Excerpts from Trademark Act of 1946, as Amended

PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427

(found at http://www.uspto.gov/web/offices/tac/tmlaw2.pdf)

(July 11, 2015)


§ 1 (15 U.S.C. § 1051) [Principal Register] Application for registration; verification

§ 2 (15 U.S.C. § 1052) [Principal Register] Trademarks registrable on the principal register; concurrent registration

§ 3 (15 U.S.C. § 1053) [Principal Register] Service marks registrable

§ 13 (15 U.S.C. § 1063) [Principal Register] Opposition

§ 14 (15 U.S.C. § 1064). [Principal Register] Cancellation

§ 15 (15 U.S.C. § 1065) [Principal Register] Incontestability of right to use mark under certain conditions

§ 23 (15 U.S.C. § 1091) [Supplemental Register] Filing and registration for foreign use

§ 24 (15 U.S.C. § 1092) [Supplemental Register] Cancellation

§ 25 (15 U.S.C. § 1093) Supplemental registration certificate

§ 26 (15 U.S.C. § 1094) General provisions

§ 27 (15 U.S.C. § 1095) Principal registration not precluded by supplemental registration

§ 28 (15 U.S.C. § 1096) Department of Treasury; supplemental registration not filed

§ 33 (15 U.S.C. § 1115). Registration as evidence of right to exclusive use; defenses

§ 43 (15 U.S.C. § 1125). False designations of origin; false description or representation

§ 45 (15 U.S.C. § 1127) [Definitions]

 


TITLE I - THE PRINCIPAL REGISTER

§ 1 (15 U.S.C. § 1051).   Application for registration; verification

(a)(1) The owner of a trademark used in commerce may request registration of its trademark on

the principal register hereby established by paying the prescribed fee and filing in the Patent and

Trademark Office an application and a verified statement, in such form as may be prescribed by

the Director, and such number of specimens or facsimiles of the mark as used as may be required

by the Director.

(2) The application shall include specification of the applicant’s domicile and citizenship, the

date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in

commerce, the goods in connection with which the mark is used, and a drawing of the mark.

(3) The statement shall be verified by the applicant and specify that—

(A) the person making the verification believes that he or she, or the juristic person in

whose behalf he or she makes the verification, to be the owner of the mark sought to be

registered;

(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are

accurate;

(C) the mark is in use in commerce; and

(D) to the best of the verifier’s knowledge and belief, no other person has the right to use

such mark in commerce either in the identical form thereof or in such near resemblance

thereto as to be likely, when used on or in connection with the goods of such other person,

to cause confusion, or to cause mistake, or to deceive, except that, in the case of every

application claiming concurrent use, the applicant shall—

(i) state exceptions to the claim of exclusive use; and

(ii) shall specify, to the extent of the verifier’s knowledge—

(I) any concurrent use by others;

(II) the goods on or in connection with which and the areas in which each

concurrent use exists;

(III) the periods of each use; and

(IV) the goods and area for which the applicant desires registration.

(4) The applicant shall comply with such rules or regulations as may be prescribed by the

Director. The Director shall promulgate rules prescribing the requirements for the application

and for obtaining a filing date herein.

(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of

such person, to use a trademark in commerce may request registration of its trademark on the

principal register hereby established by paying the prescribed fee and filing in the Patent and

Trademark Office an application and a verified statement, in such form as may be prescribed by

the Director.

(2) The application shall include specification of the applicant’s domicile and citizenship, the

goods in connection with which the applicant has a bona fide intention to use the mark, and a

drawing of the mark.

(3) The statement shall be verified by the applicant and specify—

(A) that the person making the verification believes that he or she, or the juristic person in

whose behalf he or she makes the verification, to be entitled to use the mark in commerce;

(B) the applicant’s bona fide intention to use the mark in commerce;

(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the

application are accurate; and

(D) that, to the best of the verifier’s knowledge and belief, no other person has the right to

use such mark in commerce either in the identical form thereof or in such near

resemblance thereto as to be likely, when used on or in connection with the goods of such

other person, to cause confusion, or to cause mistake, or to deceive.

Except for applications filed pursuant to section 1126 of this title, no mark shall be registered

until the applicant has met the requirements of subsections (c) and (d) of this section.

(4) The applicant shall comply with such rules or regulations as may be prescribed by the

Director. The Director shall promulgate rules prescribing the requirements for the application

and for obtaining a filing date herein.

(c) At any time during examination of an application filed under subsection (b) of this section, an

applicant who has made use of the mark in commerce may claim the benefits of such use for

purposes of this chapter, by amending his or her application to bring it into conformity with the

requirements of subsection (a) of this section.

(d) (1) Within six months after the date on which the notice of allowance with respect to a mark is

issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the

applicant shall file in the Patent and Trademark Office, together with such number of specimens or

facsimiles of the mark as used in commerce as may be required by the Director and payment of

the prescribed fee, a verified statement that the mark is in use in commerce and specifying the

date of the applicant’s first use of the mark in commerce and those goods or services specified in

the notice of allowance on or in connection with which the mark is used in commerce. Subject to

examination and acceptance of the statement of use, the mark shall be registered in the Patent

and Trademark Office, a certificate of registration shall be issued for those goods or services

recited in the statement of use for which the mark is entitled to registration, and notice of

registration shall be published in the Official Gazette of the Patent and Trademark Office. Such

examination may include an examination of the factors set forth in subsections (a) through (e) of

section 1052 of this title. The notice of registration shall specify the goods or services for which

the mark is registered.

(2) The Director shall extend, for one additional 6-month period, the time for filing the

statement of use under paragraph (1), upon written request of the applicant before the

expiration of the 6-month period provided in paragraph (1). In addition to an extension under

the preceding sentence, the Director may, upon a showing of good cause by the applicant,

further extend the time for filing the statement of use under paragraph (1) for periods

aggregating not more than 24 months, pursuant to written request of the applicant made

before the expiration of the last extension granted under this paragraph. Any request for an

extension under this paragraph shall be accompanied by a verified statement that the

applicant has a continued bona fide intention to use the mark in commerce and specifying

those goods or services identified in the notice of allowance on or in connection with which the

applicant has a continued bona fide intention to use the mark in commerce. Any request for

an extension under this paragraph shall be accompanied by payment of the prescribed fee.

The Director shall issue regulations setting forth guidelines for determining what constitutes

good cause for purposes of this paragraph.

(3) The Director shall notify any applicant who files a statement of use of the acceptance or

refusal thereof and, if the statement of use is refused, the reasons for the refusal. An

applicant may amend the statement of use.

(4) The failure to timely file a verified statement of use under paragraph (1) or an extension

request under paragraph (2) shall result in abandonment of the application, unless it can be

shown to the satisfaction of the Director that the delay in responding was unintentional, in

which case the time for filing may be extended, but for a period not to exceed the period

specified in paragraphs (1) and (2) for filing a statement of use.

(e) If the applicant is not domiciled in the United States the applicant may designate, by a

document filed in the United States Patent and Trademark Office, the name and address of a

person resident in the United States on whom may be served notices or process in proceedings

affecting the mark. Such notices or process may be served upon the person so designated by

leaving with that person or mailing to that person a copy thereof at the address specified in the

last designation so filed. If the person so designated cannot be found at the address given in the

last designation, or if the registrant does not designate by a document filed in the United States

Patent and Trademark Office the name and address of a person resident in the United States on

whom may be served notices or process in proceedings affecting the mark, such notices or

process may be served on the Director.

(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3935; Oct. 30,

1998, 112 Stat. 3064; Nov. 29, 1999, 113 Stat. 1501A; Nov. 2, 2002, 116 Stat. 1906.)

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§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others

shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may

disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or

national symbols, or bring them into contempt, or disrepute; or a geographical indication

which, when used on or in connection with wines or spirits, identifies a place other than the

origin of the goods and is first used on or in connection with wines or spirits by the applicant

on or after one year after the date on which the WTO Agreement (as defined in section

3501(9) of title 19) enters into force with respect to the United States.

(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or

of any State or municipality, or of any foreign nation, or any simulation thereof.

(c) Consists of or comprises a name, portrait, or signature identifying a particular living

individual except by his written consent, or the name, signature, or portrait of a deceased

President of the United States during the life of his widow, if any, except by the written consent

of the widow.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and

Trademark Office, or a mark or trade name previously used in the United States by another

and not abandoned, as to be likely, when used on or in connection with the goods of the

applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the

Director determines that confusion, mistake, or deception is not likely to result from the

continued use by more than one person of the same or similar marks under conditions and

limitations as to the mode or place of use of the marks or the goods on or in connection with

which such marks are used, concurrent registrations may be issued to such persons when

they have become entitled to use such marks as a result of their concurrent lawful use in

commerce prior to (1) the earliest of the filing dates of the applications pending or of any

registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously

issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and

effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of

February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any

pending application or a registration shall not be required when the owner of such application

or registration consents to the grant of a concurrent registration to the applicant. Concurrent

registrations may also be issued by the Director when a court of competent jurisdiction has

finally determined that more than one person is entitled to use the same or similar marks in

commerce. In issuing concurrent registrations, the Director shall prescribe conditions and

limitations as to the mode or place of use of the mark or the goods on or in connection with

which such mark is registered to the respective persons.

(e) Consists of a mark which, (1) when used on or in connection with the goods of the

applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in

connection with the goods of the applicant is primarily geographically descriptive of them,

except as indications of regional origin may be registrable under section 1054 of this title, (3)

when used on or in connection with the goods of the applicant is primarily geographically

deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any

matter that, as a whole, is functional.

(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this

section, nothing herein shall prevent the registration of a mark used by the applicant which

has become distinctive of the applicant’s goods in commerce. The Director may accept as

prima facie evidence that the mark has become distinctive, as used on or in connection with

the applicant’s goods in commerce, proof of substantially exclusive and continuous use

thereof as a mark by the applicant in commerce for the five years before the date on which the

claim of distinctiveness is made. Nothing in this section shall prevent the registration of a

mark which, when used on or in connection with the goods of the applicant, is primarily

geographically deceptively misdescriptive of them, and which became distinctive of the

applicant’s goods in commerce before the date of the enactment of the North American Free

Trade Agreement Implementation Act. A mark which would be likely to cause dilution by

blurring or dilution by tarnishment under section 43(c), may be refused registration only

pursuant to a proceeding brought under section 13. A registration for a mark which would be

likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be

canceled pursuant to a proceeding brought under either section 14 or section 24.

(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3037; Dec. 8,

1993, 107 Stat. 2057; Dec. 8, 1994, 108 Stat. 4982; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat.

218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 Stat. 1730.)

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§ 3 (15 U.S.C. § 1053). Service marks registrable

Subject to the provisions relating to the registration of trademarks, so far as they are applicable,

service marks shall be registrable, in the same manner and with the same effect as are

trademarks, and when registered they shall be entitled to the protection provided herein in the

case of trademarks. Applications and procedure under this section shall conform as nearly as

practicable to those prescribed for the registration of trademarks.

(Amended Nov. 16, 1988, 102 Stat. 3938.)


§ 5 (15 U.S.C. § 1055). Use by related companies

Where a registered mark or a mark sought to be registered is or may be used legitimately by

related companies, such use shall inure to the benefit of the registrant or applicant for registration,

and such use shall not affect the validity of such mark or of its registration, provided such mark is

not used in such manner as to deceive the public. If first use of a mark by a person is controlled

by the registrant or applicant for registration of the mark with respect to the nature and quality of

the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the

case may be.

(Amended Nov. 16, 1988, 102 Stat. 3938.)


§ 12 (15 U.S.C. § 1062). Publication

(a) Upon the filing of an application for registration and payment of the prescribed fee, the Director

shall refer the application to the examiner in charge of the registration of marks, who shall cause

an examination to be made and, if on such examination it shall appear that the applicant is entitled

to registration, or would be entitled to registration upon the acceptance of the statement of use

required by section 1051(d) of this title, the Director shall cause the mark to be published in the

Official Gazette of the Patent and Trademark Office: Provided, That in the case of an applicant

claiming concurrent use, or in the case of an application to be placed in an interference as

provided for in section 1066 of this title, the mark, if otherwise registrable, may be published

subject to the determination of the rights of the parties to such proceedings.

(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant

thereof and of the reason therefor. The applicant shall have a period of six months in which to

reply or amend his application, which shall then be reexamined. This procedure may be repeated

until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of

six months to reply or amend or appeal, whereupon the application shall be deemed to have been

abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding

was unintentional, whereupon such time may be extended.

(c) A registrant of a mark registered under the provision of the Act of March 3, 1881, or the Act of

February 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the

payment of the prescribed fee file with the Director an affidavit setting forth those goods stated in

the registration on which said mark is in use in commerce and that the registrant claims the

benefits of this chapter for said mark. The Director shall publish notice thereof with a reproduction

of said mark in the Official Gazette, and notify the registrant of such publication and of the

requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of

this title. Marks published under this subsection shall not be subject to the provisions of section

1063 of this chapter.

(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3940; Oct. 30,

1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1501A-583.)


§ 13 (15 U.S.C. § 1063). Opposition

(a) Any person who believes that he would be damaged by the registration of a mark upon the

principal register, including the registration of any mark which would be likely to cause dilution by

blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the

prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor,

within thirty days after the publication under subsection (a) of section 1062 of this title of the mark

sought to be registered. Upon written request prior to the expiration of the thirty-day period, the

time for filing opposition shall be extended for an additional thirty days, and further extensions of

time for filing opposition may be granted by the Director for good cause when requested prior to

the expiration of an extension. The Director shall notify the applicant of each extension of the time

for filing opposition. An opposition may be amended under such conditions as may be prescribed

by the Director.

(b) Unless registration is successfully opposed—

(1) a mark entitled to registration on the principal register based on an application filed under

section 1051(a) of this title or pursuant to section 1126 shall be registered in the Patent and

Trademark Office, a certificate of registration shall be issued, and notice of the registration

shall be published in the Official Gazette of the Patent and Trademark Office; or

(2) a notice of allowance shall be issued to the applicant if the applicant applied for registration

under section 1051(b) of this title.

(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Aug. 27,

1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3940; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat.

1501A-583; Oct. 6, 2006, 120 Stat. 1730.)


§ 14 (15 U.S.C. § 1064). Cancellation

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment

of the prescribed fee, be filed as follows by any person who believes that he is or will be

damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment

under section 1125(c) of this title, by the registration of a mark on the principal register established

by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

(1) Within five years from the date of the registration of the mark under this chapter.

(2) Within five years from the date of publication under section 1062(c) of this title of a mark

registered under the Act of March 3, 1881, or the Act of February 20, 1905.

(3) At any time if the registered mark becomes the generic name for the goods or services, or

a portion thereof, for which it is registered, or is functional, or has been abandoned, or its

registration was obtained fraudulently or contrary to the provisions of section 1054 of this title

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

or contrary to similar prohibitory provisions of such said prior Acts for a registration under such

Acts, or if the registered mark is being used by, or with the permission of, the registrant so as

to misrepresent the source of the goods or services on or in connection with which the mark is

used. If the registered mark becomes the generic name for less than all of the goods or

services for which it is registered, a petition to cancel the registration for only those goods or

services may be filed. A registered mark shall not be deemed to be the generic name of goods

or services solely because such mark is also used as a name of or to identify a unique product

or service. The primary significance of the registered mark to the relevant public rather than

purchaser motivation shall be the test for determining whether the registered mark has

become the generic name of goods or services on or in connection with which it has been

used.

(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February

20, 1905, and has not been published under the provisions of subsection (c) of section 1062

of this title.

(5) At any time in the case of a certification mark on the ground that the registrant (A) does not

control, or is not able legitimately to exercise control over, the use of such mark, or (B)

engages in the production or marketing of any goods or services to which the certification

mark is applied, or (C) permits the use of the certification mark for purposes other than to

certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of

any person who maintains the standards or conditions which such mark certifies:

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in

paragraphs (3) and (5) of this section any mark registered on the principal register established by

this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be

deemed to prohibit the registrant from using its certification mark in advertising or promoting

recognition of the certification program or of the goods or services meeting the certification

standards of the registrant. Such uses of the certification mark shall not be grounds for

cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture,

or sell any of the certified goods or services to which its identical certification mark is applied.

(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 320; Nov. 8, 1984, 98 Stat. 3335; Nov. 16,

1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 218; Oct. 6, 2006, 120 Stat.

1730.)

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§ 15 (15 U.S.C. § 1065). Incontestability of right to use mark under certain conditions

Except on a ground for which application to cancel may be filed at anytime under paragraphs (3)

and (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark

registered on the principal register infringes a valid right acquired under the law of any State or

Territory by use of a mark or trade name continuing from a date prior to the date of registration

under this chapter of such registered mark, the right of the owner to use such registered mark in

commerce for the goods or services on or in connection with which such registered mark has

been in continuous use for five consecutive years subsequent to the date of such registration and

is still in use in commerce, shall be incontestable: Provided, That—

(1) there has been no final decision adverse to the owner’s claim of ownership of such mark

for such goods or services, or to the owner’s right to register the same or to keep the same on

the register; and

(2) there is no proceeding involving said rights pending in the United States Patent and

Trademark Office or in a court and not finally disposed of; and

(3) an affidavit is filed with the Director within one year after the expiration of any such fiveyear

period setting forth those goods or services stated in the registration on or in connection

with which such mark has been in continuous use for such five consecutive years and is still in

use in commerce, and the other matters specified in paragraphs (1) and (2) of this section;

and

(4) no incontestable right shall be acquired in a mark which is the generic name for the goods

or services or a portion thereof, for which it is registered.

Subject to the conditions above specified in this section, the incontestable right with reference to a

mark registered under this chapter shall apply to a mark registered under the Act of March 3,

1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the Director

within one year after the expiration of any period of five consecutive years after the date of

publication of a mark under the provisions of subsection (c) of section 1062 of this title.

The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof.

(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16,

1988, 102 Stat. 3941; Nov. 29, 1999, 113 Stat. 1501A-583; Mar. 17, 2010, 124 Stat. 66.)

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TITLE II - THE SUPPLEMENTAL REGISTER

§ 23 (15 U.S.C. § 1091). [Supplemental Register] Filing and registration for foreign use

(a) In addition to the principal register, the Director shall keep a continuation of the register

provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled “An Act to give effect

to certain provisions of the convention for the protection of trademarks and commercial names,

made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for

other purposes,” to be called the supplemental register. All marks capable of distinguishing

applicant’s goods or services and not registrable on the principal register herein provided, except

those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of

this title, which are in lawful use in commerce by the owner thereof, on or in connection with any

goods or services may be registered on the supplemental register upon the payment of the

prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 of

this title so far as they are applicable. Nothing in this section shall prevent the registration on the

supplemental register of a mark, capable of distinguishing the applicant’s goods or services and

not registrable on the principal register under this chapter, that is declared to be unregistrable

under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the

owner thereof, on or in connection with any goods or services, since before December 8, 1993.

(b) Upon the filing of an application for registration on the supplemental register and payment of

the prescribed fee the Director shall refer the application to the examiner in charge of the

registration of marks, who shall cause an examination to be made and if on such examination it

shall appear that the applicant is entitled to registration, the registration shall be granted. If the

applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this

title shall apply.

(c) For the purposes of registration on the supplemental register, a mark may consist of any

trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname,

geographical name, numeral, device, any matter that as a whole is not functional, or any

combination of any of the foregoing, but such mark must be capable of distinguishing the

applicant’s goods or services.

(Amended Oct. 9, 1962, 76 Stat. 773; Nov. 16, 1988, 102 Stat. 3942; Dec. 8, 1993, 107 Stat. 2057; Oct. 30,

1998, 112 Stat. 3069; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.)



§ 24 (15 U.S.C. § 1092). Cancellation

Marks for the supplemental register shall not be published for or be subject to opposition, but shall

be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever

any person believes that such person is or will be damaged by the registration of a mark on the

supplemental register--

(1) for which the effective filing date is after the date on which such person's mark became

famous and which would be likely to cause dilution by blurring or dilution by tarnishment under

section 1125(c) of this title; or

(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at

any time, upon payment of the prescribed fee and the filing of a petition stating the ground

therefor, apply to the Director to cancel such registration.

The Director shall refer such application to the Trademark Trial and Appeal Board, which shall

give notice thereof to the registrant. If it is found after a hearing before the Board that the

registrant is not entitled to registration, or that the mark has been abandoned, the registration shall

be canceled by the Director. However, no final judgment shall be entered in favor of an applicant

under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail

without establishing constructive use pursuant to section 1057(c).

(Amended Aug. 8, 1958, 72 Stat. 540; Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16,

1988, 102 Stat. 3943; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120

Stat. 1730.)

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§ 25 (15 U.S.C. § 1093). Supplemental registration certificate

The certificates of registration for marks registered on the supplemental register shall be

conspicuously different from certificates issued for marks registered on the principal register.


§ 26 (15 U.S.C. § 1094). General provisions

The provisions of this chapter shall govern so far as applicable applications for registration and

registrations on the supplemental register as well as those on the principal register, but

applications for and registrations on the supplemental register shall not be subject to or receive

the advantages of sections 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063 to 1068,

inclusive, 1072, 1115 and 1124 of this title.

(Amended Nov. 16, 1988, 102 Stat. 3943; Oct. 30, 1998, 112 Stat. 3069.)


§ 27 (15 U.S.C. § 1095). Principal registration not precluded by supplemental registration

Registration of a mark on the supplemental register, or under the Act of March 19, 1920, shall not

preclude registration by the registrant on the principal register established by this chapter.

Registration of a mark on the supplemental register shall not constitute an admission that the

mark has not acquired distinctiveness.

(Amended Nov. 16, 1988, 102 Stat. 3943.)


§ 28 (15 U.S.C. § 1096). Department of Treasury; supplemental registration not filed

Registration on the supplemental register or under the Act of March 19, 1920, shall not be filed in

the Department of the Treasury or be used to stop importations.

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§ 33 (15 U.S.C. § 1115). Registration as evidence of right to exclusive use; defenses

(a) Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.


(b) To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used, by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or

(6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this Act or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or

(7) That the mark has been or is being used to violate the antitrust laws of the United States; or

(8) That the mark is functional; or

(9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.

(Amended Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3944; Oct. 30, 1998, 112 Stat. 3069; Nov. 2, 2002, 116 Stat. 1908.)



TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION FORBIDDEN

§ 43 (15 U.S.C. § 1125). False designations of origin; false description or representation

(a) Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a

mark registered on the principal register provided by this chapter and owned by a party to an

action shall be admissible in evidence and shall be prima facie evidence of the validity of the

registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and

of the registrant’s exclusive right to use the registered mark in commerce on or in connection with

the goods or services specified in the registration subject to any conditions or limitations stated

therein, but shall not preclude another person from proving any legal or equitable defense or

defect, including those set forth in subsection (b) of this section, which might have been asserted

if such mark had not been registered.

(b) To the extent that the right to use the registered mark has become incontestable under section

1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark

and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s

exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to

the exclusive right to use the mark on or in connection with the goods or services specified in the

affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed

under the provisions of section 1059 of this title if the goods or services specified in the renewal

are fewer in number, subject to any conditions or limitations in the registration or in such affidavit

or renewal application. Such conclusive evidence of the right to use the registered mark shall be

subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the

following defenses or defects:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used, by or with the permission of the registrant or a person

in privity with the registrant, so as to misrepresent the source of the goods or services on or in

connection with which the mark is used; or

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise

than as a mark, of the party’s individual name in his own business, or of the individual name of

anyone in privity with such party, or of a term or device which is descriptive of and used fairly and

in good faith only to describe the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without

knowledge of the registrant’s prior use and has been continuously used by such party or those in

privity with him from a date prior to (A) the date of constructive use of the mark established

pursuant to section 1057(c) of this title, (B) the registration of the mark under this Act if the

application for registration is filed before the effective date of the Trademark Law Revision Act of

1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this

title: Provided, however, That this defense or defect shall apply only for the area in which such

continuous prior use is proved; or

(6) That the mark whose use is charged as an infringement was registered and used prior to the

registration under this Act or publication under subsection (c) of section 1062 of this title of the

registered mark of the registrant, and not abandoned: Provided, however, That this defense or

defect shall apply only for the area in which the mark was used prior to such registration or such

publication of the registrant’s mark; or

(7) That the mark has been or is being used to violate the antitrust laws of the United States; or

(8) That the mark is functional; or

(9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.

(Amended Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3944; Oct. 30, 1998, 112 Stat. 3069; Nov. 2,

2002, 116 Stat. 1908.)

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TITLE X - CONSTRUCTION AND DEFINITIONS

§ 45 (15 U.S.C. § 1127).

In the construction of this chapter, unless the contrary is plainly apparent from the context—

United States. The United States includes and embraces all territory which is under its jurisdiction

and control.


Commerce. The word “commerce” means all commerce which may lawfully be regulated by

Congress.


Principal Register, Supplemental Register. The term “principal register” refers to the register

provided for by sections 1051 to 1072 of this title, and the term “supplemental register” refers to

the register provided for by sections 1091 to 1096 of this title.


Person, juristic person. The term “person” and any other word or term used to designate the

applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this

Act includes a juristic person as well as a natural person. The term “juristic person” includes a

firm, corporation, union, association, or other organization capable of suing and being sued in a

court of law.


The term “person” also includes the United States, any agency or instrumentality thereof, or any

individual, firm, or corporation acting for the United States and with the authorization and consent

of the United States. The United States, any agency or instrumentality thereof, and any individual,

firm, or corporation acting for the United States and with the authorization and consent of the

United States, shall be subject to the provisions of this chapter in the same manner and to the

same extent as any nongovernmental entity.


The term “person” also includes any State, any instrumentality of a State, and any officer or

employee of a State or instrumentality of a State acting in his or her official capacity. Any State,

and any such instrumentality, officer, or employee, shall be subject to the provisions of this

chapter in the same manner and to the same extent as any non-governmental entity.

Applicant, registrant. The terms “applicant” and “registrant” embrace the legal representatives,

predecessors, successors and assigns of such applicant or registrant.


Director. The term “Director” means the Under Secretary of Commerce for Intellectual Property

and Director of the United States Patent and Trademark Office.


Related company. The term “related company” means any person whose use of a mark is

controlled by the owner of the mark with respect to the nature and quality of the goods or services

on or in connection with which the mark is used.


Trade name, commercial name. The terms “trade name” and “commercial name” mean any

name used by a person to identify his or her business or vocation.


Trademark. The term “trademark” includes any word, name, symbol, or device, or any

combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the

principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured

or sold by others and to indicate the source of the goods, even if that source is unknown.

Service mark. The term “service mark” means any word, name, symbol, or device, or any

combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the

principal register established by this chapter,

to identify and distinguish the services of one person, including a unique service, from the

services of others and to indicate the source of the services, even if that source is unknown.

Titles, character names, and other distinctive features of radio or television programs may be

registered as service marks notwithstanding that they, or the programs, may advertise the goods

of the sponsor.


Certification mark. The term “certification mark” means any word, name, symbol, or device, or

any combination thereof—

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in

commerce and files an application to register on the principal register established by this

chapter,

to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other

characteristics of such person’s goods or services or that the work or labor on the goods or

services was performed by members of a union or other organization.


Collective mark. The term “collective mark” means a trademark or service mark—

(1) used by the members of a cooperative, an association, or other collective group or

organization, or

(2) which such cooperative, association, or other collective group or organization has a bona

fide intention to use in commerce and applies to register on the principal register established

by this chapter,

and includes marks indicating membership in a union, an association, or other organization.


Mark. The term “mark” includes any trademark, service mark, collective mark, or certification

Mark.


Use in commerce. The term “use in commerce” means the bona fide use of a mark in the

ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this

chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated

therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such

placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the

services are rendered in commerce, or the services are rendered in more than one State or in

the United States and a foreign country and the person rendering the services is engaged in

commerce in connection with the services.


Abandonment of mark. A mark shall be deemed to be “abandoned” if either of the following

occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to

resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima

facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made

in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as

commission, causes the mark to become the generic name for the goods or services on or in

connection with which it is used or otherwise to lose its significance as a mark. Purchaser

motivation shall not be a test for determining abandonment under this paragraph.

Colorable imitation. The term “colorable imitation” includes any mark which so resembles a

registered mark as to be likely to cause confusion or mistake or to deceive.


Registered mark. The term “registered mark” means a mark registered in the United States

Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of

February 20, 1905, or the Act of March 19, 1920. The phrase “marks registered in the Patent and

Trademark Office” means registered marks.


Prior acts. The term “Act of March 3, 1881,” “Act of February 20, 1905,” or “Act of March 19,

1920,” means the respective Act as amended.


Counterfeit. A “counterfeit” is a spurious mark which is identical with, or substantially

indistinguishable from, a registered mark.


Domain name. The term “domain name” means any alphanumeric designation which is

registered with or assigned by any domain name registrar, domain name registry, or other domain

name registration authority as part of an electronic address on the Internet.


Internet. The term “Internet” has the meaning given that term in section 230(f)(1) of the

Communications Act of 1934 (47 U.S.C. 230(f)(1)).


Singular and plural. Words used in the singular include the plural and vice versa.


Intent of Chapter. The intent of this chapter is to regulate commerce within the control of

Congress by making actionable the deceptive and misleading use of marks in such commerce; to

protect registered marks used in such commerce from interference by State, or territorial

legislation; to protect persons engaged in such commerce against unfair competition; to prevent

fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or

colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties

and conventions respecting trademarks, trade names, and unfair competition entered into

between the United States and foreign nations.


(Amended Oct. 9, 1962, 76 Stat. 774; Jan. 2, 1975, 88 Stat. 1949; Nov. 8, 1984, 98 Stat. 3335, Nov. 16,

1988, 102 Stat. 3946; Oct. 27, 1992, 106 Stat. 3568; Dec. 8, 1994, 108 Stat. 4981; Jan. 16, 1996, 109 Stat.

986; Aug. 5, 1999, 113 Stat. 219-220; Nov. 29, 1999, 113 Stat. 1501A-550, 1501A-583; Oct. 6, 2006, 120

Stat. 1730.)

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Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

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Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

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Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

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Acceptable Specimen       Supplemental Register   $224 Statement of Use

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Why Not Just Patents? Functional Trademarks   How to Trademark     

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Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

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Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

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SCAM Letters Surname Refusal


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What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

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Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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