal is taken the clerk of the court shall give notice thereof to the Director, and it shall be the duty\nof the Director on receipt of such notice forthwith to endorse the same upon the file wrapper of the\nsaid registration or registrations and to incorporate the same as a part of the contents of said file\nwrapper.\n(d) Civil actions arising out of use of counterfeit marks\n(1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 220506\nof title 36 with respect to a violation that consists of using a counterfeit mark in connection with the\nsale, offering for sale, or distribution of goods or services, the court may, upon ex parte application,\ngrant an order under subsection (a) of this section pursuant to this subsection providing for the\nseizure of goods and counterfeit marks involved in such violation and the means of making such\nmarks, and records documenting the manufacture, sale, or receipt of things involved in such\nviolation.\n(B) As used in this subsection the term "counterfeit mark" means\xe2\x80\x94\n(i) a counterfeit of a mark that is registered on the principal register in the United States Patent\nand Trademark Office for such goods or services sold, offered for sale, or distributed and that is in\nuse, whether or not the person against whom relief is sought knew such mark was so registered; or\n(ii) a spurious designation that is identical with, or substantially indistinguishable from, a\ndesignation as to which the remedies of this chapter are made available by reason of section\n220506 of title 36;\nbut such term does not include any mark or designation used on or in connection with goods or\nservices of which the manufacture 1 or producer was, at the time of the manufacture or production in\nquestion authorized to use the mark or designation for the type of goods or services so manufactured\nor produced, by the holder of the right to use such mark or designation.\n(2) The court shall not receive an application under this subsection unless the applicant has given\nsuch notice of the application as is reasonable under the circumstances to the United States attorney\nfor the judicial district in which such order is sought. Such attorney may participate in the\nproceedings arising under such application if such proceedings may affect evidence of an offense\nagainst the United States. The court may deny such application if the court determines that the public\ninterest in a potential prosecution so requires.\n(3) The application for an order under this subsection shall\xe2\x80\x94\n(A) be based on an affidavit or the verified complaint establishing facts sufficient to support the\nfindings of fact and conclusions of law required for such order; and\n\n\x0c(B) contain the additional information required by paragraph (5) of this subsection to be set\nforth in such order.\n(4) The court shall not grant such an application unless\xe2\x80\x94\n(A) the person obtaining an order under this subsection provides the security determined\nadequate by the court for the payment of such damages as any person may be entitled to recover as\na result of a wrongful seizure or wrongful attempted seizure under this subsection; and\n(B) the court finds that it clearly appears from specific facts that\xe2\x80\x94\n(i) an order other than an ex parte seizure order is not adequate to achieve the purposes of\nsection 1114 of this title;\n(ii) the applicant has not publicized the requested seizure;\n(iii) the applicant is likely to succeed in showing that the person against whom seizure would\nbe ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution\nof goods or services;\n(iv) an immediate and irreparable injury will occur if such seizure is not ordered;\n(v) the matter to be seized will be located at the place identified in the application;\n(vi) the harm to the applicant of denying the application outweighs the harm to the legitimate\ninterests of the person against whom seizure would be ordered of granting the application; and\n(vii) the person against whom seizure would be ordered, or persons acting in concert with\nsuch person, would destroy, move, hide, or otherwise make such matter inaccessible to the\ncourt, if the applicant were to proceed on notice to such person.\n(5) An order under this subsection shall set forth\xe2\x80\x94\n(A) the findings of fact and conclusions of law required for the order;\n(B) a particular description of the matter to be seized, and a description of each place at which\nsuch matter is to be seized;\n(C) the time period, which shall end not later than seven days after the date on which such order\nis issued, during which the seizure is to be made;\n(D) the amount of security required to be provided under this subsection; and\n(E) a date for the hearing required under paragraph (10) of this subsection.\n(6) The court shall take appropriate action to protect the person against whom an order under this\nsubsection is directed from publicity, by or at the behest of the plaintiff, about such order and any\nseizure under such order.\n(7) Any materials seized under this subsection shall be taken into the custody of the court. For\nseizures made under this section, the court shall enter an appropriate protective order with respect to\ndiscovery and use of any records or information that has been seized. The protective order shall\nprovide for appropriate procedures to ensure that confidential, private, proprietary, or privileged\ninformation contained in such records is not improperly disclosed or used.\n(8) An order under this subsection, together with the supporting documents, shall be sealed until\nthe person against whom the order is directed has an opportunity to contest such order, except that\nany person against whom such order is issued shall have access to such order and supporting\ndocuments after the seizure has been carried out.\n(9) The court shall order that service of a copy of the order under this subsection shall be made by\na Federal law enforcement officer (such as a United States marshal or an officer or agent of the\nUnited States Customs Service, Secret Service, Federal Bureau of Investigation, or Post Office) or\nmay be made by a State or local law enforcement officer, who, upon making service, shall carry out\nthe seizure under the order. The court shall issue orders, when appropriate, to protect the defendant\nfrom undue damage from the disclosure of trade secrets or other confidential information during the\ncourse of the seizure, including, when appropriate, orders restricting the access of the applicant (or\nany agent or employee of the applicant) to such secrets or information.\n(10)(A) The court shall hold a hearing, unless waived by all the parties, on the date set by the court\nin the order of seizure. That date shall be not sooner than ten days after the order is issued and not\n\n\x0clater than fifteen days after the order is issued, unless the applicant for the order shows good cause\nfor another date or unless the party against whom such order is directed consents to another date for\nsuch hearing. At such hearing the party obtaining the order shall have the burden to prove that the\nfacts supporting findings of fact and conclusions of law necessary to support such order are still in\neffect. If that party fails to meet that burden, the seizure order shall be dissolved or modified\nappropriately.\n(B) In connection with a hearing under this paragraph, the court may make such orders modifying\nthe time limits for discovery under the Rules of Civil Procedure as may be necessary to prevent the\nfrustration of the purposes of such hearing.\n(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a\ncause of action against the applicant for the order under which such seizure was made, and shall be\nentitled to recover such relief as may be appropriate, including damages for lost profits, cost of\nmaterials, loss of good will, and punitive damages in instances where the seizure was sought in bad\nfaith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney\'s fee.\nThe court in its discretion may award prejudgment interest on relief recovered under this paragraph,\nat an annual interest rate established under section 6621(a)(2) of title 26, commencing on the date of\nservice of the claimant\'s pleading setting forth the claim under this paragraph and ending on the date\nsuch recovery is granted, or for such shorter time as the court deems appropriate.\n(July 5, 1946, ch. 540, title VI, \xc2\xa734, 60 Stat. 439; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949;\nPub. L. 98\xe2\x80\x93473, title II, \xc2\xa71503(1), Oct. 12, 1984, 98 Stat. 2179; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7128(c)\xe2\x80\x93(e),\nNov. 16, 1988, 102 Stat. 3945; Pub. L. 104\xe2\x80\x93153, \xc2\xa76, July 2, 1996, 110 Stat. 1388; Pub. L. 106\xe2\x80\x9343,\n\xc2\xa73(a)(1), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73003(a)(1),\ntitle IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93548, 1501A\xe2\x80\x93583; Pub. L. 107\xe2\x80\x93273,\ndiv. C, title III, \xc2\xa713207(b)(8)\xe2\x80\x93(10), Nov. 2, 2002, 116 Stat. 1908; Pub. L. 110\xe2\x80\x93403, title I, \xc2\xa7102(b),\nOct. 13, 2008, 122 Stat. 4258.)\nREFERENCES IN TEXT\nThe Rules of Civil Procedure, referred to in subsec. (d)(10)(B), probably means the Federal Rules of Civil\nProcedure, which are set out in the Appendix to Title 28, Judiciary and Judicial Procedure.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa719, 20, 33 Stat. 729; Mar. 3, 1911, ch. 231, \xc2\xa7291, 36 Stat. 1167; June 25,\n1936, ch. 804, 49 Stat. 1921.\nAMENDMENTS\n2008\xe2\x80\x94Subsec. (d)(7). Pub. L. 110\xe2\x80\x93403 amended par. (7) generally. Prior to amendment, par. (7) read as\nfollows: "Any materials seized under this subsection shall be taken into the custody of the court. The court\nshall enter an appropriate protective order with respect to discovery by the applicant of any records that have\nbeen seized. The protective order shall provide for appropriate procedures to assure that confidential\ninformation contained in such records is not improperly disclosed to the applicant."\n2002\xe2\x80\x94Subsec. (d)(1)(A), (B)(ii). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(b)(8), (9), substituted "section 220506 of title\n36" for "section 110 of the Act entitled \'An Act to incorporate the United States Olympic Association\',\napproved September 21, 1950 (36 U.S.C. 380)".\nSubsec. (d)(11). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(b)(10), substituted "6621(a)(2) of title 26" for "6621 of title 26".\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73003(a)(1)], substituted "(a), (c), or (d)" for\n"(a) or (c)" in first sentence.\nPub. L. 106\xe2\x80\x9343 substituted "subsection (a) or (c) of section 1125 of this title" for "section 1125(a) of this\ntitle" in first sentence.\nSubsec. (c). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], substituted "Director" for\n"Commissioner" wherever appearing.\n1996\xe2\x80\x94Subsec. (d)(9). Pub. L. 104\xe2\x80\x93153 inserted first sentence and struck out former first sentence which\nread as follows: "The court shall order that a United States marshal or other law enforcement officer is to\nserve a copy of the order under this subsection and then is to carry out the seizure under such order."\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(c), inserted "or to prevent a violation under section 1125(a) of\nthis title" after "Office" in first sentence.\nSubsec. (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(d), substituted "proceeding involving a mark registered" for\n\n\x0c"proceeding arising" and "judgment is entered or an appeal is taken" for "decision is rendered, appeal taken or\na decree issued".\nSubsec. (d)(1)(B). Pub. L. 100\xe2\x80\x93667, \xc2\xa7128(e), inserted "on or" after "or designation used" in concluding\nprovisions.\n1984\xe2\x80\x94Pub. L. 98\xe2\x80\x93473 designated first, second, and third undesignated pars. as subsecs. (a), (b), and (c),\nrespectively and added subsec. (d).\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by section 1000(a)(9) [title III, \xc2\xa73003(a)(1)] of Pub. L. 106\xe2\x80\x93113 applicable to all domain\nnames registered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, \xc2\xa73010] of Pub. L.\n106\xe2\x80\x93113, set out as a note under section 1117 of this title.\nAmendment by section 1000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)] of Pub. L. 106\xe2\x80\x93113 effective 4 months after\nNov. 29, 1999, see section 1000(a)(9) [title IV, \xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of\nTitle 35, Patents.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions, personnel, assets, and liabilities of the United States Customs Service of the\nDepartment of the Treasury, including functions of the Secretary of the Treasury relating thereto, to the\nSecretary of Homeland Security, and for treatment of related references, see sections 203(1), 551(d), 552(d),\nand 557 of Title 6, Domestic Security, and the Department of Homeland Security Reorganization Plan of\nNovember 25, 2002, as modified, set out as a note under section 542 of Title 6.\nFor transfer of the functions, personnel, assets, and obligations of the United States Secret Service,\nincluding the functions of the Secretary of the Treasury relating thereto, to the Secretary of Homeland\nSecurity, and for treatment of related references, see sections 381, 551(d), 552(d), and 557 of Title 6,\nDomestic Security, and the Department of Homeland Security Reorganization Plan of November 25, 2002, as\nmodified, set out as a note under section 542 of Title 6.\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n1\n\nSo in original. Probably should be "manufacturer".\n\n\xc2\xa71117. Recovery for violation of rights\n(a) Profits; damages and costs; attorney fees\nWhen a violation of any right of the registrant of a mark registered in the Patent and Trademark\nOffice, a violation under section 1125(a) or (d) of this title, or a willful violation under section\n1125(c) of this title, shall have been established in any civil action arising under this chapter, the\nplaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject\nto the principles of equity, to recover (1) defendant\'s profits, (2) any damages sustained by the\nplaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the\nsame to be assessed under its direction. In assessing profits the plaintiff shall be required to prove\n\n\x0cdefendant\'s sales only; defendant must prove all elements of cost or deduction claimed. In assessing\ndamages the court may enter judgment, according to the circumstances of the case, for any sum\nabove the amount found as actual damages, not exceeding three times such amount. If the court shall\nfind that the amount of the recovery based on profits is either inadequate or excessive the court may\nin its discretion enter judgment for such sum as the court shall find to be just, according to the\ncircumstances of the case. Such sum in either of the above circumstances shall constitute\ncompensation and not a penalty. The court in exceptional cases may award reasonable attorney fees\nto the prevailing party.\n(b) Treble damages for use of counterfeit mark\nIn assessing damages under subsection (a) for any violation of section 1114(1)(a) of this title or\nsection 220506 of title 36, in a case involving use of a counterfeit mark or designation (as defined in\nsection 1116(d) of this title), the court shall, unless the court finds extenuating circumstances, enter\njudgment for three times such profits or damages, whichever amount is greater, together with a\nreasonable attorney\'s fee, if the violation consists of\xe2\x80\x94\n(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit\nmark (as defined in section 1116(d) of this title), in connection with the sale, offering for sale, or\ndistribution of goods or services; or\n(2) providing goods or services necessary to the commission of a violation specified in\nparagraph (1), with the intent that the recipient of the goods or services would put the goods or\nservices to use in committing the violation.\nIn such a case, the court may award prejudgment interest on such amount at an annual interest rate\nestablished under section 6621(a)(2) of title 26, beginning on the date of the service of the claimant\'s\npleadings setting forth the claim for such entry of judgment and ending on the date such entry is\nmade, or for such shorter time as the court considers appropriate.\n(c) Statutory damages for use of counterfeit marks\nIn a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in\nconnection with the sale, offering for sale, or distribution of goods or services, the plaintiff may\nelect, at any time before final judgment is rendered by the trial court, to recover, instead of actual\ndamages and profits under subsection (a) of this section, an award of statutory damages for any such\nuse in connection with the sale, offering for sale, or distribution of goods or services in the amount\nof\xe2\x80\x94\n(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or\nservices sold, offered for sale, or distributed, as the court considers just; or\n(2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000\nper counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court\nconsiders just.\n(d) Statutory damages for violation of section 1125(d)(1)\nIn a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any\ntime before final judgment is rendered by the trial court, to recover, instead of actual damages and\nprofits, an award of statutory damages in the amount of not less than $1,000 and not more than\n$100,000 per domain name, as the court considers just.\n(e) Rebuttable presumption of willful violation\nIn the case of a violation referred to in this section, it shall be a rebuttable presumption that the\nviolation is willful for purposes of determining relief if the violator, or a person acting in concert\nwith the violator, knowingly provided or knowingly caused to be provided materially false contact\ninformation to a domain name registrar, domain name registry, or other domain name registration\nauthority in registering, maintaining, or renewing a domain name used in connection with the\nviolation. Nothing in this subsection limits what may be considered a willful violation under this\nsection.\n(July 5, 1946, ch. 540, title VI, \xc2\xa735, 60 Stat. 439; Pub. L. 87\xe2\x80\x93772, \xc2\xa719, Oct. 9, 1962, 76 Stat. 774;\n\n\x0cPub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93\xe2\x80\x93600, \xc2\xa73, Jan. 2, 1975, 88 Stat. 1955; Pub.\nL. 98\xe2\x80\x93473, title II, \xc2\xa71503(2), Oct. 12, 1984, 98 Stat. 2182; Pub. L. 99\xe2\x80\x93514, \xc2\xa72, Oct. 22, 1986, 100\nStat. 2095; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7129, Nov. 16, 1988, 102 Stat. 3945; Pub. L. 104\xe2\x80\x93153, \xc2\xa77, July\n2, 1996, 110 Stat. 1388; Pub. L. 106\xe2\x80\x9343, \xc2\xa73(b), Aug. 5, 1999, 113 Stat. 219; Pub. L. 106\xe2\x80\x93113, div. B,\n\xc2\xa71000(a)(9) [title III, \xc2\xa73003(a)(2), (b)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93549; Pub. L.\n107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(a), (b)(11), Nov. 2, 2002, 116 Stat. 1906, 1908; Pub. L. 108\xe2\x80\x93482,\ntitle II, \xc2\xa7202, Dec. 23, 2004, 118 Stat. 3916; Pub. L. 110\xe2\x80\x93403, title I, \xc2\xa7\xc2\xa7103, 104, Oct. 13, 2008, 122\nStat. 4259.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa716, 19, 33 Stat. 728, 729; Mar. 19, 1920, ch. 104, \xc2\xa74, 41 Stat. 534.\nAMENDMENTS\n2008\xe2\x80\x94Subsec. (b). Pub. L. 110\xe2\x80\x93403, \xc2\xa7103, amended subsec. (b) generally. Prior to amendment, text read as\nfollows: "In assessing damages under subsection (a) of this section, the court shall, unless the court finds\nextenuating circumstances, enter judgment for three times such profits or damages, whichever is greater,\ntogether with a reasonable attorney\'s fee, in the case of any violation of section 1114(1)(a) of this title or\nsection 220506 of title 36 that consists of intentionally using a mark or designation, knowing such mark or\ndesignation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale,\noffering for sale, or distribution of goods or services. In such cases, the court may in its discretion award\nprejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of title 26,\ncommencing on the date of the service of the claimant\'s pleadings setting forth the claim for such entry and\nending on the date such entry is made, or for such shorter time as the court deems appropriate."\nSubsec. (c)(1). Pub. L. 110\xe2\x80\x93403, \xc2\xa7104(1), substituted "$1,000" for "$500" and "$200,000" for "$100,000".\nSubsec. (c)(2). Pub. L. 110\xe2\x80\x93403, \xc2\xa7104(2), substituted "$2,000,000" for "$1,000,000".\n2004\xe2\x80\x94Subsec. (e). Pub. L. 108\xe2\x80\x93482 added subsec. (e).\n2002\xe2\x80\x94Subsec. (a). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(a), substituted "a violation under section 1125(a) or (d) of this\ntitle," for "a violation under section 1125(a), (c), or (d) of this title,".\nSubsec. (b). Pub. L. 107\xe2\x80\x93273, \xc2\xa713207(b)(11), substituted "section 220506 of title 36" for "section 110 of the\nAct entitled \'An Act to incorporate the United States Olympic Association\', approved September 21, 1950 (36\nU.S.C. 380)" and "6621(a)(2) of title 26" for "6621 of title 26".\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73003(a)(2)], inserted ", (c), or (d)" after\n"section 1125(a)" in first sentence.\nPub. L. 106\xe2\x80\x9343 substituted "a violation under section 1125(a) of this title, or a willful violation under\nsection 1125(c) of this title," for "or a violation under section 1125(a) of this title," in first sentence.\nSubsec. (d). Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73003(b)], added subsec. (d).\n1996\xe2\x80\x94Subsec. (c). Pub. L. 104\xe2\x80\x93153 added subsec. (c).\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667 inserted ", or a violation under section 1125(a) of this title," after\n"Office" in first sentence.\n1986\xe2\x80\x94Subsec. (b). Pub. L. 99\xe2\x80\x93514 substituted "Internal Revenue Code of 1986" for "Internal Revenue\nCode of 1954", which for purposes of codification was translated as "title 26" thus requiring no change in text.\n1984\xe2\x80\x94Pub. L. 98\xe2\x80\x93473 designated existing provisions as subsec. (a) and added subsec. (b).\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93600 inserted provisions relating to awarding of attorney fees in exceptional cases.\nPub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 substituted "1114" for "1113(1)(b)".\nEFFECTIVE DATE OF 1999 AMENDMENT\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73010], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93552,\nprovided that: "Sections 3002(a), 3003, 3004, 3005, and 3008 of this title [amending this section and sections\n1114, 1116, 1125, and 1127 of this title, and enacting provisions set out as a note under section 1051 of this\ntitle] shall apply to all domain names registered before, on, or after the date of the enactment of this Act [Nov.\n29, 1999], except that damages under subsection (a) or (d) of section 35 of the Trademark Act of 1946 (15\nU.S.C. 1117), as amended by section 3003 of this title, shall not be available with respect to the registration,\ntrafficking, or use of a domain name that occurs before the date of the enactment of this Act."\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\n\n\x0cEFFECTIVE DATE OF 1975 AMENDMENTS\nAmendment by Pub. L. 93\xe2\x80\x93600 effective Jan. 2, 1975, but not to affect any suit, proceeding, or appeal then\npending, see section 4 of Pub. L. 93\xe2\x80\x93600, set out as a note under section 1063 of this title.\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nCONSTRUCTION OF 2004 AMENDMENT\nPub. L. 108\xe2\x80\x93482, title II, \xc2\xa7205, Dec. 23, 2004, 118 Stat. 3917, provided that:\n"(a) FREE SPEECH AND PRESS.\xe2\x80\x94Nothing in this title [see Short Title of 2004 Amendment note set out\nunder section 1051 of this title] shall enlarge or diminish any rights of free speech or of the press for activities\nrelated to the registration or use of domain names.\n"(b) DISCRETION OF COURTS IN DETERMINING RELIEF.\xe2\x80\x94Nothing in this title shall restrict the\ndiscretion of a court in determining damages or other relief to be assessed against a person found liable for the\ninfringement of intellectual property rights.\n"(c) DISCRETION OF COURTS IN DETERMINING TERMS OF IMPRISONMENT.\xe2\x80\x94Nothing in this\ntitle shall be construed to limit the discretion of a court to determine the appropriate term of imprisonment for\nan offense under applicable law."\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71118. Destruction of infringing articles\nIn any action arising under this chapter, in which a violation of any right of the registrant of a\nmark registered in the Patent and Trademark Office, a violation under section 1125(a) of this title, or\na willful violation under section 1125(c) of this title, shall have been established, the court may order\nthat all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of\nthe defendant, bearing the registered mark or, in the case of a violation of section 1125(a) of this title\nor a willful violation under section 1125(c) of this title, the word, term, name, symbol, device,\ncombination thereof, designation, description, or representation that is the subject of the violation, or\nany reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices,\nand other means of making the same, shall be delivered up and destroyed. The party seeking an order\nunder this section for destruction of articles seized under section 1116(d) of this title shall give ten\ndays\' notice to the United States attorney for the judicial district in which such order is sought (unless\ngood cause is shown for lesser notice) and such United States attorney may, if such destruction may\naffect evidence of an offense against the United States, seek a hearing on such destruction or\nparticipate in any hearing otherwise to be held with respect to such destruction.\n(July 5, 1946, ch. 540, title VI, \xc2\xa736, 60 Stat. 440; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949;\nPub. L. 98\xe2\x80\x93473, title II, \xc2\xa71503(3), Oct. 12, 1984, 98 Stat. 2182; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7130, Nov.\n16, 1988, 102 Stat. 3945; Pub. L. 106\xe2\x80\x9343, \xc2\xa73(c), Aug. 5, 1999, 113 Stat. 219.)\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa720, 33 Stat. 729; Mar. 3, 1911, ch. 231, \xc2\xa7291, 36 Stat. 1167; June 25, 1936,\nch. 804, 49 Stat. 1921.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343, in first sentence, substituted "a violation under section 1125(a) of this title, or a\nwillful violation under section 1125(c) of this title," for "or a violation under section 1125(a) of this title," and\ninserted "or a willful violation under section 1125(c) of this title" before ", the word,".\n\n\x0c1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667 inserted in first sentence ", or a violation under section 1125(a) of this title," after\n"Office" and "or, in the case of a violation of section 1125(a) of this title, the word, term, name, symbol,\ndevice, combination thereof, designation, description, or representation that is the subject of the violation,"\nafter "registered mark".\n1984\xe2\x80\x94Pub. L. 98\xe2\x80\x93473 inserted "The party seeking an order under this section for destruction of articles\nseized under section 1116(d) of this title shall give ten days\' notice to the United States attorney for the\njudicial district in which such order is sought (unless good cause is shown for lesser notice) and such United\nStates attorney may, if such destruction may affect evidence of an offense against the United States, seek a\nhearing on such destruction or participate in any hearing otherwise to be held with respect to such\ndestruction."\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71119. Power of court over registration\nIn any action involving a registered mark the court may determine the right to registration, order\nthe cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise\nrectify the register with respect to the registrations of any party to the action. Decrees and orders\nshall be certified by the court to the Director, who shall make appropriate entry upon the records of\nthe Patent and Trademark Office, and shall be controlled thereby.\n(July 5, 1946, ch. 540, title VI, \xc2\xa737, 60 Stat. 440; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949;\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536,\n1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa722, 33 Stat. 729.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\n\n\x0cand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71120. Civil liability for false or fraudulent registration\nAny person who shall procure registration in the Patent and Trademark Office of a mark by a false\nor fraudulent declaration or representation, oral or in writing, or by any false means, shall be liable in\na civil action by any person injured thereby for any damages sustained in consequence thereof.\n(July 5, 1946, ch. 540, title VI, \xc2\xa738, 60 Stat. 440; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa725, 33 Stat. 730.\nAMENDMENTS\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71121. Jurisdiction of Federal courts; State and local requirements that\nregistered trademarks be altered or displayed differently; prohibition\n(a) The district and territorial courts of the United States shall have original jurisdiction and the\ncourts of appeal of the United States (other than the United States Court of Appeals for the Federal\nCircuit) shall have appellate jurisdiction, of all actions arising under this chapter, without regard to\nthe amount in controversy or to diversity or lack of diversity of the citizenship of the parties.\n(b) No State or other jurisdiction of the United States or any political subdivision or any agency\nthereof may require alteration of a registered mark, or require that additional trademarks, service\nmarks, trade names, or corporate names that may be associated with or incorporated into the\nregistered mark be displayed in the mark in a manner differing from the display of such additional\ntrademarks, service marks, trade names, or corporate names contemplated by the registered mark as\nexhibited in the certificate of registration issued by the United States Patent and Trademark Office.\n(July 5, 1946, ch. 540, title VI, \xc2\xa739, formerly \xc2\xa7\xc2\xa739 and 39a, 60 Stat. 440; Pub. L. 97\xe2\x80\x93164, title I,\n\xc2\xa7148, Apr. 2, 1982, 96 Stat. 46; Pub. L. 97\xe2\x80\x93296, Oct. 12, 1982, 96 Stat. 1316; Pub. L. 100\xe2\x80\x93667, title\nI, \xc2\xa7131, Nov. 16, 1988, 102 Stat. 3946; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(10), Oct. 30, 1998, 112\nStat. 3070.)\nCODIFICATION\nPub. L. 100\xe2\x80\x93667, \xc2\xa7131(b)(1), transferred section 39a of act July 5, 1946, which was classified to section\n\n\x0c1121a of this title, to subsec. (b) of this section.\nIn subsec. (a), the words "and the United States Court of Appeals for the District of Columbia" following\n"the Courts of Appeal of the United States" have been deleted as superfluous in view of section 41 of Title 28,\nJudiciary and Judicial Procedure, which includes the District of Columbia within the eleven judicial circuits of\nthe United States. The word "and" has been inserted preceding "the courts of appeal of the United States" to\npreserve the conjunctive sense of the sentence.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa717, 33 Stat. 728; Mar. 3, 1911, ch. 231, \xc2\xa7291, 36 Stat. 1167; June 7, 1934, ch.\n426, 48 Stat. 926; June 25, 1936, ch. 804, 49 Stat. 1921.\nAMENDMENTS\n1998\xe2\x80\x94Subsec. (a). Pub. L. 105\xe2\x80\x93330 substituted "courts" for "circuit courts" before "of appeal of the United\nStates".\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7131(a), designated existing provisions as subsec. (a).\nSubsec. (b). Pub. L. 100\xe2\x80\x93667, \xc2\xa7131(b), redesignated section 1121a of this title as subsec. (b) of this section\nand substituted "service marks" for "servicemarks" in two places.\n1982\xe2\x80\x94Pub. L. 97\xe2\x80\x93164 inserted "(other than the United States Court of Appeals for the Federal Circuit)".\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1982 AMENDMENT\nAmendment by Pub. L. 97\xe2\x80\x93164 effective Oct. 1, 1982, see section 402 of Pub. L. 97\xe2\x80\x93164, set out as a note\nunder section 171 of Title 28, Judiciary and Judicial Procedure.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\n\n\xc2\xa71121a. Transferred\nCODIFICATION\nSection, act July 5, 1946, ch. 540, title VI, \xc2\xa739a, as added Oct. 12, 1982, Pub. L. 97\xe2\x80\x93296, 96 Stat. 1316,\nwhich prohibited State and local requirements that registered trademarks be altered or displayed differently,\nwas transferred to subsec. (b) of section 39 of act July 5, 1946, by section 131(b)(1) of Pub. L. 100\xe2\x80\x93667 and is\nclassified to section 1121(b) of this title.\n\n\xc2\xa71122. Liability of United States and States, and instrumentalities and officials\nthereof\n(a) Waiver of sovereign immunity by the United States\nThe United States, all agencies and instrumentalities thereof, and all individuals, firms,\ncorporations, other persons acting for the United States and with the authorization and consent of the\nUnited States, shall not be immune from suit in Federal or State court by any person, including any\ngovernmental or nongovernmental entity, for any violation under this chapter.\n(b) Waiver of sovereign immunity by States\nAny State, instrumentality of a State or any officer or employee of a State or instrumentality of a\n\n\x0cState acting in his or her official capacity, shall not be immune, under the eleventh amendment of the\nConstitution of the United States or under any other doctrine of sovereign immunity, from suit in\nFederal court by any person, including any governmental or nongovernmental entity for any\nviolation under this chapter.\n(c) Remedies\nIn a suit described in subsection (a) or (b) of this section for a violation described therein,\nremedies (including remedies both at law and in equity) are available for the violation to the same\nextent as such remedies are available for such a violation in a suit against any person other than the\nUnited States or any agency or instrumentality thereof, or any individual, firm, corporation, or other\nperson acting for the United States and with authorization and consent of the United States, or a\nState, instrumentality of a State, or officer or employee of a State or instrumentality of a State acting\nin his or her official capacity. Such remedies include injunctive relief under section 1116 of this title,\nactual damages, profits, costs and attorney\'s fees under section 1117 of this title, destruction of\ninfringing articles under section 1118 of this title, the remedies provided for under sections 1114,\n1119, 1120, 1124 and 1125 of this title, and for any other remedies provided under this chapter.\n(July 5, 1946, ch. 540, title VI, \xc2\xa740, as added Pub. L. 102\xe2\x80\x93542, \xc2\xa73(b), Oct. 27, 1992, 106 Stat. 3567;\namended Pub. L. 106\xe2\x80\x9343, \xc2\xa74(b), Aug. 5, 1999, 113 Stat. 219.)\nCONSTITUTIONALITY\nFor information regarding constitutionality of section 40 of act July 5, 1946, as added by section 3(b) of\nPub. L. 102\xe2\x80\x93542, see Congressional Research Service, The Constitution of the United States of America:\nAnalysis and Interpretation, Appendix 1, Acts of Congress Held Unconstitutional in Whole or in Part by the\nSupreme Court of the United States.\nPRIOR PROVISIONS\nA prior section 1122, act July 5, 1946, ch. 540, title VI, \xc2\xa740, 60 Stat. 440, related to review of cases by the\nSupreme Court, prior to repeal by act May 24, 1949, ch. 139, \xc2\xa7142, 63 Stat. 109. See section 1254 of Title 28,\nJudiciary and Judicial Procedure.\nAMENDMENTS\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x9343, \xc2\xa74(b)(2), added subsec. (a). Former subsec. (a) redesignated (b).\nSubsec. (b). Pub. L. 106\xe2\x80\x9343, \xc2\xa74(b)(1), (2), redesignated subsec. (a) as (b) and inserted heading. Former\nsubsec. (b) redesignated (c).\nSubsec. (c). Pub. L. 106\xe2\x80\x9343, \xc2\xa74(b)(1), (3), redesignated subsec. (b) as (c) and in first sentence substituted\n"subsection (a) or (b) of this section for a violation described therein" for "subsection (a) of this section for a\nviolation described in that subsection" and inserted "the United States or any agency or instrumentality\nthereof, or any individual, firm, corporation, or other person acting for the United States and with\nauthorization and consent of the United States, or" after "other than".\nEFFECTIVE DATE\nSection effective with respect to violations that occur on or after Oct. 27, 1992, see section 4 of Pub. L.\n102\xe2\x80\x93542, set out as an Effective Date of 1992 Amendment note under section 1114 of this title.\n\n\xc2\xa71123. Rules and regulations for conduct of proceedings in Patent and\nTrademark Office\nThe Director shall make rules and regulations, not inconsistent with law, for the conduct of\nproceedings in the Patent and Trademark Office under this chapter.\n(July 5, 1946, ch. 540, title VI, \xc2\xa741, 60 Stat. 440; Pub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949;\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536,\n1501A\xe2\x80\x93583.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa726, 33 Stat. 730.\n\n\x0cAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office".\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5, of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71124. Importation of goods bearing infringing marks or names forbidden\nExcept as provided in subsection (d) of section 1526 of title 19, no article of imported\nmerchandise which shall copy or simulate the name of any domestic manufacture, or manufacturer,\nor trader, or of any manufacturer or trader located in any foreign country which, by treaty,\nconvention, or law affords similar privileges to citizens of the United States, or which shall copy or\nsimulate a trademark registered in accordance with the provisions of this chapter or shall bear a name\nor mark calculated to induce the public to believe that the article is manufactured in the United\nStates, or that it is manufactured in any foreign country or locality other than the country or locality\nin which it is in fact manufactured, shall be admitted to entry at any customhouse of the United\nStates; and, in order to aid the officers of the customs in enforcing this prohibition, any domestic\nmanufacturer or trader, and any foreign manufacturer or trader, who is entitled under the provisions\nof a treaty, convention, declaration, or agreement between the United States and any foreign country\nto the advantages afforded by law to citizens of the United States in respect to trademarks and\ncommercial names, may require his name and residence, and the name of the locality in which his\ngoods are manufactured, and a copy of the certificate of registration of his trademark, issued in\naccordance with the provisions of this chapter, to be recorded in books which shall be kept for this\npurpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury\nshall prescribe, and may furnish to the Department facsimiles of his name, the name of the locality in\nwhich his goods are manufactured, or of his registered trademark, and thereupon the Secretary of the\nTreasury shall cause one or more copies of the same to be transmitted to each collector or other\nproper officer of customs.\n(July 5, 1946, ch. 540, title VII, \xc2\xa742, 60 Stat. 440; Pub. L. 95\xe2\x80\x93410, title II, \xc2\xa7211(b), Oct. 3, 1978, 92\nStat. 903; Pub. L. 105\xe2\x80\x93330, title II, \xc2\xa7201(a)(11), (12), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106\xe2\x80\x9343,\n\xc2\xa76(b), Aug. 5, 1999, 113 Stat. 220.)\nPRIOR PROVISIONS\nAct Feb. 20, 1905, ch. 592, \xc2\xa727, 33 Stat. 730.\nAMENDMENTS\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x9343 substituted "trademarks" for "trade-marks".\n1998\xe2\x80\x94Pub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(11), substituted "name of any domestic" for "name of the any domestic".\nPub. L. 105\xe2\x80\x93330, \xc2\xa7201(a)(12), substituted "trademark" for "trade-mark" wherever appearing.\n1978\xe2\x80\x94Pub. L. 95\xe2\x80\x93410 substituted "Except as provided in subsection (d) of section 1526 of title 19, no\n\n\x0carticle" for "No article".\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective Oct. 30, 1998, and applicable only to any civil action filed or\nproceeding before the United States Patent and Trademark Office commenced on or after such date relating to\nthe registration of a mark, see section 201(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this\ntitle.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nOffices of collector of customs, comptroller of customs, surveyor of customs, and appraiser of merchandise\nof Bureau of Customs of Department of the Treasury to which appointments were required to be made by\nPresident with advice and consent of Senate ordered abolished, with such offices to be terminated not later\nthan Dec. 31, 1966, by Reorg. Plan No. 1 of 1965, eff. May 25, 1965, 30 F.R. 7035, 79 Stat. 1317, set out in\nthe Appendix to Title 5, Government Organization and Employees. Functions of offices eliminated were\nalready vested in Secretary of the Treasury by Reorg. Plan No. 26 of 1950, eff. July 31, 1950, 15 F.R. 4935,\n64 Stat. 1280, set out in the Appendix to Title 5.\n\n\xc2\xa71125. False designations of origin, false descriptions, and dilution forbidden\n(a) Civil action\n(1) Any person who, on or in connection with any goods or services, or any container for goods,\nuses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false\ndesignation of origin, false or misleading description of fact, or false or misleading representation of\nfact, which\xe2\x80\x94\n(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,\nconnection, or association of such person with another person, or as to the origin, sponsorship, or\napproval of his or her goods, services, or commercial activities by another person, or\n(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities,\nor geographic origin of his or her or another person\'s goods, services, or commercial activities,\nshall be liable in a civil action by any person who believes that he or she is or is likely to be\ndamaged by such act.\n(2) As used in this subsection, the term "any person" includes any State, instrumentality of a State\nor employee of a State or instrumentality of a State acting in his or her official capacity. Any State,\nand any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter\nin the same manner and to the same extent as any nongovernmental entity.\n(3) In a civil action for trade dress infringement under this chapter for trade dress not registered on\nthe principal register, the person who asserts trade dress protection has the burden of proving that the\nmatter sought to be protected is not functional.\n(b) Importation\nAny goods marked or labeled in contravention of the provisions of this section shall not be\nimported into the United States or admitted to entry at any customhouse of the United States. The\nowner, importer, or consignee of goods refused entry at any customhouse under this section may\nhave any recourse by protest or appeal that is given under the customs revenue laws or may have the\nremedy given by this chapter in cases involving goods refused entry or seized.\n(c) Dilution by blurring; dilution by tarnishment\n(1) Injunctive relief\nSubject to the principles of equity, the owner of a famous mark that is distinctive, inherently or\nthrough acquired distinctiveness, shall be entitled to an injunction against another person who, at\n\n\x0cany time after the owner\'s mark has become famous, commences use of a mark or trade name in\ncommerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous\nmark, regardless of the presence or absence of actual or likely confusion, of competition, or of\nactual economic injury.\n(2) Definitions\n(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general\nconsuming public of the United States as a designation of source of the goods or services of the\nmark\'s owner. In determining whether a mark possesses the requisite degree of recognition, the\ncourt may consider all relevant factors, including the following:\n(i) The duration, extent, and geographic reach of advertising and publicity of the mark,\nwhether advertised or publicized by the owner or third parties.\n(ii) The amount, volume, and geographic extent of sales of goods or services offered under\nthe mark.\n(iii) The extent of actual recognition of the mark.\n(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February\n20, 1905, or on the principal register.\n(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the\nsimilarity between a mark or trade name and a famous mark that impairs the distinctiveness of the\nfamous mark. In determining whether a mark or trade name is likely to cause dilution by blurring,\nthe court may consider all relevant factors, including the following:\n(i) The degree of similarity between the mark or trade name and the famous mark.\n(ii) The degree of inherent or acquired distinctiveness of the famous mark.\n(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive\nuse of the mark.\n(iv) The degree of recognition of the famous mark.\n(v) Whether the user of the mark or trade name intended to create an association with the\nfamous mark.\n(vi) Any actual association between the mark or trade name and the famous mark.\n(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the\nsimilarity between a mark or trade name and a famous mark that harms the reputation of the\nfamous mark.\n(3) Exclusions\nThe following shall not be actionable as dilution by blurring or dilution by tarnishment under\nthis subsection:\n(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair\nuse, of a famous mark by another person other than as a designation of source for the person\'s\nown goods or services, including use in connection with\xe2\x80\x94\n(i) advertising or promotion that permits consumers to compare goods or services; or\n(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or\nthe goods or services of the famous mark owner.\n(B) All forms of news reporting and news commentary.\n(C) Any noncommercial use of a mark.\n(4) Burden of proof\nIn a civil action for trade dress dilution under this chapter for trade dress not registered on the\nprincipal register, the person who asserts trade dress protection has the burden of proving that\xe2\x80\x94\n(A) the claimed trade dress, taken as a whole, is not functional and is famous; and\n(B) if the claimed trade dress includes any mark or marks registered on the principal register,\nthe unregistered matter, taken as a whole, is famous separate and apart from any fame of such\n\n\x0cregistered marks.\n(5) Additional remedies\nIn an action brought under this subsection, the owner of the famous mark shall be entitled to\ninjunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also\nbe entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the\ndiscretion of the court and the principles of equity if\xe2\x80\x94\n(A) the mark or trade name that is likely to cause dilution by blurring or dilution by\ntarnishment was first used in commerce by the person against whom the injunction is sought\nafter October 6, 2006; and\n(B) in a claim arising under this subsection\xe2\x80\x94\n(i) by reason of dilution by blurring, the person against whom the injunction is sought\nwillfully intended to trade on the recognition of the famous mark; or\n(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought\nwillfully intended to harm the reputation of the famous mark.\n(6) Ownership of valid registration a complete bar to action\nThe ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of\nFebruary 20, 1905, or on the principal register under this chapter shall be a complete bar to an\naction against that person, with respect to that mark, that\xe2\x80\x94\n(A) is brought by another person under the common law or a statute of a State; and\n(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or\n(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of\na mark, label, or form of advertisement.\n(7) Savings clause\nNothing in this subsection shall be construed to impair, modify, or supersede the applicability of\nthe patent laws of the United States.\n(d) Cyberpiracy prevention\n(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name\nwhich is protected as a mark under this section, if, without regard to the goods or services of the\nparties, that person\xe2\x80\x94\n(i) has a bad faith intent to profit from that mark, including a personal name which is protected\nas a mark under this section; and\n(ii) registers, traffics in, or uses a domain name that\xe2\x80\x94\n(I) in the case of a mark that is distinctive at the time of registration of the domain name, is\nidentical or confusingly similar to that mark;\n(II) in the case of a famous mark that is famous at the time of registration of the domain\nname, is identical or confusingly similar to or dilutive of that mark; or\n(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section\n220506 of title 36.\n(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a\ncourt may consider factors such as, but not limited to\xe2\x80\x94\n(I) the trademark or other intellectual property rights of the person, if any, in the domain name;\n(II) the extent to which the domain name consists of the legal name of the person or a name that\nis otherwise commonly used to identify that person;\n(III) the person\'s prior use, if any, of the domain name in connection with the bona fide offering\nof any goods or services;\n(IV) the person\'s bona fide noncommercial or fair use of the mark in a site accessible under the\ndomain name;\n(V) the person\'s intent to divert consumers from the mark owner\'s online location to a site\naccessible under the domain name that could harm the goodwill represented by the mark, either\nfor commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of\n\n\x0cconfusion as to the source, sponsorship, affiliation, or endorsement of the site;\n(VI) the person\'s offer to transfer, sell, or otherwise assign the domain name to the mark owner\nor any third party for financial gain without having used, or having an intent to use, the domain\nname in the bona fide offering of any goods or services, or the person\'s prior conduct indicating a\npattern of such conduct;\n(VII) the person\'s provision of material and misleading false contact information when applying\nfor the registration of the domain name, the person\'s intentional failure to maintain accurate\ncontact information, or the person\'s prior conduct indicating a pattern of such conduct;\n(VIII) the person\'s registration or acquisition of multiple domain names which the person knows\nare identical or confusingly similar to marks of others that are distinctive at the time of registration\nof such domain names, or dilutive of famous marks of others that are famous at the time of\nregistration of such domain names, without regard to the goods or services of the parties; and\n(IX) the extent to which the mark incorporated in the person\'s domain name registration is or is\nnot distinctive and famous within the meaning of subsection (c).\n(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the\ncourt determines that the person believed and had reasonable grounds to believe that the use of the\ndomain name was a fair use or otherwise lawful.\n(C) In any civil action involving the registration, trafficking, or use of a domain name under this\nparagraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the\ndomain name to the owner of the mark.\n(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is\nthe domain name registrant or that registrant\'s authorized licensee.\n(E) As used in this paragraph, the term "traffics in" refers to transactions that include, but are not\nlimited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer\nfor consideration or receipt in exchange for consideration.\n(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial\ndistrict in which the domain name registrar, domain name registry, or other domain name authority\nthat registered or assigned the domain name is located if\xe2\x80\x94\n(i) the domain name violates any right of the owner of a mark registered in the Patent and\nTrademark Office, or protected under subsection (a) or (c) of this section; and\n(ii) the court finds that the owner\xe2\x80\x94\n(I) is not able to obtain in personam jurisdiction over a person who would have been a\ndefendant in a civil action under paragraph (1); or\n(II) through due diligence was not able to find a person who would have been a defendant in\na civil action under paragraph (1) by\xe2\x80\x94\n(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to\nthe registrant of the domain name at the postal and e-mail address provided by the registrant\nto the registrar; and\n(bb) publishing notice of the action as the court may direct promptly after filing the action.\n(B) The actions under subparagraph (A)(ii) shall constitute service of process.\n(C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in\nthe judicial district in which\xe2\x80\x94\n(i) the domain name registrar, registry, or other domain name authority that registered or\nassigned the domain name is located; or\n(ii) documents sufficient to establish control and authority regarding the disposition of the\nregistration and use of the domain name are deposited with the court.\n(D)(i) The remedies in an in rem action under this paragraph shall be limited to a court order for\nthe forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of\n\n\x0cthe mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the\nowner of a mark in a United States district court under this paragraph, the domain name registrar,\ndomain name registry, or other domain name authority shall\xe2\x80\x94\n(I) expeditiously deposit with the court documents sufficient to establish the court\'s control and\nauthority regarding the disposition of the registration and use of the domain name to the court; and\n(II) not transfer, suspend, or otherwise modify the domain name during the pendency of the\naction, except upon order of the court.\n(ii) The domain name registrar or registry or other domain name authority shall not be liable for\ninjunctive or monetary relief under this paragraph except in the case of bad faith or reckless\ndisregard, which includes a willful failure to comply with any such court order.\n(3) The civil action established under paragraph (1) and the in rem action established under\nparagraph (2), and any remedy available under either such action, shall be in addition to any other\ncivil action or remedy otherwise applicable.\n(4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other\njurisdiction that otherwise exists, whether in rem or in personam.\n(July 5, 1946, ch. 540, title VIII, \xc2\xa743, 60 Stat. 441; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7132, Nov. 16, 1988, 102\nStat. 3946; Pub. L. 102\xe2\x80\x93542, \xc2\xa73(c), Oct. 27, 1992, 106 Stat. 3568; Pub. L. 104\xe2\x80\x9398, \xc2\xa73(a), Jan. 16,\n1996, 109 Stat. 985; Pub. L. 106\xe2\x80\x9343, \xc2\xa7\xc2\xa73(a)(2), 5, Aug. 5, 1999, 113 Stat. 219, 220; Pub. L.\n106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73002(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93545; Pub.\nL. 109\xe2\x80\x93312, \xc2\xa72, Oct. 6, 2006, 120 Stat. 1730; Pub. L. 112\xe2\x80\x93190, \xc2\xa71(a), Oct. 5, 2012, 126 Stat. 1436.)\nREFERENCES IN TEXT\nActs March 3, 1881, and February 20, 1905, referred to in subsec. (c)(2)(A)(iv), (6), are acts Mar. 3, 1881,\nch. 138, 21 Stat. 502, and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent\nwith this chapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to\nsections 81 to 109 of this title.\nPRIOR PROVISIONS\nAct Mar. 19, 1920, ch. 104, \xc2\xa73, 41 Stat. 534.\nAMENDMENTS\n2012\xe2\x80\x94Subsec. (c)(6). Pub. L. 112\xe2\x80\x93190 added subpars. (A) and (B) and struck out former subpars. (A) and\n(B) which read as follows:\n"(A)(i) is brought by another person under the common law or a statute of a State; and\n"(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or\n"(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark,\nlabel, or form of advertisement."\n2006\xe2\x80\x94Subsec. (c). Pub. L. 109\xe2\x80\x93312, \xc2\xa72(1), added subsec. (c) and struck out former subsec. (c) which\nrelated to remedies for dilution of famous marks.\nSubsec. (d)(1)(B)(i)(IX). Pub. L. 109\xe2\x80\x93312, \xc2\xa72(2), substituted "subsection (c)" for "subsection (c)(1)".\n1999\xe2\x80\x94Subsec. (a)(3). Pub. L. 106\xe2\x80\x9343, \xc2\xa75, added par. (3).\nSubsec. (c)(2). Pub. L. 106\xe2\x80\x9343, \xc2\xa73(a)(2), inserted "as set forth in section 1116 of this title" after "relief" in\nfirst sentence.\nSubsec. (d). Pub. L. 106\xe2\x80\x93113 added subsec. (d).\n1996\xe2\x80\x94Subsec. (c). Pub. L. 104\xe2\x80\x9398 added subsec. (c).\n1992\xe2\x80\x94Subsec. (a). Pub. L. 102\xe2\x80\x93542 designated existing provisions as par. (1), redesignated former pars.\n(1) and (2) as subpars. (A) and (B), respectively, and added par. (2).\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as\nfollows: "Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any\ncontainer or containers for goods, a false designation of origin, or any false description or representation,\nincluding words or other symbols tending falsely to describe or represent the same, and shall cause such goods\nor services to enter into commerce, and any person who shall with knowledge of the falsity of such\ndesignation of origin or description or representation cause or procure the same to be transported or used in\ncommerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any\nperson doing business in the locality falsely indicated as that of origin or in the region in which said locality is\n\n\x0csituated, or by any person who believes that he is or is likely to be damaged by the use of any such false\ndescription or representation."\nEFFECTIVE DATE OF 2012 AMENDMENT\nPub. L. 112\xe2\x80\x93190, \xc2\xa71(b), Oct. 5, 2012, 126 Stat. 1436, provided that: "The amendment made by subsection\n(a) [amending this section] shall apply to any action commenced on or after the date of the enactment of this\nAct [Oct. 5, 2012]."\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 applicable to all domain names registered before, on, or after Nov. 29,\n1999, see section 1000(a)(9) [title III, \xc2\xa73010] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1117 of this\ntitle.\nEFFECTIVE DATE OF 1996 AMENDMENT\nPub. L. 104\xe2\x80\x9398, \xc2\xa75, Jan. 16, 1996, 109 Stat. 987, provided that: "This Act [amending this section and\nsection 1127 of this title and enacting provisions set out as a note under section 1051 of this title] and the\namendments made by this Act shall take effect on the date of the enactment of this Act [Jan. 16, 1996]."\nEFFECTIVE DATE OF 1992 AMENDMENT\nAmendment by Pub. L. 102\xe2\x80\x93542 effective with respect to violations that occur on or after Oct. 27, 1992, see\nsection 4 of Pub. L. 102\xe2\x80\x93542, set out as a note under section 1114 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nSTUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING PERSONAL NAMES\nPub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73006], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93550,\nprovided that:\n"(a) IN GENERAL.\xe2\x80\x94Not later than 180 days after the date of the enactment of this Act [Nov. 29, 1999],\nthe Secretary of Commerce, in consultation with the Patent and Trademark Office and the Federal Election\nCommission, shall conduct a study and report to Congress with recommendations on guidelines and\nprocedures for resolving disputes involving the registration or use by a person of a domain name that includes\nthe personal name of another person, in whole or in part, or a name confusingly similar thereto, including\nconsideration of and recommendations for\xe2\x80\x94\n"(1) protecting personal names from registration by another person as a second level domain name for\npurposes of selling or otherwise transferring such domain name to such other person or any third party for\nfinancial gain;\n"(2) protecting individuals from bad faith uses of their personal names as second level domain names\nby others with malicious intent to harm the reputation of the individual or the goodwill associated with that\nindividual\'s name;\n"(3) protecting consumers from the registration and use of domain names that include personal names\nin the second level domain in manners which are intended or are likely to confuse or deceive the public as\nto the affiliation, connection, or association of the domain name registrant, or a site accessible under the\ndomain name, with such other person, or as to the origin, sponsorship, or approval of the goods, services, or\ncommercial activities of the domain name registrant;\n"(4) protecting the public from registration of domain names that include the personal names of\ngovernment officials, official candidates, and potential official candidates for Federal, State, or local\npolitical office in the United States, and the use of such domain names in a manner that disrupts the\nelectoral process or the public\'s ability to access accurate and reliable information regarding such\nindividuals;\n"(5) existing remedies, whether under State law or otherwise, and the extent to which such remedies\nare sufficient to address the considerations described in paragraphs (1) through (4); and\n"(6) the guidelines, procedures, and policies of the Internet Corporation for Assigned Names and\nNumbers and the extent to which they address the considerations described in paragraphs (1) through (4).\n\n\x0c"(b) GUIDELINES AND PROCEDURES.\xe2\x80\x94The Secretary of Commerce shall, under its Memorandum of\nUnderstanding with the Internet Corporation for Assigned Names and Numbers, collaborate to develop\nguidelines and procedures for resolving disputes involving the registration or use by a person of a domain\nname that includes the personal name of another person, in whole or in part, or a name confusingly similar\nthereto."\n\n\xc2\xa71126. International conventions\n(a) Register of marks communicated by international bureaus\nThe Director shall keep a register of all marks communicated to him by the international bureaus\nprovided for by the conventions for the protection of industrial property, trademarks, trade and\ncommercial names, and the repression of unfair competition to which the United States is or may\nbecome a party, and upon the payment of the fees required by such conventions and the fees required\nin this chapter may place the marks so communicated upon such register. This register shall show a\nfacsimile of the mark or trade or commercial name; the name, citizenship, and address of the\nregistrant; the number, date, and place of the first registration of the mark, including the dates on\nwhich application for such registration was filed and granted and the term of such registration; a list\nof goods or services to which the mark is applied as shown by the registration in the country of\norigin, and such other data as may be useful concerning the mark. This register shall be a\ncontinuation of the register provided in section 1(a) of the Act of March 19, 1920.\n(b) Benefits of section to persons whose country of origin is party to convention or treaty\nAny person whose country of origin is a party to any convention or treaty relating to trademarks,\ntrade or commercial names, or the repression of unfair competition, to which the United States is\nalso a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to\nthe benefits of this section under the conditions expressed herein to the extent necessary to give\neffect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which\nany owner of a mark is otherwise entitled by this chapter.\n(c) Prior registration in country of origin; country of origin defined\nNo registration of a mark in the United States by a person described in subsection (b) of this\nsection shall be granted until such mark has been registered in the country of origin of the applicant,\nunless the applicant alleges use in commerce.\nFor the purposes of this section, the country of origin of the applicant is the country in which he\nhas a bona fide and effective industrial or commercial establishment, or if he has not such an\nestablishment the country in which he is domiciled, or if he has not a domicile in any of the countries\ndescribed in subsection (b) of this section, the country of which he is a national.\n(d) Right of priority\nAn application for registration of a mark under section 1051, 1053, 1054, or 1091 of this title or\nunder subsection (e) of this section, filed by a person described in subsection (b) of this section who\nhas previously duly filed an application for registration of the same mark in one of the countries\ndescribed in subsection (b) of this section shall be accorded the same force and effect as would be\naccorded to the same application if filed in the United States on the same date on which the\napplication was first filed in such foreign country: Provided, That\xe2\x80\x94\n(1) the application in the United States is filed within six months from the date on which the\napplication was first filed in the foreign country;\n(2) the application conforms as nearly as practicable to the requirements of this chapter,\nincluding a statement that the applicant has a bona fide intention to use the mark in commerce;\n(3) the rights acquired by third parties before the date of the filing of the first application in the\nforeign country shall in no way be affected by a registration obtained on an application filed under\nthis subsection;\n(4) nothing in this subsection shall entitle the owner of a registration granted under this section\nto sue for acts committed prior to the date on which his mark was registered in this country unless\n\n\x0cthe registration is based on use in commerce.\nIn like manner and subject to the same conditions and requirements, the right provided in this\nsection may be based upon a subsequent regularly filed application in the same foreign country,\ninstead of the first filed foreign application: Provided, That any foreign application filed prior to\nsuch subsequent application has been withdrawn, abandoned, or otherwise disposed of, without\nhaving been laid open to public inspection and without leaving any rights outstanding, and has not\nserved, nor thereafter shall serve, as a basis for claiming a right of priority.\n(e) Registration on principal or supplemental register; copy of foreign registration\nA mark duly registered in the country of origin of the foreign applicant may be registered on the\nprincipal register if eligible, otherwise on the supplemental register in this chapter provided. Such\napplicant shall submit, within such time period as may be prescribed by the Director, a true copy, a\nphotocopy, a certification, or a certified copy of the registration in the country of origin of the\napplicant. The application must state the applicant\'s bona fide intention to use the mark in commerce,\nbut use in commerce shall not be required prior to registration.\n(f) Domestic registration independent of foreign registration\nThe registration of a mark under the provisions of subsections (c), (d), and (e) of this section by a\nperson described in subsection (b) of this section shall be independent of the registration in the\ncountry of origin and the duration, validity, or transfer in the United States of such registration shall\nbe governed by the provisions of this chapter.\n(g) Trade or commercial names of foreign nationals protected without registration\nTrade names or commercial names of persons described in subsection (b) of this section shall be\nprotected without the obligation of filing or registration whether or not they form parts of marks.\n(h) Protection of foreign nationals against unfair competition\nAny person designated in subsection (b) of this section as entitled to the benefits and subject to the\nprovisions of this chapter shall be entitled to effective protection against unfair competition, and the\nremedies provided in this chapter for infringement of marks shall be available so far as they may be\nappropriate in repressing acts of unfair competition.\n(i) Citizens or residents of United States entitled to benefits of section\nCitizens or residents of the United States shall have the same benefits as are granted by this\nsection to persons described in subsection (b) of this section.\n(July 5, 1946, ch. 540, title IX, \xc2\xa744, 60 Stat. 441; Pub. L. 87\xe2\x80\x93333, \xc2\xa72, Oct. 3, 1961, 75 Stat. 748;\nPub. L. 87\xe2\x80\x93772, \xc2\xa720, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7133, Nov. 16, 1988, 102\nStat. 3946; Pub. L. 105\xe2\x80\x93330, title I, \xc2\xa7108, Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106\xe2\x80\x9343, \xc2\xa76(b), Aug.\n5, 1999, 113 Stat. 220; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(B)], Nov. 29,\n1999, 113 Stat. 1536, 1501A\xe2\x80\x93583; Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713207(b)(12), Nov. 2, 2002,\n116 Stat. 1908.)\nREFERENCES IN TEXT\nSection 1(a) of the Act of March 19, 1920, referred to in subsec. (a), is section 1(a) of act Mar. 19, 1920, ch.\n104, 41 Stat. 533, which was classified to section 121(a) of this title, and repealed by act July 5, 1946, ch. 540,\n\xc2\xa746(a), 60 Stat. 444, insofar as inconsistent with this chapter.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa7\xc2\xa71, 2, 4, 33 Stat. 724, 725; May 4, 1906, ch. 2081, \xc2\xa7\xc2\xa71, 3, 34 Stat. 168, 169;\nFeb. 18, 1909, ch. 144, 35 Stat. 628; Mar. 19, 1920, ch. 104, \xc2\xa7\xc2\xa71, 6, 41 Stat. 533, 535; Apr. 11, 1930, ch. 132,\n\xc2\xa74, 46 Stat. 155; June 20, 1936, ch. 617, 49 Stat. 1539; June 10, 1938, ch. 332, \xc2\xa7\xc2\xa71, 2, 3, 52 Stat. 638, 639.\nAMENDMENTS\n2002\xe2\x80\x94Subsec. (e). Pub. L. 107\xe2\x80\x93273 substituted "a true copy, a photocopy, a certification," for "a\ncertification".\n1999\xe2\x80\x94Subsec. (a). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n\n\x0cPub. L. 106\xe2\x80\x9343 substituted "trademarks" for "trade-marks".\nSubsec. (e). Pub. L. 106\xe2\x80\x93113 substituted "Director" for "Commissioner".\n1998\xe2\x80\x94Subsec. (d). Pub. L. 105\xe2\x80\x93330, \xc2\xa7108(1)(A), in introductory provisions, substituted "or 1091 of this\ntitle or under subsection (e) of this section" for "1091 of this title, or subsection (e) of this section".\nSubsec. (d)(3), (4). Pub. L. 105\xe2\x80\x93330, \xc2\xa7108(1)(B), made technical amendment to reference in original act\nwhich appears in text as reference to this subsection.\nSubsec. (e). Pub. L. 105\xe2\x80\x93330, \xc2\xa7108(2), substituted "Such applicant shall submit, within such time period as\nmay be prescribed by the Commissioner, a certification or a certified copy of the registration in the country of\norigin of the applicant" for "The application therefor shall be accompanied by a certification or a certified\ncopy of the registration in the country of origin of the applicant".\n1988\xe2\x80\x94Subsec. (a). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(2), substituted "required in this chapter" for "herein prescribed".\nSubsec. (c). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(1), made technical amendment in two places to references in the\noriginal act to subsection (b) of this section, resulting in no change in text.\nSubsec. (d). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(1), (3), (4), (5), in introductory provisions, made technical amendment\nin two places to references in the original act to subsection (b) of this section, resulting in no change in text,\nand substituted "section 1051, 1053, 1054, or 1091 of this title, or subsection (e) of this section" for "sections\n1051, 1052, 1053, 1054, or 1091 of this title", in par. (2), substituted "including a statement that the applicant\nhas a bona fide intention to use the mark in commerce" for "but use in commerce need not be alleged", and in\npar. (3), substituted "foreign" for "foreing".\nSubsec. (e). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(6), inserted at end "The application must state the applicant\'s bona fide\nintention to use the mark in commerce, but use in commerce shall not be required prior to registration."\nSubsec. (f). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(1), (7), made technical amendment to references in the original act to\nsubsections (c), (d), and (e) of this section and to subsection (b) of this section, resulting in no change in text.\nSubsecs. (g) to (i). Pub. L. 100\xe2\x80\x93667, \xc2\xa7133(1), (8), made technical amendment to references in the original\nact to subsection (b) of this section, resulting in no change in text.\n1962\xe2\x80\x94Subsec. (b). Pub. L. 87\xe2\x80\x93772 inserted "or extends reciprocal rights to nationals of the United States\nby law," and substituted provisions requiring the person\'s country of origin to be a party to any convention or\ntreaty, for provisions which required such persons to be nationals of, domiciled in, or have a bona fide and\neffective business or commercial establishment in a foreign country which was a party to the International\nConvention for the Protection of Industrial Property, or the General Inter-American Convention for Trade\nMark and Commercial Protection, or any other convention or treaty relating to trademarks, trade, or\ncommercial names.\nSubsec. (e). Pub. L. 87\xe2\x80\x93772 inserted "certification or a" after "accompanied by a" and struck out\n"application for or" before "registration".\n1961\xe2\x80\x94Subsec. (d). Pub. L. 87\xe2\x80\x93333 inserted par. at end authorizing the right provided by this section to be\nbased upon a subsequent application in the same foreign country, instead of the first application, provided that\nany foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without\nhaving been open to public inspection and without leaving any rights outstanding, nor any basis for claiming\npriority.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by Pub. L. 106\xe2\x80\x93113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV,\n\xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of Title 35, Patents.\nEFFECTIVE DATE OF 1998 AMENDMENT\nAmendment by Pub. L. 105\xe2\x80\x93330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of\nPub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nFor provisions relating to applicability of amendment by Pub. L. 105\xe2\x80\x93330 to applications for registration of\ntrademarks, see section 109(b) of Pub. L. 105\xe2\x80\x93330, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1961 AMENDMENT\nPub. L. 87\xe2\x80\x93333, \xc2\xa73, Oct. 3, 1961, 75 Stat. 748, provided that: "This Act [amending this section and section\n119 of Title 35, Patents] shall take effect on the date when the Convention of Paris for the Protection of\n\n\x0cIndustrial Property of March 20, 1883, as revised at Lisbon, October 31, 1958, comes into force with respect\nto the United States and shall apply only to applications thereafter filed in the United States by persons\nentitled to the benefit of said convention, as revised at the time of such filing."\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71127. Construction and definitions; intent of chapter\nIn the construction of this chapter, unless the contrary is plainly apparent from the context\xe2\x80\x94\nThe United States includes and embraces all territory which is under its jurisdiction and control.\nThe word "commerce" means all commerce which may lawfully be regulated by Congress.\nThe term "principal register" refers to the register provided for by sections 1051 to 1072 of this\ntitle, and the term "supplemental register" refers to the register provided for by sections 1091 to 1096\nof this title.\nThe term "person" and any other word or term used to designate the applicant or other entitled to a\nbenefit or privilege or rendered liable under the provisions of this chapter includes a juristic person\nas well as a natural person. The term "juristic person" includes a firm, corporation, union,\nassociation, or other organization capable of suing and being sued in a court of law.\nThe term "person" also includes the United States, any agency or instrumentality thereof, or any\nindividual, firm, or corporation acting for the United States and with the authorization and consent of\nthe United States. The United States, any agency or instrumentality thereof, and any individual, firm,\nor corporation acting for the United States and with the authorization and consent of the United\nStates, shall be subject to the provisions of this chapter in the same manner and to the same extent as\nany nongovernmental entity.\nThe term "person" also includes any State, any instrumentality of a State, and any officer or\nemployee of a State or instrumentality of a State acting in his or her official capacity. Any State, and\nany such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the\nsame manner and to the same extent as any nongovernmental entity.\nThe terms "applicant" and "registrant" embrace the legal representatives, predecessors, successors\nand assigns of such applicant or registrant.\nThe term "Director" means the Under Secretary of Commerce for Intellectual Property and\nDirector of the United States Patent and Trademark Office.\nThe term "related company" means any person whose use of a mark is controlled by the owner of\nthe mark with respect to the nature and quality of the goods or services on or in connection with\nwhich the mark is used.\nThe terms "trade name" and "commercial name" mean any name used by a person to identify his\nor her business or vocation.\nThe term "trademark" includes any word, name, symbol, or device, or any combination thereof\xe2\x80\x94\n(1) used by a person, or\n(2) which a person has a bona fide intention to use in commerce and applies to register on the\nprincipal register established by this chapter,\nto identify and distinguish his or her goods, including a unique product, from those manufactured\nor sold by others and to indicate the source of the goods, even if that source is unknown.\nThe term "service mark" means any word, name, symbol, or device, or any combination thereof\xe2\x80\x94\n(1) used by a person, or\n\n\x0c(2) which a person has a bona fide intention to use in commerce and applies to register on the\nprincipal register established by this chapter,\nto identify and distinguish the services of one person, including a unique service, from the services\nof others and to indicate the source of the services, even if that source is unknown. Titles, character\nnames, and other distinctive features of radio or television programs may be registered as service\nmarks notwithstanding that they, or the programs, may advertise the goods of the sponsor.\nThe term "certification mark" means any word, name, symbol, or device, or any combination\nthereof\xe2\x80\x94\n(1) used by a person other than its owner, or\n(2) which its owner has a bona fide intention to permit a person other than the owner to use in\ncommerce and files an application to register on the principal register established by this chapter,\nto certify regional or other origin, material, mode of manufacture, quality, accuracy, or other\ncharacteristics of such person\'s goods or services or that the work or labor on the goods or services\nwas performed by members of a union or other organization.\nThe term "collective mark" means a trademark or service mark\xe2\x80\x94\n(1) used by the members of a cooperative, an association, or other collective group or\norganization, or\n(2) which such cooperative, association, or other collective group or organization has a bona\nfide intention to use in commerce and applies to register on the principal register established by\nthis chapter,\nand includes marks indicating membership in a union, an association, or other organization.\nThe term "mark" includes any trademark, service mark, collective mark, or certification mark.\nThe term "use in commerce" means the bona fide use of a mark in the ordinary course of trade,\nand not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be\ndeemed to be in use in commerce\xe2\x80\x94\n(1) on goods when\xe2\x80\x94\n(A) it is placed in any manner on the goods or their containers or the displays associated\ntherewith or on the tags or labels affixed thereto, or if the nature of the goods makes such\nplacement impracticable, then on documents associated with the goods or their sale, and\n(B) the goods are sold or transported in commerce, and\n(2) on services when it is used or displayed in the sale or advertising of services and the services\nare rendered in commerce, or the services are rendered in more than one State or in the United\nStates and a foreign country and the person rendering the services is engaged in commerce in\nconnection with the services.\nA mark shall be deemed to be "abandoned" if either of the following occurs:\n(1) When its use has been discontinued with intent not to resume such use. Intent not to resume\nmay be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence\nof abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary\ncourse of trade, and not made merely to reserve a right in a mark.\n(2) When any course of conduct of the owner, including acts of omission as well as\ncommission, causes the mark to become the generic name for the goods or services on or in\nconnection with which it is used or otherwise to lose its significance as a mark. Purchaser\nmotivation shall not be a test for determining abandonment under this paragraph.\nThe term "colorable imitation" includes any mark which so resembles a registered mark as to be\nlikely to cause confusion or mistake or to deceive.\nThe term "registered mark" means a mark registered in the United States Patent and Trademark\nOffice under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the\n\n\x0cAct of March 19, 1920. The phrase "marks registered in the Patent and Trademark Office" means\nregistered marks.\nThe term "Act of March 3, 1881", "Act of February 20, 1905", or "Act of March 19, 1920", means\nthe respective Act as amended.\nA "counterfeit" is a spurious mark which is identical with, or substantially indistinguishable from,\na registered mark.\nThe term "domain name" means any alphanumeric designation which is registered with or\nassigned by any domain name registrar, domain name registry, or other domain name registration\nauthority as part of an electronic address on the Internet.\nThe term "Internet" has the meaning given that term in section 230(f)(1) of title 47.\nWords used in the singular include the plural and vice versa.\nThe intent of this chapter is to regulate commerce within the control of Congress by making\nactionable the deceptive and misleading use of marks in such commerce; to protect registered marks\nused in such commerce from interference by State, or territorial legislation; to protect persons\nengaged in such commerce against unfair competition; to prevent fraud and deception in such\ncommerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered\nmarks; and to provide rights and remedies stipulated by treaties and conventions respecting\ntrademarks, trade names, and unfair competition entered into between the United States and foreign\nnations.\n(July 5, 1946, ch. 540, title X, \xc2\xa745, 60 Stat. 443; Pub. L. 87\xe2\x80\x93772, \xc2\xa721, Oct. 9, 1962, 76 Stat. 774;\nPub. L. 93\xe2\x80\x93596, \xc2\xa71, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98\xe2\x80\x93620, title I, \xc2\xa7103, Nov. 8, 1984, 98 Stat.\n3335; Pub. L. 100\xe2\x80\x93667, title I, \xc2\xa7134, Nov. 16, 1988, 102 Stat. 3946; Pub. L. 102\xe2\x80\x93542, \xc2\xa73(d), Oct. 27,\n1992, 106 Stat. 3568; Pub. L. 103\xe2\x80\x93465, title V, \xc2\xa7521, Dec. 8, 1994, 108 Stat. 4981; Pub. L. 104\xe2\x80\x9398,\n\xc2\xa74, Jan. 16, 1996, 109 Stat. 986; Pub. L. 106\xe2\x80\x9343, \xc2\xa7\xc2\xa74(c), 6(b), Aug. 5, 1999, 113 Stat. 219, 220; Pub.\nL. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73005, title IV, \xc2\xa74732(b)(1)(A)], Nov. 29, 1999, 113 Stat.\n1536, 1501A\xe2\x80\x93550, 1501A\xe2\x80\x93583; Pub. L. 109\xe2\x80\x93312, \xc2\xa73(e), Oct. 6, 2006, 120 Stat. 1733.)\nREFERENCES IN TEXT\nActs March 3, 1881, February 20, 1905, and March 19, 1920, referred to in text, are acts Mar. 3, 1881, ch.\n138, 21 Stat. 502; Feb. 20, 1905, ch. 592, 33 Stat. 724; and Mar. 19, 1920, ch. 104, 41 Stat. 533, which were\nrepealed insofar as inconsistent with this chapter by act July 5, 1946, ch. 540, \xc2\xa746(a), 60 Stat. 444. Act Feb.\n20, 1905, was classified to sections 81 to 109 of this title. Act Mar. 19, 1920, had been generally classified to\nsections 121 to 128 of this title.\nPRIOR PROVISIONS\nActs Feb. 20, 1905, ch. 592, \xc2\xa729, 33 Stat. 731; June 10, 1938, ch. 332, \xc2\xa75, 52 Stat. 639.\nAMENDMENTS\n2006\xe2\x80\x94Pub. L. 109\xe2\x80\x93312 struck out par. defining "dilution" after par. defining "abandoned".\n1999\xe2\x80\x94Pub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title IV, \xc2\xa74732(b)(1)(A)], substituted par. defining "Director" for par.\nwhich read as follows: "The term \'Commissioner\' means the Commissioner of Patents and Trademarks."\nPub. L. 106\xe2\x80\x93113, \xc2\xa71000(a)(9) [title III, \xc2\xa73005], inserted pars. defining "domain name" and "Internet" after\npar. defining "counterfeit".\nPub. L. 106\xe2\x80\x9343, \xc2\xa76(b), substituted "trademarks" for "trade-marks" in last undesignated par.\nPub. L. 106\xe2\x80\x9343, \xc2\xa74(c), between pars. defining "person" inserted: "The term \'person\' also includes the United\nStates, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United\nStates and with the authorization and consent of the United States. The United States, any agency or\ninstrumentality thereof, and any individual, firm, or corporation acting for the United States and with the\nauthorization and consent of the United States, shall be subject to the provisions of this chapter in the same\nmanner and to the same extent as any nongovernmental entity."\n1996\xe2\x80\x94Pub. L. 104\xe2\x80\x9398 inserted par. defining "dilution" after par. defining "abandoned".\n1994\xe2\x80\x94Pub. L. 103\xe2\x80\x93465 amended par. defining "abandoned" generally. Prior to amendment, par. read as\nfollows: "A mark shall be deemed to be \'abandoned\' when either of the following occurs:\n"(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may\nbe inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of\nabandonment. \'Use\' of a mark means the bona fide use of that mark made in the ordinary course of trade,\n\n\x0cand not made merely to reserve a right in a mark.\n"(2) When any course of conduct of the owner, including acts of omission as well as commission,\ncauses the mark to become the generic name for the goods or services on or in connection with which it is\nused or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining\nabandonment under this paragraph."\n1992\xe2\x80\x94Pub. L. 102\xe2\x80\x93542 inserted after fourth undesignated par. "The term \'person\' also includes any State,\nany instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his\nor her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the\nprovisions of this chapter in the same manner and to the same extent as any nongovernmental entity."\n1988\xe2\x80\x94Pub. L. 100\xe2\x80\x93667, \xc2\xa7134(1), amended par. defining "related company" generally. Prior to amendment,\npar. read as follows: "The term \'related company\' means any person who legitimately controls or is controlled\nby the registrant or applicant for registration in respect to the nature and quality of the goods or services in\nconnection with which the mark is used."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(2), amended par. defining "trade name" and "commercial name" generally. Prior to\namendment, par. read as follows: "The terms \'trade name\' and \'commercial name\' include individual names\nand surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists,\nand others to identify their businesses, vocations, or occupations; the names or titles lawfully adopted and\nused by persons, firms, associations, corporations, companies, unions, and any manufacturing, industrial,\ncommercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being\nsued in a court of law."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(3), amended par. defining "trademark" generally. Prior to amendment, par. read as\nfollows: "The term \'trademark\' includes any word, name, symbol, or device or any combination thereof\nadopted and used by a manufacturer or merchant to identify and distinguish his goods, including a unique\nproduct, from those manufactured or sold by others and to indicate the source of the goods, even if that source\nis unknown."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(4), amended par. defining "service mark" generally. Prior to amendment, par. read\nas follows: "The term \'service mark\' means a mark used in the sale or advertising of services to identify and\ndistinguish the services of one person, including a unique service, from the services of others and to indicate\nthe source of the services, even if that source is unknown. Titles, character names and other distinctive\nfeatures of radio or television programs may be registered as service marks notwithstanding that they, or the\nprograms, may advertise the goods of the sponsor."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(5), amended par. defining "certification mark" generally. Prior to amendment, par.\nread as follows: "The term \'certification mark\' means a mark used upon or in connection with the products or\nservices of one or more persons other than the owner of the mark to certify regional or other origin, material,\nmode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or\nlabor on the goods or services was performed by members of a union or other organization."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(6), amended par. defining "collective mark" generally. Prior to amendment, par.\nread as follows: "The term \'collective mark\' means a trade-mark or service mark used by the members of a\ncooperative, an association or other collective group or organization and includes marks used to indicate\nmembership in a union, an association or other organization."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(7), amended par. defining "mark" generally. Prior to amendment, par. read as\nfollows: "The term \'mark\' includes any trade-mark, service mark, collective mark, or certification mark\nentitled to registration under this chapter whether registered or not."\nPub. L. 100\xe2\x80\x93667, \xc2\xa7134(8), substituted par. defining "use in commerce" for former par. which read as\nfollows: "For the purposes of this chapter a mark shall be deemed to be used in commerce (a) on goods when\nit is placed in any manner on the goods or their containers or the displays associated therewith or on the tags\nor labels affixed thereto and the goods are sold or transported in commerce and (b) on services when it is used\nor displayed in the sale or advertising of services and the services are rendered in commerce, or the services\nare rendered in more than one State or in this and a foreign country and the person rendering the services is\nengaged in commerce in connection therewith." and par. providing when a mark is deemed abandoned for\nformer par. which read as follows: "A mark shall be deemed to be \'abandoned\'\xe2\x80\x94\n"(a) When its use has been discontinued with intent not to resume. Intent not to resume may be inferred\nfrom circumstances. Nonuse for two consecutive years shall be prima facie abandonment.\n"(b) When any course of conduct of the registrant, including acts of omission as well as commission, causes\nthe mark to lose its significance as an indication of origin. Purchaser motivation shall not be a test for\ndetermining abandonment under this subparagraph."\n1984\xe2\x80\x94Pub. L. 98\xe2\x80\x93620, \xc2\xa7103(1), in definition of "trademark" substituted "trademark" for "trade-mark", and\nsubstituted "identify and distinguish his goods, including a unique product, from those manufactured or sold\n\n\x0cby others and to indicate the source of the goods, even if that source is unknown" for "identify his goods and\ndistinguish them from those manufactured or sold by others".\nPub. L. 98\xe2\x80\x93620, \xc2\xa7103(2), in definition of "service mark" substituted "The term \'service mark\' means a mark\nused in the sale or advertising of services to identify and distinguish the services of one person, including a\nunique service, from the services of others and to indicate the source of the services, even if that source is\nunknown" for "The term \'service mark\' means a mark used in the sale or advertising of services to identify the\nservices of one person and distinguish them from the services of others".\nPub. L. 98\xe2\x80\x93620, \xc2\xa7103(3), in subpar. (b) of par. relating to when a mark shall be deemed to be "abandoned",\ninserted "Purchaser motivation shall not be a test for determining abandonment under this subparagraph."\n1975\xe2\x80\x94Pub. L. 93\xe2\x80\x93596 substituted "Patent and Trademark Office" for "Patent Office" in two places and\n"Commissioner of Patents and Trademarks" for "Commissioner of Patents" in definition of "Commissioner".\n1962\xe2\x80\x94Pub. L. 87\xe2\x80\x93772 substituted, "predecessors," for "and" in definition of "applicant" and "registrant",\n"Titles, character names and other distinctive features of radio or television programs may be registered as\nservice marks notwithstanding that they, or the programs, may advertise the goods of the sponsor" for "and\nincludes without limitation the marks, names, symbols, titles, designations, slogans, character names, and\ndistinctive features of radio or other advertising used in commerce", in definition of "service mark", inserted\n"or the services are rendered in more than one State or in this and a foreign country and the person rendering\nthe services is engaged in commerce in connection therewith" in fifteenth paragraph relating to use in\ncommerce, struck out "purchasers" after "deceive" in definition of "colorable imitation", and substituted\n"commerce" for "commence" in last par. relating to the intent of the chapter.\nEFFECTIVE DATE OF 1999 AMENDMENT\nAmendment by section 1000(a)(9) [title III, \xc2\xa73005] of Pub. L. 106\xe2\x80\x93113 applicable to all domain names\nregistered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, \xc2\xa73010] of Pub. L. 106\xe2\x80\x93113, set\nout as a note under section 1117 of this title.\nAmendment by section 1000(a)(9) [title IV, \xc2\xa74732(b)(1)(A)] of Pub. L. 106\xe2\x80\x93113 effective 4 months after\nNov. 29, 1999, see section 1000(a)(9) [title IV, \xc2\xa74731] of Pub. L. 106\xe2\x80\x93113, set out as a note under section 1 of\nTitle 35, Patents.\nEFFECTIVE DATE OF 1994 AMENDMENT\nAmendment by Pub. L. 103\xe2\x80\x93465 effective one year after the date on which the WTO Agreement enters into\nforce with respect to the United States [Jan. 1, 1995], see section 523 of Pub. L. 103\xe2\x80\x93465, set out as a note\nunder section 1052 of this title.\nEFFECTIVE DATE OF 1992 AMENDMENT\nAmendment by Pub. L. 102\xe2\x80\x93542 effective with respect to violations that occur on or after Oct. 27, 1992, see\nsection 4 of Pub. L. 102\xe2\x80\x93542, set out as a note under section 1114 of this title.\nEFFECTIVE DATE OF 1988 AMENDMENT\nAmendment by Pub. L. 100\xe2\x80\x93667 effective one year after Nov. 16, 1988, see section 136 of Pub. L.\n100\xe2\x80\x93667, set out as a note under section 1051 of this title.\nEFFECTIVE DATE OF 1975 AMENDMENT\nAmendment by Pub. L. 93\xe2\x80\x93596 effective Jan. 2, 1975, see section 4 of Pub. L. 93\xe2\x80\x93596, set out as a note\nunder section 1111 of this title.\nREPEAL AND EFFECT ON EXISTING RIGHTS\nRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations\nand rights under prior acts, see notes set out under section 1051 of this title.\nTRANSFER OF FUNCTIONS\nFor transfer of functions of other officers, employees, and agencies of Department of Commerce, with\ncertain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, \xc2\xa7\xc2\xa71, 2,\neff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization\nand Employees.\n\n\xc2\xa71128. Repealed. Pub. L. 110\xe2\x80\x93403, title III, \xc2\xa7305(a)(1), Oct. 13, 2008, 122 Stat.\n\n\x0c4270\nSection, Pub. L. 106\xe2\x80\x9358, title VI, \xc2\xa7653, Sept. 29, 1999, 113 Stat. 480; Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9)\n[title IV, \xc2\xa74741(b)(1)], Nov. 29, 1999, 113 Stat. 1536, 1501A\xe2\x80\x93586; Pub. L. 108\xe2\x80\x93447, div. B, title II, \xc2\xa7210,\nDec. 8, 2004, 118 Stat. 2884, established the National Intellectual Property Law Enforcement Coordination\nCouncil.\nEFFECTIVE DATE OF REPEAL\nPub. L. 110\xe2\x80\x93403, title III, \xc2\xa7305(a)(1), Oct. 13, 2008, 122 Stat. 4270, provided that the repeal of this section\nis effective upon confirmation of the Intellectual Property Enforcement Coordinator by the Senate and\npublication of such appointment in the Congressional Record. The Senate confirmed the first Intellectual\nProperty Enforcement Coordinator on Dec. 3, 2009, as reflected in that day\'s Congressional Record. See 155\nCong. Rec. 29389 (2009).\n\n\xc2\xa71129. Transferred\nCODIFICATION\nSection, Pub. L. 106\xe2\x80\x93113, div. B, \xc2\xa71000(a)(9) [title III, \xc2\xa73002(b)], Nov. 29, 1999, 113 Stat. 1536,\n1501A\xe2\x80\x93548, which related to cyberpiracy protections for individuals, was transferred to section 8131 of this\ntitle.\n\nSUBCHAPTER IV\xe2\x80\x94THE MADRID PROTOCOL\n\xc2\xa71141. Definitions\nIn this subchapter:\n(1) Basic application\nThe term "basic application" means the application for the registration of a mark that has been\nfiled with an Office of a Contracting Party and that constitutes the basis for an application for the\ninternational registration of that mark.\n(2) Basic registration\nThe term "basic registration" means the registration of a mark that has been granted by an\nOffice of a Contracting Party and that constitutes the basis for an application for the international\nregistration of that mark.\n(3) Contracting Party\nThe term "Contracting Party" means any country or inter-governmental organization that is a\nparty to the Madrid Protocol.\n(4) Date of recordal\nThe term "date of recordal" means the date on which a request for extension of protection, filed\nafter an international registration is granted, is recorded on the International Register.\n(5) Declaration of bona fide intention to use the mark in commerce\nThe term "declaration of bona fide intention to use the mark in commerce" means a declaration\nthat is signed by the applicant for, or holder of, an international registration who is seeking\nextension of protection of a mark to the United States and that contains a statement that\xe2\x80\x94\n(A) the applicant or holder has a bona fide intention to use the mark in commerce;\n(B) the person making the declaration believes himself or herself, or the firm, corporation, or\nassociation in whose behalf he or she makes the declaration, to be entitled to use the mark in\ncommerce; and\n(C) no other person, firm, corporation, or association, to the best of his or her knowledge and\n\n\x0cbelief, has the right to use such mark in commerce either in the identical form of the mark or in\nsuch near resemblance to the mark as to be likely, when used on or in connection with the goods\nof such other person, firm, corporation, or association, to cause confusion, mistake, or\ndeception.\n(6) Extension of protection\nThe term "extension of protection" means the protection resulting from an international\nregistration that extends to the United States at the request of the holder of the international\nregistration, in accordance with the Madrid Protocol.\n(7) Holder of an international registration\nA "holder" of an international registration is the natural or juristic person in whose name the\ninternational registration is recorded on the International Register.\n(8) International application\nThe term "international application" means an application for international registration that is\nfiled under the Madrid Protocol.\n(9) International Bureau\nThe term "International Bureau" means the International Bureau of the World Intellectual\nProperty Organization.\n(10) International Register\nThe term "International Register" means the official collection of data concerning international\nregistrations maintained by the International Bureau that the Madrid Protocol or its implementing\nregulations require or permit to be recorded.\n(11) International registration\nThe term "international registration" means the registration of a mark granted under the Madrid\nProtocol.\n(12) International registration date\nThe term "international registration date" means the date assigned to the international\nregistration by the International Bureau.\n(13) Madrid Protocol\nThe term "Madrid Protocol" means the Protocol Relating to the Madrid Agreement Concerning\nthe International Registration of Marks, adopted at Madrid, Spain, on June 27, 1989.\n(14) Notification of refusal\nThe term "notification of refusal" means the notice sent by the United States Patent and\nTrademark Office to the International Bureau declaring that an extension of protection cannot be\ngranted.\n(15) Office of a Contracting Party\nThe term "Office of a Contracting Party" means\xe2\x80\x94\n(A) the office, or governmental entity, of a Contracting Party that is responsible for the\nregistration of marks; or\n(B) the common office, or governmental entity, of more than 1 Contracting Party that is\nresponsible for the registration of marks and is so recognized by the International Bureau.\n(16) Office of origin\nThe term "office of origin" means the Office of a Contracting Party with which a basic\napplication was filed or by which a basic registration was granted.\n(17) Opposition period\nThe term "opposition period" means the time allowed for filing an opposition in the United\nStates Patent and Trademark Office, including any extension of time granted under section 1063\n\n\x0cof this title.\n(July 5, 1946, ch. 540, title XII, \xc2\xa760, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1913.)\nEFFECTIVE DATE\nPub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713403, Nov. 2, 2002, 116 Stat. 1920, provided that: "This subtitle\n[subtitle D (\xc2\xa7\xc2\xa713401\xe2\x80\x9313403) of title III of div. C of Pub. L. 107\xe2\x80\x93273, enacting this subchapter and provisions\nset out as a note under section 1051 of this title] and the amendments made by this subtitle shall take effect on\nthe later of\xe2\x80\x94\n"(1) the date on which the Madrid Protocol (as defined in section 60 of the Trademark Act of 1946\n[this section]) enters into force with respect to the United States [Nov. 2, 2003]; or\n"(2) the date occurring 1 year after the date of enactment of this Act [Nov. 2, 2002]."\n\n\xc2\xa71141a. International applications based on United States applications or\nregistrations\n(a) In general\nThe owner of a basic application pending before the United States Patent and Trademark Office,\nor the owner of a basic registration granted by the United States Patent and Trademark Office may\nfile an international application by submitting to the United States Patent and Trademark Office a\nwritten application in such form, together with such fees, as may be prescribed by the Director.\n(b) Qualified owners\nA qualified owner, under subsection (a) of this section, shall\xe2\x80\x94\n(1) be a national of the United States;\n(2) be domiciled in the United States; or\n(3) have a real and effective industrial or commercial establishment in the United States.\n(July 5, 1946, ch. 540, title XII, \xc2\xa761, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1915.)\n\n\xc2\xa71141b. Certification of the international application\n(a) Certification procedure\nUpon the filing of an application for international registration and payment of the prescribed fees,\nthe Director shall examine the international application for the purpose of certifying that the\ninformation contained in the international application corresponds to the information contained in the\nbasic application or basic registration at the time of the certification.\n(b) Transmittal\nUpon examination and certification of the international application, the Director shall transmit the\ninternational application to the International Bureau.\n(July 5, 1946, ch. 540, title XII, \xc2\xa762, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1915.)\n\n\xc2\xa71141c. Restriction, abandonment, cancellation, or expiration of a basic\napplication or basic registration\nWith respect to an international application transmitted to the International Bureau under section\n1141b of this title, the Director shall notify the International Bureau whenever the basic application\n\n\x0cor basic registration which is the basis for the international application has been restricted,\nabandoned, or canceled, or has expired, with respect to some or all of the goods and services listed in\nthe international registration\xe2\x80\x94\n(1) within 5 years after the international registration date; or\n(2) more than 5 years after the international registration date if the restriction, abandonment, or\ncancellation of the basic application or basic registration resulted from an action that began before\nthe end of that 5-year period.\n(July 5, 1946, ch. 540, title XII, \xc2\xa763, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1915.)\n\n\xc2\xa71141d. Request for extension of protection subsequent to international\nregistration\nThe holder of an international registration that is based upon a basic application filed with the\nUnited States Patent and Trademark Office or a basic registration granted by the Patent and\nTrademark Office may request an extension of protection of its international registration by filing\nsuch a request\xe2\x80\x94\n(1) directly with the International Bureau; or\n(2) with the United States Patent and Trademark Office for transmittal to the International\nBureau, if the request is in such form, and contains such transmittal fee, as may be prescribed by\nthe Director.\n(July 5, 1946, ch. 540, title XII, \xc2\xa764, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1916.)\n\n\xc2\xa71141e. Extension of protection of an international registration to the United\nStates under the Madrid Protocol\n(a) In general\nSubject to the provisions of section 1141h of this title, the holder of an international registration\nshall be entitled to the benefits of extension of protection of that international registration to the\nUnited States to the extent necessary to give effect to any provision of the Madrid Protocol.\n(b) If the United States is office of origin\nWhere the United States Patent and Trademark Office is the office of origin for a trademark\napplication or registration, any international registration based on such application or registration\ncannot be used to obtain the benefits of the Madrid Protocol in the United States.\n(July 5, 1946, ch. 540, title XII, \xc2\xa765, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1916.)\n\n\xc2\xa71141f. Effect of filing a request for extension of protection of an international\nregistration to the United States\n(a) Requirement for request for extension of protection\nA request for extension of protection of an international registration to the United States that the\nInternational Bureau transmits to the United States Patent and Trademark Office shall be deemed to\nbe properly filed in the United States if such request, when received by the International Bureau, has\nattached to it a declaration of bona fide intention to use the mark in commerce that is verified by the\napplicant for, or holder of, the international registration.\n(b) Effect of proper filing\n\n\x0cUnless extension of protection is refused under section 1141h of this title, the proper filing of the\nrequest for extension of protection under subsection (a) of this section shall constitute constructive\nuse of the mark, conferring the same rights as those specified in section 1057(c) of this title, as of the\nearliest of the following:\n(1) The international registration date, if the request for extension of protection was filed in the\ninternational application.\n(2) The date of recordal of the request for extension of protection, if the request for extension of\nprotection was made after the international registration date.\n(3) The date of priority claimed pursuant to section 1141g of this title.\n(July 5, 1946, ch. 540, title XII, \xc2\xa766, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1916.)\n\n\xc2\xa71141g. Right of priority for request for extension of protection to the United\nStates\nThe holder of an international registration with a request for an extension of protection to the\nUnited States shall be entitled to claim a date of priority based on a right of priority within the\nmeaning of Article 4 of the Paris Convention for the Protection of Industrial Property if\xe2\x80\x94\n(1) the request for extension of protection contains a claim of priority; and\n(2) the date of international registration or the date of the recordal of the request for extension of\nprotection to the United States is not later than 6 months after the date of the first regular national\nfiling (within the meaning of Article 4(A)(3) of the Paris Convention for the Protection of\nIndustrial Property) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris\nConvention for the Protection of Industrial Property).\n(July 5, 1946, ch. 540, title XII, \xc2\xa767, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1917.)\n\n\xc2\xa71141h. Examination of and opposition to request for extension of protection;\nnotification of refusal\n(a) Examination and opposition\n(1) A request for extension of protection described in section 1141f(a) of this title shall be\nexamined as an application for registration on the Principal Register under this chapter, and if on\nsuch examination it appears that the applicant is entitled to extension of protection under this\nsubchapter, the Director shall cause the mark to be published in the Official Gazette of the United\nStates Patent and Trademark Office.\n(2) Subject to the provisions of subsection (c) of this section, a request for extension of protection\nunder this subchapter shall be subject to opposition under section 1063 of this title.\n(3) Extension of protection shall not be refused on the ground that the mark has not been used in\ncommerce.\n(4) Extension of protection shall be refused to any mark not registrable on the Principal Register.\n(b) Notification of refusal\nIf,1 a request for extension of protection is refused under subsection (a) of this section, the\nDirector shall declare in a notification of refusal (as provided in subsection (c) of this section) that\nthe extension of protection cannot be granted, together with a statement of all grounds on which the\nrefusal was based.\n(c) Notice to International Bureau\n(1) Within 18 months after the date on which the International Bureau transmits to the Patent and\nTrademark Office a notification of a request for extension of protection, the Director shall transmit to\n\n\x0cthe International Bureau any of the following that applies to such request:\n(A) A notification of refusal based on an examination of the request for extension of protection.\n(B) A notification of refusal based on the filing of an opposition to the request.\n(C) A notification of the possibility that an opposition to the request may be filed after the end\nof that 18-month period.\n(2) If the Director has sent a notification of the possibility of opposition under paragraph (1)(C),\nthe Director shall, if applicable, transmit to the International Bureau a notification of refusal on the\nbasis of the opposition, together with a statement of all the grounds for the opposition, within 7\nmonths after the beginning of the opposition period or within 1 month after the end of the opposition\nperiod, whichever is earlier.\n(3) If a notification of refusal of a request for extension of protection is transmitted under\nparagraph (1) or (2), no grounds for refusal of such request other than those set forth in such\nnotification may be transmitted to the International Bureau by the Director after the expiration of the\ntime periods set forth in paragraph (1) or (2), as the case may be.\n(4) If a notification specified in paragraph (1) or (2) is not sent to the International Bureau within\nthe time period set forth in such paragraph, with respect to a request for extension of protection, the\nrequest for extension of protection shall not be refused and the Director shall issue a certificate of\nextension of protection pursuant to the request.\n(d) Designation of agent for service of process\nIn responding to a notification of refusal with respect to a mark, the holder of the international\nregistration of the mark may designate, by a document filed in the United States Patent and\nTrademark Office, the name and address of a person residing in the United States on whom notices\nor process in proceedings affecting the mark may be served. Such notices or process may be served\nupon the person designated by leaving with that person, or mailing to that person, a copy thereof at\nthe address specified in the last designation filed. If the person designated cannot be found at the\naddress given in the last designation, or if the holder does not designate by a document filed in the\nUnited States Patent and Trademark Office the name and address of a person residing in the United\nStates for service of notices or process in proceedings affecting the mark, the notice or process may\nbe served on the Director.\n(July 5, 1946, ch. 540, title XII, \xc2\xa768, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1917.)\n1\n\nSo in original. The comma probably should not appear.\n\n\xc2\xa71141i. Effect of extension of protection\n(a) Issuance of extension of protection\nUnless a request for extension of protection is refused under section 1141h of this title, the\nDirector shall issue a certificate of extension of protection pursuant to the request and shall cause\nnotice of such certificate of extension of protection to be published in the Official Gazette of the\nUnited States Patent and Trademark Office.\n(b) Effect of extension of protection\nFrom the date on which a certificate of extension of protection is issued under subsection (a) of\nthis section\xe2\x80\x94\n(1) such extension of protection shall have the same effect and validity as a registration on the\nPrincipal Register; and\n(2) the holder of the international registration shall have the same rights and remedies as the\nowner of a registration on the Principal Register.\n(July 5, 1946, ch. 540, title XII, \xc2\xa769, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n\n\x0c2002, 116 Stat. 1918.)\n\n\xc2\xa71141j. Dependence of extension of protection to the United States on the\nunderlying international registration\n(a) Effect of cancellation of international registration\nIf the International Bureau notifies the United States Patent and Trademark Office of the\ncancellation of an international registration with respect to some or all of the goods and services\nlisted in the international registration, the Director shall cancel any extension of protection to the\nUnited States with respect to such goods and services as of the date on which the international\nregistration was canceled.\n(b) Effect of failure to renew international registration\nIf the International Bureau does not renew an international registration, the corresponding\nextension of protection to the United States shall cease to be valid as of the date of the expiration of\nthe international registration.\n(c) Transformation of an extension of protection into a United States application\nThe holder of an international registration canceled in whole or in part by the International Bureau\nat the request of the office of origin, under article 6(4) of the Madrid Protocol, may file an\napplication, under section 1051 or 1126 of this title, for the registration of the same mark for any of\nthe goods and services to which the cancellation applies that were covered by an extension of\nprotection to the United States based on that international registration. Such an application shall be\ntreated as if it had been filed on the international registration date or the date of recordal of the\nrequest for extension of protection with the International Bureau, whichever date applies, and, if the\nextension of protection enjoyed priority under section 1141g of this title, shall enjoy the same\npriority. Such an application shall be entitled to the benefits conferred by this subsection only if the\napplication is filed not later than 3 months after the date on which the international registration was\ncanceled, in whole or in part, and only if the application complies with all the requirements of this\nchapter which apply to any application filed pursuant to section 1051 or 1126 of this title.\n(July 5, 1946, ch. 540, title XII, \xc2\xa770, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1918.)\n\n\xc2\xa71141k. Duration, affidavits and fees\n(a) Time periods for required affidavits\nEach extension of protection for which a certificate has been issued under section 1141i of this\ntitle shall remain in force for the term of the international registration upon which it is based, except\nthat the extension of protection of any mark shall be canceled by the Director unless the holder of the\ninternational registration files in the United States Patent and Trademark Office affidavits that meet\nthe requirements of subsection (b), within the following time periods:\n(1) Within the 1-year period immediately preceding the expiration of 6 years following the date\nof issuance of the certificate of extension of protection.\n(2) Within the 1-year period immediately preceding the expiration of 10 years following the\ndate of issuance of the certificate of extension of protection, and each successive 10-year period\nfollowing the date of issuance of the certificate of extension of protection.\n(3) The holder may file the affidavit required under this section within a grace period of 6\nmonths after the end of the applicable time period established in paragraph (1) or (2), together\nwith the fee described in subsection (b) and the additional grace period surcharge prescribed by\nthe Director.\n(b) Requirements for affidavit\n\n\x0cThe affidavit referred to in subsection (a) shall\xe2\x80\x94\n(1)(A) state that the mark is in use in commerce;\n(B) set forth the goods and services recited in the extension of protection on or in connection\nwith which the mark is in use in commerce;\n(C) be accompanied by such number of specimens or facsimiles showing current use of the\nmark in commerce as may be required by the Director; and\n(D) be accompanied by the fee prescribed by the Director; or\n(2)(A) set forth the goods and services recited in the extension of protection on or in connection\nwith which the mark is not in use in commerce;\n(B) include a showing that any nonuse is due to special circumstances which excuse such\nnonuse and is not due to any intention to abandon the mark; and\n(C) be accompanied by the fee prescribed by the Director.\n(c) Deficient affidavit\nIf any submission filed within the period set forth in subsection (a) is deficient, including that the\naffidavit was not filed in the name of the holder of the international registration, the deficiency may\nbe corrected after the statutory time period, within the time prescribed after notification of the\ndeficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed\nby the Director.\n(d) Notice of requirement\nSpecial notice of the requirement for such affidavit shall be attached to each certificate of\nextension of protection.\n(e) Notification of acceptance or refusal\nThe Director shall notify the holder of the international registration who files any affidavit\nrequired by this section of the Director\'s acceptance or refusal thereof and, in the case of a refusal,\nthe reasons therefor.\n(f) Designation of resident for service of process and notices\nIf the holder of the international registration of the mark is not domiciled in the United States, the\nholder may designate, by a document filed in the United States Patent and Trademark Office, the\nname and address of a person resident in the United States on whom may be served notices or\nprocess in proceedings affecting the mark. Such notices or process may be served upon the person so\ndesignated by leaving with that person or mailing to that person a copy thereof at the address\nspecified in the last designation so filed. If the person so designated cannot be found at the last\ndesignated address, or if the holder does not designate by a document filed in the United States\nPatent and Trademark Office the name and address of a person resident in the United States on\nwhom may be served notices or process in proceedings affecting the mark, such notices or process\nmay be served on the Director.\n(July 5, 1946, ch. 540, title XII, \xc2\xa771, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1919; amended Pub. L. 111\xe2\x80\x93146, \xc2\xa73(d)(2), Mar. 17, 2010, 124 Stat. 68.)\nAMENDMENTS\n2010\xe2\x80\x94Pub. L. 111\xe2\x80\x93146 amended section generally. Prior to amendment, section related to required\naffidavits and fees, contents of affidavit, notification of Director\'s acceptance or refusal, and service of notice\nor process.\n\n\xc2\xa71141l. Assignment of an extension of protection\nAn extension of protection may be assigned, together with the goodwill associated with the mark,\nonly to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or\ncommercial establishment either in a country that is a Contracting Party or in a country that is a\nmember of an intergovernmental organization that is a Contracting Party.\n\n\x0c(July 5, 1946, ch. 540, title XII, \xc2\xa772, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1920.)\n\n\xc2\xa71141m. Incontestability\nThe period of continuous use prescribed under section 1065 of this title for a mark covered by an\nextension of protection issued under this subchapter may begin no earlier than the date on which the\nDirector issues the certificate of the extension of protection under section 1141i of this title, except\nas provided in section 1141n of this title.\n(July 5, 1946, ch. 540, title XII, \xc2\xa773, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1920.)\n\n\xc2\xa71141n. Rights of extension of protection\nWhen a United States registration and a subsequently issued certificate of extension of protection\nto the United States are owned by the same person, identify the same mark, and list the same goods\nor services, the extension of protection shall have the same rights that accrued to the registration\nprior to issuance of the certificate of extension of protection.\n(July 5, 1946, ch. 540, title XII, \xc2\xa774, as added Pub. L. 107\xe2\x80\x93273, div. C, title III, \xc2\xa713402, Nov. 2,\n2002, 116 Stat. 1920.)\n\n\x0c'