Trademark Act of 1946, as amended

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Act of July 5, 1946
[Chapter 540 of the 79th Congress; Approved July 5, 1946; 60 Stat.
427]
[Commonly Referred to as the Trademark Act of 1946 or Lanham
Act]
[As Amended Through P.L. 116–260, Enacted December 27, 2020]
øCurrency: This publication is a compilation of the text of Chapter 540 of the 79th
Congress. It was last amended by the public law listed in the As Amended
Through note above and below at the bottom of each page of the pdf version and
reflects current law through the date of the enactment of the public law listed at
https://www.govinfo.gov/app/collection/comps/¿
øNote: While this publication does not represent an official version of any Federal
statute, substantial efforts have been made to ensure the accuracy of its contents.
The official version of Federal law is found in the United States Statutes at Large
and in the United States Code. The legal effect to be given to the Statutes at
Large and the United States Code is established by statute (1 U.S.C. 112, 204).¿
AN ACT To provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for
other purposes.

Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
TITLE I—THE PRINCIPAL REGISTER
SECTION 1. (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
1
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Sec. 1

Act of July 5, 1946

2

(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 44, 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.
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3

Act of July 5, 1946

Sec. 1

(c) At any time during examination of an application filed
under subsection (b), an applicant who has made use of the mark
in commerce may claim the benefits of such use for purposes of this
Act, by amending his or her application to bring it into conformity
with the requirements of subsection (a).
(d)(1) Within six months after the date on which the notice of
allowance with respect to a mark is issued under section 13(b)(2)
to an applicant under subsection (b) of this section, the applicant
shall file in the Patent and Trademark Office, together with such
number of specimens or 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 2. 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,
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Sec. 2

Act of July 5, 1946

4

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.
(f) 1 A third party may submit for consideration for inclusion in
the record of an application evidence relevant to a ground for refusal of registration. The third-party submission shall identify the
ground for refusal and include a concise description of each piece
of evidence submitted in support of each identified ground for refusal. Not later than 2 months after the date on which the submission is filed, the Director shall determine whether the evidence
should be included in the record of the application. The Director
shall establish by regulation appropriate procedures for the consideration of evidence submitted by a third party under this subsection
and may prescribe a fee to accompany the submission. If the Director determines that the third-party evidence should be included in
the record of the application, only the evidence and the ground for
refusal to which the evidence relates may be so included. Any determination by the Director whether or not to include evidence in the
record of an application shall be final and non-reviewable, and a
determination to include or to not include evidence in the record
shall not prejudice any party’s right to raise any issue and rely on
any evidence in any other proceeding.
ø15 U.S.C. 1051¿
MARKS REGISTRABLE ON THE PRINCIPAL REGISTER

SEC. 2. 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
1 Subsection (f) was added to the end of section 1 by section 223(a) of division Q of Public
Law 116-260 and is subject to a delayed effective date. Such amendment will take effect on 12/
27/2021. For delayed effective amendment see section 223(c) of division Q of such act.

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Act of July 5, 1946

Sec. 2

Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) 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 Act; (2) July 5, 1947, in the case of registrations
previously issued under the Act of March 3, 1881, or February 20,
1905, and continuing in full force and effect on that date; or (3)
July 5, 1947, in the case of applications filed under the Act of 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 4, (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,
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Sec. 3

Act of July 5, 1946

6

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.
ø15 U.S.C. 1052¿
SERVICE MARKS REGISTRABLE

SEC. 3. 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.
ø15 U.S.C. 1053¿
COLLECTIVE AND CERTIFICATION MARKS REGISTRABLE

SEC. 4. Subject to the provisions relating to the registration of
trademarks, so far as they are applicable, collective and certification marks, including indications of regional origin; shall be registrable under this Act, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the
marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they
shall be entitled to the protection provided herein in the case of
trademarks, except in the case of certification marks when used so
as to represent falsely that the owner or a user thereof makes or
sells the goods or performs the services on or in connection with
which such mark is used. Applications and procedure under this
section shall conform as nearly as practicable to those prescribed
for the registration of trademarks.
ø15 U.S.C. 1054¿
USE BY RELATED COMPANIES

SEC. 5. 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
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Act of July 5, 1946

Sec. 7

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.
ø15 U.S.C. 1055¿

SEC. 6. (a) The Director may require the applicant to disclaim
an unregistrable component of a mark otherwise registrable. An
applicant may voluntarily disclaim a component of a mark sought
to be registered.
(b) No disclaimer, including those made under subsection (e) of
section 7 of this Act, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed
matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or
services.
ø15 U.S.C. 1056¿
CERTIFICATES

SEC. 7. (a) Certificates of registration of marks registered upon
the principal register shall be issued in the name of the United
States of America, under the seal of the United States Patent and
Trademark Office, and shall be signed by the Director or have his
signature placed thereon, and a record thereof shall be kept in the
Patent Office. The registration shall reproduce the mark, and state
that the mark is registered on the principal register under this Act,
the date of the first use of the mark, the date of the first use of
the mark in commerce, the particular goods or services for which
it is registered, the number and date of the registration, the term
thereof, the date on which the application for registration was received in the United States Patent and Trademark Office, and any
conditions and limitations that may be imposed in the registration.
(b) A certificate of registration of a mark upon the principal
register provided by this Act shall be prima facie evidence of the
validity of the registered mark and of the registration of the mark,
of the owner’s ownership of the mark, and of the owner’s exclusive
right to use the registered mark in commerce on or in connection
with the goods or services specified in the certificate, subject to any
conditions or limitations stated in the certificate.
(c) Contingent on the registration of a mark on the principal
register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection
with the goods or services specified in the registration against any
other person except for a person whose mark has not been abandoned and who, prior to such filing—
(1) has used the mark;
(2) has filed an application to register the mark which is
pending or has resulted in registration of the mark; or
(3) has filed a foreign application to register the mark on
the basis of which he or she has acquired a right of priority,
and timely files an application under section 44(d) to register
the mark which is pending or has resulted in registration of
the mark.
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Sec. 8

Act of July 5, 1946

8

(d) A certificate of registration of a mark may be issued to the
assignee of the applicant, but the assignment must first be recorded in the United States Patent and Trademark Office. In case
of change of ownership the Director shall, at the request of the
owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration
of the said mark in the name of such assignee, and for the unexpired part of the original period.
(e) Upon application of the owner the Director may permit any
registration to be surrendered for cancelation, and upon cancelation
appropriate entry shall be made in the records of the United States
Patent and Trademark Office. Upon application of the owner and
payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part:
Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in
the records of the United States Patent and Trademark Office and
upon the certificate of registration.
(f) Copies of any records, books, papers, or drawings belonging
to the United States Patent and Trademark Office relating to
marks, and, copies of registrations, when authenticated by the seal
of the United States Patent and Trademark Office and certified by
the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the
originals would be evidence; and any person making application
therefore and paying the prescribed fee shall have such copies.
(g) CORRECTION OF PATENT AND TRADEMARK OFFICE MISTAKE.—Whenever a material mistake in a registration, incurred
through the fault of the United States Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate
stating the fact and nature of such mistake shall be issued without
charge and recorded and a printed copy thereof shall be attached
to each printed copy of the registration and such corrected registration shall thereafter have the same effect as if the same had been
originally issued in such corrected form, or in the discretion of the
Director a new certificate of registration may be issued without
charge. All certificates of correction heretofore issued in accordance
with the rules of the United States Patent and Trademark Office
and the registrations to which they are attached shall have the
same force and effect as if such certificates and their issue had
been specifically authorized by statute.
(h) Whenever a mistake has been made in a registration and
a showing has been made that such mistake occurred in good faith
through the fault of the applicant, the Director is authorized to
issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the
correction does not involve such changes in the registration as to
require republication of the mark.
ø15 U.S.C. 1057¿
SEC. 8. DURATION, AFFIDAVITS AND FEES.
(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each

registration shall remain in force for 10 years, except that the registration
of any mark shall be canceled by the Director unless the owner of

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Act of July 5, 1946

Sec. 8

the registration files in the United States Patent and Trademark
Office affidavits that meet the requirements of subsection (b), within the following time periods:
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this
Act or the date of the publication under section 12(c).
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each
successive 10-year period following the date of registration.
(3) The owner may file the affidavit required under this
section within the 6-month grace period immediately following
the expiration of the periods established in paragraphs (1) and
(2), together with the fee described in subsection (b) and the
additional grace period surcharge prescribed by the Director.
(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit referred to in
subsection (a) shall—
(1)(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may
be required by the Director; and
(D) be accompanied by the fee prescribed by the Director;
or
(2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use
in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any
intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.
(c) DEFICIENT AFFIDAVIT.—If any submission filed within the
period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration,
the deficiency may be corrected after the statutory time period,
within the time prescribed after notification of the deficiency. Such
submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.
(d) NOTICE OF REQUIREMENT.—Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under section 12(c).
(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.—The Director
shall notify any owner who files any affidavit required by this section of the Director’s acceptance or refusal thereof and, in the case
of a refusal, the reasons therefor.
(f) DESIGNATION OF RESIDENT FOR SERVICE OF PROCESS AND
NOTICES.—If the owner is not domiciled in the United States, the
owner 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 specFebruary 10, 2021

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Sec. 9

Act of July 5, 1946

10

ified in the last designation so filed. If the person so designated
cannot be found at the last designated address, or if the owner 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.
ø15 U.S.C. 1058¿
RENEWAL OF REGISTRATION

SEC. 9. (a) Subject to the provisions of section 8, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application,
in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each
successive 10-year period for which the registration was issued or
renewed, or it may be made within a grace period of 6 months after
the end of each successive 10-year period, upon payment of a fee
and surcharge prescribed therefor. If any application filed under
this section is deficient, the deficiency may be corrected within the
time prescribed after notification of the deficiency, upon payment
of a surcharge prescribed therefor.
(b) If the Director refuses to renew the registration, the Director shall notify the registrant of the Commissioner’s 2 refusal and
the reasons therefor.
(c) If the registrant is not domiciled in the United States the
registrant may designate, by a document filed in the United States
Patent and Trademark Office, the name and address of a person
resident in the United States on whom may be served notices or
process in proceedings affecting the mark. Such notices or process
may be served upon the person so designated by leaving with that
person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated
cannot be found at the address given in the last designation, or if
the registrant does not designate by a document filed in the United
States Patent and Trademark Office the name and address of a
person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or
process may be served on the Director.
ø15 U.S.C. 1059¿
ASSIGNMENT

SEC. 10. (a)(1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good
will of the business in which the mark is used, or with that part
of the good will of the business connected with the use of and sym2 Section 4732(b)(1)(C) of the Intellectual Property and Communications Omnibus Reform Act
of 1999 (113 Stat. 1501A–583), as enacted by section 1000(a)(9) of Public Law 106–113 (113
Stat. 1536),provides as follows:
(C) Sections 8(e) and 9(b) of the Trademark Act of 1946 are each amended by striking
‘‘Commissioner’’ and inserting ‘‘Director’’.
The amendment probably should have been to strike ‘‘Commissioner’s’’ and insert ‘‘Director’s’’.

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11

Act of July 5, 1946

Sec. 11

bolized by the mark. Notwithstanding the preceding sentence, no
application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring
the application into conformity with section 1(a) or the filing of the
verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion
thereof, to which the mark pertains, if that business is ongoing and
existing.
(2) In any assignment authorized by this section, it shall not
be necessary to include the good will of the business connected with
the use of and symbolized by any other mark used in the business
or by the name or style under which the business is conducted.
(3) Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and
Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the
United States Patent and Trademark Office within 3 months after
the date of the assignment or prior to the subsequent purchase.
(5) The United States Patent and Trademark Office shall
maintain a record of information on assignments, in such form as
may be prescribed by the Director.
(b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the
United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served
upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last
designation so filed. If the person so designated cannot be found at
the address given in the last designation, or if the assignee does
not designate by a document filed in the United States Patent and
Trademark Office the name and address of a person resident in the
United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served
upon the Director.
ø15 U.S.C. 1060¿
ACKNOWLEDGMENTS AND VERIFICATIONS

SEC. 11. Acknowledgments and verifications required hereunder may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign
country, before any diplomatic or consular officer of the United
States or before any official authorized to administer oaths in the
foreign country concerned whose authority is proved by a certificate
of a diplomatic or consular officer of the United States, or apostille
of an official designated by a foreign country which, by treaty or
convention, accords like effect to apostilles of designated officials in
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Sec. 12

Act of July 5, 1946

12

the United States, and shall be valid if they comply with the laws
of the state or country where made.
ø15 U.S.C. 1061¿
PUBLICATION

SEC. 12. (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 1(d) of this Act, 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 16 of this
Act, the mark, if otherwise registrable, may be published subject to
the determination of the rights of the parties to such proceedings.
(b)(1) If the applicant is found not entitled to registration, the
examiner shall notify the applicant thereof and of the reasons
therefor. The applicant may reply or amend the application, which
shall then be reexamined. This procedure may be repeated until
the examiner finally refuses registration of the mark or the application is abandoned as described in paragraph (2).
(2) After notification under paragraph (1), the applicant shall
have a period of 6 months in which to reply or amend the application, or such shorter time that is not less than 60 days, as prescribed by the Director by regulation. If the applicant fails to reply
or amend or appeal within the relevant time period, including any
extension under paragraph (3), 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, in
which case the application may be revived and such time may be
extended. The Director may prescribe a fee to accompany any request to revive.
(3) The Director shall provide, by regulation, for extensions of
time to respond to the examiner for any time period under paragraph (2) that is less than 6 months. The Director shall allow the
applicant to obtain extensions of time to reply or amend aggregating 6 months from the date of notification under paragraph (1)
when the applicant so requests. However, the Director may set by
regulation the time for individual periods of extension, and prescribe a fee, by regulation, for any extension request. Any request
for extension shall be filed on or before the date on which a reply
or amendment is due under paragraph (1).
(c) A registrant of a mark registered under the provisions of
the Act of March 3, 1881, or the Act of February 20, 1905, may,
at any time prior to the expiration of the registration thereof, upon
the payment of the prescribed fee file with the Director an affidavit
setting forth those goods stated in the registration on which said
mark is in use in commerce and that the registrant claims the benefits of this Act for said mark. The Director shall publish notice
thereof with a reproduction of said mark in the Official Gazette,
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13

Act of July 5, 1946

Sec. 14

and notify the registrant of such publication and of the requirement for the affidavit of use or nonuse as provided for in subsection
(b) of section 8 of this Act. Marks published under this subsection
shall not be subject to the provisions of section 13 of this Act.
ø15 U.S.C. 1062¿
OPPOSITION

SEC. 13. (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 43(c),
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 12
of this Act 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 1(a) or pursuant to
section 44 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 1(b).
ø15 U.S.C. 1063¿

SEC. 14. 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 43(c), by the registration of a mark on the principal register established by this Act, or
under the Act of March 3, 1881, or the Act of February 20, 1905:
(1) Within five years from the date of the registration of
the mark under this Act.
(2) Within five years from the date of publication under
section 12(c) hereof of a mark registered under the Act of
March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for which
it is registered, or is functional, or has been abandoned, or its
registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for
a registration under this Act, or contrary to similar prohibitory
provisions of such prior Acts for a registration under such Acts,
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Sec. 14

Act of July 5, 1946

14

sion 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
12 of this Act.
(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: 3
(6) 3 At any time after the 3-year period following the date
of registration, if the registered mark has never been used in
commerce on or in connection with some or all of the goods or
services recited in the registration:
Provided, That the Federal Trade Commission may apply to cancel
on the grounds specified in paragraphs (3) and (5) of this section
any mark registered on the principal register established by this
Act, and the 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. 4
3 Section 225(b)(1) and (2) of division Q of Public Law 116-260 amends section 14 by striking
the colon at the end of paragraph (5) and inserting a period and by inserting after paragraph
(5) a new paragraph (6). Both amendments are subject to a delayed effective date and will take
effect on 12/27/2021. For delayed effective amendment see section 225(g) of division Q of such
act.
4 Section 225(b)(3) of division Q of Public Law 116-260 amends the flush text following paragraph (6), as added by paragraph (2) of the same subsection, by inserting ‘‘Nothing in paragraph
(6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 44(e) or 66 shall not be cancelled pursuant to paragraph (6) if the registrant demonstrates that any nonuse is due to special circumstances that excuse such nonuse.’’
after‘‘identical certification mark is applied.’’ Such amendment is subject to a delayed effective
date and will take effect on 12/27/2021. For delayed effective amendment see section 225(g) of
division Q of such act.

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15

Act of July 5, 1946

Sec. 16

ø15 U.S.C. 1064¿

SEC. 15. Except on a ground for which application to cancel
may be filed at any time under paragraphs (3) and (5) 5 of section
14 of this Act, and except to the extent, if any, to which the use
of a mark registered on the principal register infringes a valid right
acquired under the law of any State or Territory by use of a mark
or trade name continuing from a date prior to the date of registration under this Act of such registered mark, the right of the 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 five-year period setting forth
those goods or services stated in the registration on or in connection with which such mark has been in continuous use for
such five consecutive years and is still in use in commerce, and
the other matters specified in paragraphs (1) and (2) of this
section; and
(4) no incontestable right shall be acquired in a mark
which is the generic name for the goods or services or a portion
thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this
Act 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
12 of this Act.
The Director shall notify any registrant who files the aboveprescribed affidavit of the filing thereof.
ø15 U.S.C. 1065¿
INTERFERENCE

SEC. 16. Upon petition showing extraordinary circumstances,
the Director may declare that an interference exists when application is made for the registration of a mark which so resembles a
mark previously registered by another, or for the registration of
which another has previously made application, as to be likely
when used on or in connection with the goods or services of the ap5 Section 225(e)(1) of division Q of Public Law 116-260 amends section 15 by striking ‘‘paragraphs (3) and (5)’’and inserting ‘‘paragraphs (3), (5), and (6)’’. Such amendment is subject to
a delayed effective date and will take effect on 12/27/2021. For delayed effective amendment see
section 225(g) of division Q of such act.

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Sec. 16A

Act of July 5, 1946

16

plicant to cause confusion or mistake or to deceive. No interference
shall be declared between an application and the registration of a
mark the right to the use of which has become incontestable.
ø15 U.S.C. 1066¿

SEC. 16A. 6 EX PARTE EXPUNGEMENT.
(a) PETITION.—Notwithstanding

sections 7(b) and 22, and subsections (a) and (b) of section 33, any person may file a petition to
expunge a registration of a mark on the basis that the mark has
never been used in commerce on or in connection with some or all
of the goods or services recited in the registration.
(b) CONTENTS OF PETITION.—A petition filed under subsection
(a), together with any supporting documents, shall—
(1) identify the registration that is the subject of the petition;
(2) identify each good or service recited in the registration
for which it is alleged that the mark has never been used in
commerce;
(3) include a verified statement that sets forth—
(A) the elements of the reasonable investigation the petitioner conducted to determine that the mark has never
been used in commerce on or in connection with the goods
and services identified in the petition; and
(B) any additional facts that support the allegation
that the mark has never been used in commerce on or in
connection with the identified goods and services;
(4) include any supporting evidence on which the petitioner
relies; and
(5) be accompanied by the fee prescribed by the Director.
(c) INITIAL DETERMINATION; INSTITUTION.—
(1) PRIMA FACIE CASE DETERMINATION, INSTITUTION, AND
NOTIFICATION.—The Director shall, for each good or service
identified under subsection (b)(2), determine whether the petition sets forth a prima facie case of the mark having never been
used in commerce on or in connection with each such good or
service, institute an ex parte expungement proceeding for each
good or service for which the Director determines that a prima
facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the
proceeding was instituted. Such notice shall include a copy of
the petition and any supporting documents and evidence that
were included with the petition.
(2) REASONABLE INVESTIGATION GUIDANCE.—The Director
shall promulgate regulations regarding what constitutes a reasonable investigation under subsection (b)(3) and the general
types of evidence that could support a prima facie case that a
mark has never been used in commerce, but the Director shall
6 Section 16A was added after section 16 by section 225(a) of division Q of Public Law 116260 and is subject to a delayed effective date. Such amendment will take effect on 12/27/2021.
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Act of July 5, 1946

Sec. 16A

retain the discretion to determine whether a prima facie case is
set out in a particular proceeding.
(3) DETERMINATION BY DIRECTOR.—Any determination by
the Director whether or not to institute a proceeding under this
section shall be final and non-reviewable, and shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding, except as provided in subsection
(j).
(d) EX PARTE EXPUNGEMENT PROCEDURES.—The procedures for
ex parte expungement shall be the same as the procedures for examination under section 12(b), except that the Director shall promulgate regulations establishing and governing a proceeding under this
section, which may include regulations that—
(1) set response and extension times particular to this type
of proceeding, which, notwithstanding section 12(b)(3), need not
be extendable to 6 months;
(2) set limits governing the timing and number of petitions
filed for a particular registration or by a particular petitioner
or real parties in interest; and
(3) define the relation of a proceeding under this section to
other proceedings concerning the mark.
(e) REGISTRANT’S EVIDENCE OF USE.—A registrant’s documentary evidence of use shall be consistent with when a mark shall be
deemed to be in use in commerce under the definition of ‘‘use in
commerce’’ in section 45, but shall not be limited in form to that of
specimens as provided in section 1(a).
(f) EXCUSABLE NONUSE.—During an ex parte expungement proceeding, for a mark registered under section 44(e) or an extension
of protection under section 66, the registrant may offer evidence
showing that any nonuse is due to special circumstances that excuse
such nonuse. In such a case, the examiner shall determine whether
the facts and evidence demonstrate excusable nonuse and shall not
find that the registration should be cancelled under subsection (g)
for any good or service for which excusable nonuse is demonstrated.
(g) EXAMINER’S DECISION; ORDER TO CANCEL.—For each good
or service for which it is determined that a mark has never been
used in commerce, and for which the provisions of subsection (f) do
not apply, the examiner shall find that the registration should be
cancelled for each such good or service. A mark shall not be found
to have never been used in commerce if there is evidence of use in
commerce by the registrant that temporally would have supported
registration at the time the application was filed or the relevant allegation of use was made, or after registration, but before the petition to expunge was filed under subsection (a), or an ex parte
expungement proceeding was instituted by the Director under subsection (h). Unless overturned on review of the examiner’s decision,
the Director shall issue an order cancelling the registration, in
whole or in part, after the time for appeal has expired or any appeal
proceeding has terminated.
(h) EX PARTE EXPUNGEMENT BY THE DIRECTOR.—
(1) IN GENERAL.—The Director may, on the Director’s own
initiative, institute an ex parte expungement proceeding if the
Director discovers information that supports a prima facie case
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Sec. 16B

Act of July 5, 1946

18

tion with any good or service covered by a registration. The Director shall promptly notify the registrant of such determination, at which time the ex parte expungement proceeding shall
proceed according to the same procedures for ex parte
expungement established pursuant to subsection (d). If the Director determines, based on the Director’s own initiative, to institute an expungement proceeding, the Director shall transmit
or make available the information that formed the basis for
that determination as part of the institution notice sent to the
registrant.
(2) RULE OF CONSTRUCTION.—Nothing in this subsection
shall be construed to limit any other authority of the Director.
(i) TIME FOR INSTITUTION.—
(1) WHEN PETITION MAY BE FILED, EX PARTE EXPUNGEMENT
PROCEEDING INSTITUTED.—A petition for ex parte expungement
of a registration under subsection (a) may be filed, or the Director may institute on the Director’s own initiative an ex parte
expungement proceeding of a registration under subsection (h),
at any time following the expiration of 3 years after the date of
registration and before the expiration of 10 years following the
date of registration.
(2) EXCEPTION.—Notwithstanding paragraph (1), for a period of 3 years after the date of enactment of this section, a petition for expungement of a registration under subsection (a) may
be filed, or the Director may institute on the Director’s own initiative an ex parte expungement proceeding of a registration
under subsection (h), at any time following the expiration of 3
years after the date of registration.
(j) LIMITATION ON LATER EX PARTE EXPUNGEMENT PROCEEDINGS.—
(1) NO CO-PENDING PROCEEDINGS.—With respect to a particular registration, while an ex parte expungement proceeding
is pending, no later ex parte expungement proceeding may be
instituted with respect to the same goods or services that are the
subject of a pending ex parte expungement proceeding.
(2) ESTOPPEL.—With respect to a particular registration,
for goods or services previously subject to an instituted
expungement proceeding for which, in that proceeding, it was
determined that the registrant had used the mark for particular
goods or services, as relevant, and the registration was not cancelled as to those goods or services, no further ex parte
expungement proceedings may be initiated as to those goods or
services, regardless of the identity of the petitioner.
(k) USE IN COMMERCE REQUIREMENT NOT ALTERED.—Nothing
in this section shall affect the requirement for use in commerce of
a mark registered under section 1(a) or 23.
ƒ15 U.S.C. 1066a≈
SEC. 16B. 7 EX PARTE REEXAMINATION.
(a) PETITION FOR REEXAMINATION.—Any

person may file a petition to reexamine a registration of a mark on the basis that the
7 Section 16B was added after section 16A by section 225(c) of division Q of Public Law 116260 and is subject to a delayed effective date. Such amendment will take effect on 12/27/2021.
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Act of July 5, 1946

Sec. 16B

mark was not in use in commerce on or in connection with some or
all of the goods or services recited in the registration on or before
the relevant date.
(b) RELEVANT DATE.—In this section, the term ‘‘relevant date’’
means, with respect to an application for the registration of a mark
with an initial filing basis of—
(1) section 1(a) and not amended at any point to be filed
pursuant to section 1(b), the date on which the application was
initially filed; or
(2) section 1(b) or amended at any point to be filed pursuant to section 1(b), the date on which—
(A) an amendment to allege use under section 1(c) was
filed; or
(B) the period for filing a statement of use under section 1(d) expired, including all approved extensions thereof.
(c) REQUIREMENTS FOR THE PETITION.—A petition filed under
subsection (a), together with any supporting documents, shall—
(1) identify the registration that is the subject of the petition;
(2) identify each good and service recited in the registration
for which it is alleged that the mark was not in use in commerce on or in connection with on or before the relevant date;
(3) include a verified statement that sets forth—
(A) the elements of the reasonable investigation the petitioner conducted to determine that the mark was not in
use in commerce on or in connection with the goods and
services identified in the petition on or before the relevant
date; and
(B) any additional facts that support the allegation
that the mark was not in use in commerce on or before the
relevant date on or in connection with the identified goods
and services;
(4) include supporting evidence on which the petitioner relies; and
(5) be accompanied by the fee prescribed by the Director.
(d) INITIAL DETERMINATION; INSTITUTION.—
(1) PRIMA FACIE CASE DETERMINATION, INSTITUTION, AND
NOTIFICATION.—The Director shall, for each good or service
identified under subsection (c)(2), determine whether the petition sets forth a prima facie case of the mark having not been
in use in commerce on or in connection with each such good or
service, institute an ex parte reexamination proceeding for each
good or service for which the Director determines that the prima
facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the
proceeding was instituted. Such notice shall include a copy of
the petition and any supporting documents and evidence that
were included with the petition.
(2) REASONABLE INVESTIGATION GUIDANCE.—The Director
shall promulgate regulations regarding what constitutes a reasonable investigation under subsection (c)(3) and the general
types of evidence that could support a prima facie case that the
mark was not in use in commerce on or in connection with a
good or service on or before the relevant date, but the Director
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Sec. 16B

Act of July 5, 1946

20

shall retain discretion to determine whether a prima facie case
is set out in a particular proceeding.
(3) DETERMINATION BY DIRECTOR.—Any determination by
the Director whether or not to institute a reexamination proceeding under this section shall be final and non-reviewable,
and shall not prejudice any party’s right to raise any issue and
rely on any evidence in any other proceeding, except as provided
in subsection (j).
(e) REEXAMINATION PROCEDURES.—The procedures for reexamination shall be the same as the procedures established under section 12(b) except that the Director shall promulgate regulations establishing and governing a proceeding under this section, which
may include regulations that—
(1) set response and extension times particular to this type
of proceeding, which, notwithstanding section 12(b)(3), need not
be extendable to 6 months;
(2) set limits governing the timing and number of petitions
filed for a particular registration or by a particular petitioner
or real parties in interest; and
(3) define the relation of a reexamination proceeding under
this section to other proceedings concerning the mark.
(f) REGISTRANT’S EVIDENCE OF USE.—A registrant’s documentary evidence of use shall be consistent with when a mark shall be
deemed to be in use in commerce under the definition of ‘‘use in
commerce’’ in section 45, but shall not be limited in form to that of
specimens as provided in section 1(a).
(g) EXAMINER’S DECISION; ORDER TO CANCEL.—For each good
or service for which it is determined that the registration should not
have issued because the mark was not in use in commerce on or before the relevant date, the examiner shall find that the registration
should be cancelled for each such good or service. Unless overturned
on review of the examiner’s decision, the Director shall issue an
order cancelling the registration, in whole or in part, after the time
for appeal has expired or any appeal proceeding has terminated.
(h) REEXAMINATION BY DIRECTOR.—
(1) IN GENERAL.—The Director may, on the Director’s own
initiative, institute an ex parte reexamination proceeding if the
Director discovers information that supports a prima facie case
of the mark having not been used in commerce on or in connection with some or all of the goods or services covered by the registration on or before the relevant date. The Director shall
promptly notify the registrant of such determination, at which
time reexamination shall proceed according to the same procedures established pursuant to subsection (e). If the Director determines, based on the Director’s own initiative, to institute an
ex parte reexamination proceeding, the Director shall transmit
or make available the information that formed the basis for
that determination as part of the institution notice.
(2) RULE OF CONSTRUCTION.—Nothing in this subsection
shall be construed to limit any other authority of the Director.
(i) TIME FOR INSTITUTION.—A petition for ex parte reexamination may be filed, or the Director may institute on the Director’s own
initiative an ex parte reexamination proceeding, at any time not
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Act of July 5, 1946

Sec. 18

later than 5 years after the date of registration of a mark registered
based on use in commerce.
(j) LIMITATION ON LATER EX PARTE REEXAMINATION PROCEEDINGS.—
(1) NO CO-PENDING PROCEEDINGS.—With respect to a particular registration, while an ex parte reexamination proceeding
is pending, no later ex parte reexamination proceeding may be
instituted with respect to the same goods or services that are the
subject of a pending ex parte reexamination proceeding.
(2) ESTOPPEL.—With respect to a particular registration,
for any goods or services previously subject to an instituted ex
parte reexamination proceeding for which, in that proceeding, it
was determined that the registrant had used the mark for particular goods or services before the relevant date, and the registration was not cancelled as to those goods or services, no further ex parte reexamination proceedings may be initiated as to
those goods or services, regardless of the identity of the petitioner.
(k) SUPPLEMENTAL REGISTER.—The provisions of subsection (b)
apply, as appropriate, to registrations under section 23. Nothing in
this section shall be construed to limit the timing of a cancellation
action under section 24.
ƒ15 U.S.C. 1066b≈

SEC. 17. (a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trademark Trial and Appeal
Board to determine and decide the respective rights of registration.
(b) 8 The Trademark Trial and Appeal Board shall include the
Director, Deputy Director of the United States Patent and Trademark Office 9 the Commissioner for Patents, the Commissioner for
Trademarks, and administrative trademark judges who are appointed by the Secretary of Commerce, in consultation with the Director.
(c) AUTHORITY OF THE SECRETARY.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an
administrative trademark judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by
the Director to take effect on the date on which the Director initially appointed the administrative trademark judge.
(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—It shall be a
defense to a challenge to the appointment of an administrative
trademark judge on the basis of the judge’s having been originally
appointed by the Director that the administrative trademark judge
so appointed was acting as a de facto officer.
ø15 U.S.C. 1067¿

SEC. 18. In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in
part, may modify the application or registration by limiting the
8 The amendment made by section 13203(a)(1) of Public Law 107–273 (116 Stat. 1902), inserting ‘‘the Deputy Commissioner,’’ after ‘‘Commissioner,’’, could not be executed.
9 So in law. Probably should read ‘‘Office,’’.

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Sec. 19

Act of July 5, 1946

22

goods or services specified therein, may otherwise restrict or rectify
with respect to the register the registration of a registered mark,
may refuse to register any or all of several interfering marks, or
may register the mark or marks for the person or persons entitled
thereto, as the rights of the parties hereunder may be established
in the proceedings. The authority of the Director under this section
includes the authority to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board; Provided, That in
the case of the registration of any mark based on concurrent use,
the Director shall determine and fix the conditions and limitations
provided for in subsection (d) of section 2 of this Act. However, no
final judgment shall be entered in favor of an applicant under section 1(b) before the mark is registered, if such applicant cannot
prevail without establishing constructive use pursuant to section
7(c).
ø15 U.S.C. 1068¿

SEC. 19. In all inter partes proceedings equitable principles of
laches, estoppel, and acquiescence, where applicable may be considered and applied.
ø15 U.S.C. 1069¿

SEC. 20. An appeal may be taken to the Trademark Trial and
Appeal Board from any final decision of the examiner in charge of
the registration of marks 10upon the payment of the prescribed fee.
The Director may reconsider, and modify or set aside, a decision of
the Trademark Trial and Appeal Board under this section.
ø15 U.S.C. 1070¿

SEC. 21. (a)(1) An applicant for registration of a mark, party
to an interference proceeding, party to an opposition proceeding,
party to an application to register as a lawful concurrent user,
party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 8 or section 71, or an applicant for
renewal 11, who is dissatisfied with the decision of the Director or
Trademark Trial and Appeal Board, may appeal to the United
States Court of Appeals for the Federal Circuit thereby waiving his
right to proceed under subsection (b) of this section: Provided, That
such appeal shall be dismissed if any adverse party to the proceeding, other than the Director, shall, within twenty days after
the appellant has filed notice of appeal according to paragraph (2)
of this subsection, files notice with the Director that he elects to
have all further proceedings conducted as provided in subsection
(b) of this section. Thereupon the appellant shall have thirty days
thereafter within which to file a civil action under subsection (b)
10 Section 225(d)(1) of division Q of Public Law 116-260 amends section 20 by inserting ‘‘a final
decision by an examiner in an ex parte expungement proceeding or ex parte reexamination proceeding’’ after ‘‘registration of marks’’. Such amendment is subject to a delayed effective date
and will take effect on 12/27/2021. For delayed effective amendment see section 225(g) of division Q of such act.
11 Section 225(d)(2)(A) of division Q of Public Law 116-260 amends section 21(a)(1) by striking
‘‘or an applicant for renewal’’ and inserting ‘‘an applicant for renewal, or a registrant subject
to an ex parte expungement proceeding or an ex parte reexamination proceeding’’. Such amendment is subject to a delayed effective date and will take effect on 12/27/2021. For delayed effective amendment see section 225(g) of division Q of such act.

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Act of July 5, 1946

Sec. 21

of this section, in default of which the decision appealed from shall
govern the further proceedings in the case.
(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the United
States Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but
in no case less than 60 days after that date.
(3) The Director shall transmit to the United States Court of
Appeals for the Federal Circuit a certified list of the documents
comprising the record in the United States Patent and Trademark
Office. The court may request that the Director forward the original or certified copies of such documents during pendency of the
appeal. In an ex parte case, the Director shall submit to that court
a brief explaining the grounds for the decision of the United States
Patent and Trademark Office, addressing all the issues involved in
the appeal. The court shall, before hearing an appeal give notice of
the time and place of the hearing to the Director and the parties
in the appeal.
(4) The United States Court of Appeals for the Federal Circuit
shall review the decision from which the appeal is taken on the
record before the United States Patent and Trademark Office.
Upon its determination the court shall issue its mandate and opinion to the Director, which shall be entered of record in the United
States Patent and Trademark Office and shall govern the further
proceedings in the case. However, no final judgment shall be entered in favor of an applicant under section 1(b) before the mark
is registered, if such applicant cannot prevail without establishing
constructive use pursuant to section 7(c).
(b)(1) Whenever a person authorized by subsection (a) of this
section to appeal to the United States Court of Appeals for the Federal Circuit 12 is dissatisfied with the decision of the Director or
Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the
Federal Circuit, have remedy by a civil action if commenced within
such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section. The
court may adjudge that an applicant is entitled to a registration
upon the application involved, that a registration involved should
be canceled, or such other matter as the issues in the proceeding
require, as the facts in the case may appear. Such adjudication
shall authorize the Director to take any necessary action, upon
compliance with the requirements of law. However, no final judgment shall be entered in favor of an applicant under section 1(b)
before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).
(2) The Director shall not be made a party to an inter partes
proceeding under this subsection, but he shall be notified of the fil12 Section 225(d)(2)(B) of division Q of Public Law 116-260 amends section 21(b)(1) by inserting ‘‘except for a registrant subject to an ex parte expungement proceeding or an ex parte reexamination proceeding,’’ before ‘‘is dissatisfied’’. Such amendment is subject to a delayed effective
date and will take effect on 12/27/2021. For delayed effective amendment see section 225(g) of
division Q of such act.

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Sec. 22

Act of July 5, 1946

24

ing of the complaint by the clerk of the court in which it is filed
and shall have the right to intervene in the action.
(3) In any case where there is no adverse party, a copy of the
complaint shall be served on the Director, and, unless the court
finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the
final decision is in favor of such party or not. In suits brought hereunder, the record in the United States Patent and Trademark Office shall be admitted on motion of any party, upon such terms and
conditions as to costs, expenses, and the further cross-examination
of the witnesses as the court imposes, without prejudice to the
right of any party to take further testimony. The testimony and exhibits of the record in the United States Patent and Trademark Office, when admitted, shall have the same effect as if originally
taken and produced in the suit.
(4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the
United States Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party
to the action. If there are adverse parties residing in a plurality of
districts not embraced within the same State, or an adverse party
residing in a foreign country, the United States District Court for
the Eastern District of Virginia 13 shall have jurisdiction and may
issue summons against the adverse parties directed to the marshal
of any district in which any adverse party resides. Summons
against adverse parties residing in foreign countries may be served
by publication or otherwise as the court directs.
ø15 U.S.C. 1071¿
REGISTRATION IS NOTICE

SEC. 22. Registration of a mark on the principal register provided by this Act or under the Act of March 3, 1881, or the Act of
February 20, 1905, shall be constructive notice of the registrant’s
claim of ownership thereof.
ø15 U.S.C. 1072¿

TITLE II—THE SUPPLEMENTAL REGISTER
SEC. 23. (a) In addition to the principal register, the Director
shall keep a continuation of the register provided in paragraph (b)
of section 1 14 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 de13 Pursuant to section 9(b) of the Leahy-Smith America Invents Act (Public Law 112–29; enacted September 16, 2011), ‘‘[t]he amendments made by this section shall take effect on the date
of the enactment of this Act and shall apply to any civil action commenced on or after that
date’’.
14 Section 121(4)(D) of P.L. 100–667, 102 Stat. 3942, amended section 23(a) by inserting before
‘‘section 1’’ the following: ‘‘subsections (a) and (e) of’’. The amendment did not specify to which
or both places the insertion should be made. It was executed to the second occurrence of ‘‘section
1’’.

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Act of July 5, 1946

Sec. 24

clared to be unregistrable under subsections (a), (b), (c), (d), and
(e)(3) of section 2 of this Act, 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 1 14 so far as they are applicable.
Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s
goods or services and not registrable on the principal register
under this Act, that is declared to be unregistrable under section
2(e)(3), 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 the date of the enactment of the North American Free Trade
Agreement Implementation Act.
(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 12 of this Act 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.
ø15 U.S.C. 1091¿
CANCELATION

SEC. 24. 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 43(c); 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 which that the registrant is not entitled to registration, or that the mark has been
abandoned, the registration shall be canceled by the Director, unless the Director reconsiders the decision of the Board, and modiFebruary 10, 2021

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Sec. 25

Act of July 5, 1946

26

fies or sets aside, such decision. However, no final judgment shall
be entered in favor of an applicant under section (1)(b) before the
mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).
ø15 U.S.C. 1092¿

SEC. 25. 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.
ø15 U.S.C. 1093¿
GENERAL PROVISIONS

SEC. 26. The provisions of this Act 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 1(b), 2(e), 2(f),
7(b), 7(c), 12(a), 13 to 18, inclusive, 22, 33, and 42 of this Act. 15
ø15 U.S.C. 1094¿

SEC. 27. 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 Act.
Registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness.
ø15 U.S.C. 1095¿

SEC. 28. 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.
ø15 U.S.C. 1096¿

TITLE III—NOTICE OF REGISTRATION
SEC. 29. Notwithstanding the provisions of section 22 hereof,
a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with
the mark the words ‘‘Registered in U.S. Patent and Trademark Office’’ or ‘‘Reg. U.S. Pat. & Tm. Off.’’ or the letter R enclosed within
a circle, thus ®; and in any suit for infringement under this Act
by such a registrant failing to give such notice of registration, no
profits and no damages shall be recovered under the provisions of
this Act unless the defendant had actual notice of the registration.
ø15 U.S.C. 1111¿

TITLE IV—CLASSIFICATION
SEC. 30. The Director may establish a classification of goods
and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or reg15 Section 225(e)(2) of division Q of Public Law 116-260 amends section 26 by adding at the
end the following: ‘‘Registrations on the supplemental register shall be subject to ex parte
expungement and ex parte reexamination under sections 16A and 16B, respectively.’’ Such
amendment is subject to a delayed effective date and will take effect on 12/27/2021. For delayed
effective amendment see section 225(g) of division Q of such act.

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Act of July 5, 1946

Sec. 32

istrant’s rights. The applicant may apply to register a mark for any
or all of the goods or services on or in connection with which he
or she is using or has a bona fide intention to use the mark in commerce: Provided, That if the Director by regulation permits the filing of an application for the registration of a mark for goods or
services which fall within a plurality of classes, a fee equaling the
sum of the fees for filing an application in each class shall be paid,
and the Director may issue a single certificate of registration for
such mark.
ø15 U.S.C. 1112¿

TITLE V—FEES AND CHARGES
SEC. 31. (a) The Director shall establish fees 16 for the filing
and processing of an application for the registration of a trademark
or other mark and for all other services performed by and materials furnished by the Patent and Trademark Office related to
trademarks and other marks. Fees established under this subsection may be adjusted by the Director once each year to reflect,
in the aggregate, any fluctuations during the preceding 12 months
in the Consumer Price Index, as determined by the Secretary of
Labor. Changes of less than 1 percent may be ignored. No fee established under this section shall take effect until at least 30 days
after notice of the fee has been published in the Federal Register
and in the Official Gazette of the Patent and Trademark Office.
(b) The Director may waive the payment of any fee for any
service or material related to trademarks or other marks in connection with an occasional request made by a department or agency
of the Government, or any officer thereof. The Indian Arts and
Crafts Board will not be charged any fee to register Government
trademarks of genuineness and quality for Indian products or for
products of particular Indian tribes and groups.
ø15 U.S.C. 1113¿

TITLE VI—REMEDIES
SEC. 32. (1) Any person who shall, without the consent of the
registrant—
(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce
upon or in connection with the sale, offering for sale, distribu16 Section

4 of Public Law 103–179 (107 Stat. 2040, Dec. 3, 1993) provides as follows:

SEC. 4. ADJUSTMENT OF TRADEMARK FEES.
Effective on the date of the enactment of this Act, the fee under section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for filing an application for the registration of a trademark
shall be $245. Any adjustment of such fee under the second sentence of such section may not
be effective before October 1, 1994.

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Sec. 32

Act of July 5, 1946

28

tion, or advertising of goods or services on or in connection
with which such use is likely to cause confusion, or to cause
mistake, or to deceive.
shall be liable in a civil action by the registrant for the remedies
hereinafter provided. Under subsection (b) hereof, the registrant
shall not be entitled to recover profits or damages unless the acts
have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
As used in this paragraph, the term ‘‘any person’’ includes the
United States, all agencies and instrumentalities thereof, and all
individuals, firms, corporations, or other persons acting for the
United States and with the authorization and consent of the
United States, and any State, any instrumentality of a State, and
any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies
and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and
any such instrumentality, officer, or employee, shall be subject to
the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.
(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to
a person bringing an action under section 43(a) or (d) shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the
business of printing the mark or violating matter for others
and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person
bringing the action under section 43(a) shall be entitled as
against such infringer or violator only to an injunction against
future printing.
(B) Where the infringement or violation complained of is
contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic
communication as defined in section 2510(12) of title 18,
United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) as
against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication
shall be limited to an injunction against the presentation of
such advertising matter in future issues of such newspapers,
magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of
this subparagraph shall apply only to innocent infringers and
innocent violators.
(C) Injunctive relief shall not be available to the owner of
the right infringed or person bringing the action under section
43(a) with respect to an issue of a newspaper, magazine, or
other similar periodical or an electronic communication containing infringing matter or violating matter where restraining
the dissemination of such infringing matter or violating matter
in any particular issue of such periodical or in an electronic
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Act of July 5, 1946

Sec. 32

communication would delay the delivery of such issue or transmission of such electronic communication after the regular
time for such delivery or transmission, and such delay would
be due to the method by which publication and distribution of
such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to
evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing
matter or violating matter.
(D)(i)(I) A domain name registrar, a domain name registry,
or other domain name registration authority that takes any action described under clause (ii) affecting a domain name shall
not be liable for monetary relief or, except as provided in subclause (II), for injunctive relief, to any person for such action,
regardless of whether the domain name is finally determined
to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or
other domain name registration authority described in subclause (I) may be subject to injunctive relief only if such registrar, registry, or other registration authority has—
(aa) not expeditiously deposited with a court, in which
an action has been filed regarding the disposition of the
domain name, documents sufficient for the court to establish the court’s control and authority regarding the disposition of the registration and use of the domain name;
(bb) transferred, suspended, or otherwise modified the
domain name during the pendency of the action, except
upon order of the court; or
(cc) willfully failed to comply with any such court
order.
(ii) An action referred to under clause (i)(I) is any action
of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain
name—
(I) in compliance with a court order under section
43(d); or
(II) in the implementation of a reasonable policy by
such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly
similar to, or dilutive of another’s mark.
(iii) A domain name registrar, a domain name registry, or
other domain name registration authority shall not be liable
for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad
faith intent to profit from such registration or maintenance of
the domain name.
(iv) If a registrar, registry, or other registration authority
takes an action described under clause (ii) based on a knowing
and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of
a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs
and attorney’s fees, incurred by the domain name registrant as
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30

a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation
of the domain name or the transfer of the domain name to the
domain name registrant.
(v) A domain name registrant whose domain name has
been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark
owner, file a civil action to establish that the registration or
use of the domain name by such registrant is not unlawful
under this Act. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain
name or transfer of the domain name to the domain name registrant.
(E) As used in this paragraph—
(i) the term ‘‘violator’’ means a person who violates
section 43(a); and
(ii) the term ‘‘violating matter’’ means matter that is
the subject of a violation under section 43(a).
(3)(A) Any person who engages in the conduct described in
paragraph (11) of section 110 of title 17, United States Code, and
who complies with the requirements set forth in that paragraph is
not liable on account of such conduct for a violation of any right
under this Act. This subparagraph does not preclude liability, nor
shall it be construed to restrict the defenses or limitations on rights
granted under this Act, of a person for conduct not described in
paragraph (11) of section 110 of title 17, United States Code, even
if that person also engages in conduct described in paragraph (11)
of section 110 of such title.
(B) A manufacturer, licensee, or licensor of technology that enables the making of limited portions of audio or video content of a
motion picture imperceptible as described in subparagraph (A) is
not liable on account of such manufacture or license for a violation
of any right under this Act, if such manufacturer, licensee, or licensor ensures that the technology provides a clear and conspicuous
notice at the beginning of each performance that the performance
of the motion picture is altered from the performance intended by
the director or copyright holder of the motion picture. The limitations on liability in subparagraph (A) and this subparagraph shall
not apply to a manufacturer, licensee, or licensor of technology that
fails to comply with this paragraph.
(C) The requirement under subparagraph (B) to provide notice
shall apply only with respect to technology manufactured after the
end of the 180-day period beginning on the date of the enactment
of the Family Movie Act of 2005.
(D) Any failure by a manufacturer, licensee, or licensor of technology to qualify for the exemption under subparagraphs (A) and
(B) shall not be construed to create an inference that any such
party that engages in conduct described in paragraph (11) of section 110 of title 17, United States Code, is liable for trademark infringement by reason of such conduct.
ø15 U.S.C. 1114¿

SEC. 33. (a) Any registration issued under the Act of March 3,
1881, or the Act of February 20, 1905, or of a mark registered on
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Act of July 5, 1946

Sec. 33

the principal register provided by this Act and owned by a party
to an action shall be admissible in evidence and shall be prima
facie evidence of the 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), which might have been asserted if such mark had
not been registered.
(b) To extent that the right to use the registered mark has become incontestable under section 15, 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 15, or
in the renewal application filed under the provisions of section 9
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 32, 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 7(c), (B) the registration of the mark under this Act if the application for registration
is filed before the effective date of the Trademark Law Revision Act
of 1988, or (C) publication of the registered mark under subsection
(c) of section 12 of this Act: Provided, however, That this defense
or defect shall apply only for the area in which such continuous
prior use is proved; or
(6) That the mark whose use is charged as an infringement
was registered and used prior to the registration under this Act or
publication under subsection (c) of section 12 of this Act of the registered mark of the registrant and not abandoned: Provided, howFebruary 10, 2021

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ever, 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.
ø15 U.S.C. 1115¿

SEC. 34. (a) The several courts vested with jurisdiction of civil
actions arising under this Act shall have power to grant injunctions, according to the principles of equity and upon such terms as
the court may deem reasonable, to prevent the violation of any
right of the registrant of a mark registered in the Patent and
Trademark Office or to prevent a violation under subsection (a), (c),
or (d) of section 43. A plaintiff seeking any such injunction shall
be entitled to a rebuttable presumption of irreparable harm upon
a finding of a violation identified in this subsection in the case of
a motion for a permanent injunction or upon a finding of likelihood
of success on the merits for a violation identified in this subsection
in the case of a motion for a preliminary injunction or temporary
restraining order. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report
in writing under oath setting forth in detail the manner and form
in which the defendant has complied with the injunction. Any such
injunction granted upon hearing, after notice to the defendant, by
any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the
United States where they may be found, and shall be operative and
may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any
other United States district court in whose jurisdiction the defendant may be found.
(b) The said courts shall have jurisdiction to enforce said injunction, as herein provided, as fully as if the injunction had been
granted by the district court in which it is sought to be enforced.
The clerk of the court or judge granting the injunction shall, when
required to do so by the court before which application to enforce
said injunction is made, transfer without delay to said court a certified copy of all papers on file in his office upon which said injunction was granted.
(c) It shall be the duty of the clerks of such courts within one
month after the filing of any action, suit, or proceeding involving
a mark registered under the provisions of this Act to give notice
thereof in writing to the Director setting forth in order so far as
known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon
which the action, suit, or proceeding has been brought, and in the
event any other registration be subsequently included in the action,
suit, or proceeding by amendment, answer, or other pleading, the
clerk shall give like notice thereof to the Director, and within one
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Act of July 5, 1946

Sec. 34

month after the judgment is entered or an appeal is taken the clerk
of the court shall give notice thereof to the Director, and it shall
be the duty of the Director on receipt of such notice forthwith to
endorse the same upon the file wrapper of the said registration or
registrations and to incorporate the same as a part of the contents
of said file wrapper.
(d)(1)(A) In the case of a civil action arising under section
32(1)(a) of this Act (15 U.S.C. 1114) or section 220506 of title 36,
United States Code, with respect to a violation that consists of
using a counterfeit mark in connection with the sale, offering for
sale, or distribution of goods or services, the court may, upon ex
parte application, grant an order under subsection (a) of this section pursuant to this subsection providing for the seizure of goods
and counterfeit marks involved in such violation and the means of
making such marks, and records documenting the manufacture,
sale, or receipt of things involved in such violation.
(B) As used in this subsection the term ‘‘counterfeit mark’’
means—
(i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against
whom relief is sought knew such mark was so registered; or
(ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the
remedies of this Act are made available by reason of section
220506 of title 36, United States Code;
but such term does not include any mark or designation used on
or in connection with goods or services of which the manufacture
or producer was, at the time of the manufacture or production in
question authorized to use the mark or designation for the type of
goods or services so manufactured or produced, by the holder of the
right to use such mark or designation.
(2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circumstances to the United States
attorney for the judicial district in which such order is sought.
Such attorney may participate in the proceedings arising under
such application if such proceedings may affect evidence of an offense against the United States. The court may deny such application if the court determines that the public interest in a potential
prosecution so requires.
(3) The application for an order under this subsection shall—
(A) be based on an affidavit or the verified complaint establishing facts sufficient to support the findings of fact and
conclusions of law required for such order; and
(B) contain the additional information required by paragraph (5) of this subsection to be set forth in such order.
(4) The court shall not grant such an application unless—
(A) the person obtaining an order under this subsection
provides the security determined adequate by the court for the
payment of such damages as any person may be entitled to recover as a result of a wrongful seizure or wrongful attempted
seizure under this subsection; and
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Sec. 34

Act of July 5, 1946

34

(B) the court finds that it clearly appears from specific
facts that—
(i) an order other than an ex parte seizure order is not
adequate to achieve the purposes of section 32 of this Act
(15 U.S.C. 1114);
(ii) the applicant has not publicized the requested seizure;
(iii) the applicant is likely to succeed in showing that
the person against whom seizure would be ordered used a
counterfeit mark in connection with the sale, offering for
sale, or distribution of goods or services;
(iv) an immediate and irreparable injury will occur if
such seizure is not ordered;
(v) the matter to the seized will be located at the place
identified in the application;
(vi) the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the
person against whom seizure would be ordered of granting
the application; and
(vii) the person against whom seizure would be ordered, or persons acting in concert with such person,
would destroy, move, hide, or otherwise make such matter
inaccessible to the court, if the applicant were to proceed
on notice to such person.
(5) An order under this subsection shall set forth—
(A) the findings of fact and conclusions of law required for
the order;
(B) a particular description of the matter to be seized, and
a description of each place at which such matter is to be
seized;
(C) the time period, which shall end not later than seven
days after the date on which such order is issued, during which
the seizure is to be made;
(D) the amount of security required to be provided under
this subsection; and
(E) a date for the hearing required under paragraph (10)
of this subsection.
(6) The court shall take appropriate action to protect the person against whom an order under this subsection is directed from
publicity, by or at the behest of the plaintiff, about such order and
any seizure under such order.
(7) 17 Any materials seized under this subsection shall be
taken into the custody of the court. For seizures made under
this section, the court shall enter an appropriate protective
order with respect to discovery and use of any records or information that has been seized. The protective order shall provide
for appropriate procedures to ensure that confidential, private,
proprietary, or privileged information contained in such
records is not improperly disclosed or used.
17 Margin so in law. Also, the amendment made by section 102(b) of Public Law 110–403 did
not include the words ‘‘of 1946’’ in the statute reference. Such Public Law amends the Act by
referring to its popular name but it probably should have amended the ‘‘Act of July 5, 1946
(commonly known as the Trademark Act of 1946)’’. The amendment was executed to reflect the
probable intent of Congress.

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Act of July 5, 1946

Sec. 35

(8) An order under this subsection, together with the supporting documents, shall be sealed until the person against whom
the order is directed has an opportunity to contest such order, except that any person against whom such order is issued shall have
access to such order and supporting documents after the seizure
has been carried out.
(9) The court shall order that service of a copy of the order
under this subsection shall be made by a Federal law enforcement
officer (such as a United States marshal or an officer or agent of
the United States Customs Service, Secret Service, Federal Bureau
of Investigation, or Post Office) or may be made by a State or local
law enforcement officer, who, upon making service, shall carry out
the seizure under the order. The court shall issue orders, when appropriate, to protect the defendant from undue damage from the
disclosure of trade secrets or other confidential information during
the course of the seizure, including, when appropriate, orders restricting the access of the applicant (or any agent or employee of
the applicant) to such secrets or information.
(10)(A) The court shall hold a hearing, unless waived by all the
parties, on the date set by the court in the order of seizure. That
date shall be not sooner than ten days after the order is issued and
not later than fifteen days after the order is issued, unless the applicant for the order shows good cause for another date or unless
the party against whom such order is directed consents to another
date for such hearing. At such hearing the party obtaining the
order shall have the burden to prove that the facts supporting findings of fact and conclusions of law necessary to support such order
are still in effect. If that party fails to meet that burden, the seizure order shall be dissolved or modified appropriately.
(B) In connection with a hearing under this paragraph, the
court may make such orders modifying the time limits for discovery
under the Rules of Civil Procedure as may be necessary to prevent
the frustration of the purposes of such hearing.
(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall
be entitled to recover such relief as may be appropriate, including
damages for lost profits, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad
faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney’s fee. The court in its discretion may
award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under section
6621(a)(2) of the Internal Revenue Code of 1986, commencing on
the date of service of the claimant’s pleadings setting forth the
claim under this paragraph and ending on the date such recovery
is granted, or for such shorter time as the court deems appropriate.
ø15 U.S.C. 1116¿

SEC. 35. (a) When a violation of any right of the registrant of
a mark registered in the Patent and Trademark Office, a violation
under section 43(a) or (d), or a willful violation under section 43(c),
shall have been established in any civil action arising under this
Act, the plaintiff shall be entitled, subject to the provisions of secFebruary 10, 2021

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Act of July 5, 1946

36

tions 29 and 32, and subject to the principles of equity, to recover
(1) defendant’s profits, (2) any damages sustained by the plaintiff,
and (3) the costs of the action. The court shall assess such profits
and damages or cause the same to be assessed under its direction.
In assessing profits the plaintiff shall be required to prove defendant’s sales only, defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum
above the amount found as actual damages, not exceeding three
times such amount. If the court shall find that the amount of the
recovery based on profits is either inadequate or excessive the court
may in its discretion enter judgment for such sum as the court
shall find to be just, according to the circumstances of the case.
Such sum in either of the above circumstances shall constitute
compensation and not a penalty. The court in exceptional cases
may award reasonable attorney fees to the prevailing party.
(b) In assessing damages under subsection (a) for any violation
of section 32(1)(a) of this Act or section 220506 of title 36, United
States Code, in a case involving use of a counterfeit mark or designation (as defined in section 34(d) of this Act), the court shall,
unless the court finds extenuating circumstances, enter judgment
for three times such profits or damages, whichever amount is
greater, together with a reasonable attorney’s fee, if the violation
consists of—
(1) intentionally using a mark or designation, knowing
such mark or designation is a counterfeit mark (as defined in
section 34(d) of this Act), in connection with the sale, offering
for sale, or distribution of goods or services; or
(2) providing goods or services necessary to the commission
of a violation specified in paragraph (1), with the intent that
the recipient of the goods or services would put the goods or
services to use in committing the violation.
In such a case, the court may award prejudgment interest on such
amount at an annual interest rate established under section
6621(a)(2) of the Internal Revenue Code of 1986, beginning on the
date of the service of the claimant’s pleadings setting forth the
claim for such entry of judgment and ending on the date such entry
is made, or for such shorter time as the court considers appropriate.
(c) In a case involving the use of a counterfeit mark (as defined
in section 34(d) (15 U.S.C. 1116(d)) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may
elect, at any time before final judgment is rendered by the trial
court, to recover, instead of actual damages and profits under subsection (a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or
services in the amount of—
(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale,
or distributed, as the court considers just; or
(2) if the court finds that the use of the counterfeit mark
was willful, not more than $2,000,000 per counterfeit mark per
type of goods or services sold, offered for sale, or distributed,
as the court considers just.
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Act of July 5, 1946

Sec. 38

(d) In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before final judgment is rendered by the
trial court, to recover, instead of actual damages and profits, an
award of statutory damages in the amount of not less than $1,000
and not more than $100,000 per domain name, as the court considers just.
(e) In the case of a violation referred to in this section, it shall
be a rebuttable presumption that the violation is willful for purposes of determining relief if the violator, or a person acting in concert with the violator, knowingly provided or knowingly caused to
be provided materially false contact information to a domain name
registrar, domain name registry, or other domain name registration
authority in registering, maintaining, or renewing a domain name
used in connection with the violation. Nothing in this subsection
limits what may be considered a willful violation under this section.
ø15 U.S.C. 1117¿

SEC. 36. In any action arising under this Act, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a), or a willful violation under section 43(c), shall have been established, the
court may order that all labels, signs, prints, packages, wrappers,
receptacles, and advertisements in the possession of the defendant,
bearing the registered mark or, in the case of a violation of section
43(a) or a willful violation under section 43(c), the word, term,
name, symbol, device, combination thereof, designation, description,
or representation that is the subject of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all
plates, molds, matrices, and other means of making the same, shall
be delivered up and destroyed. The party seeking an order under
this section for destruction of articles seized under section 34(d) (15
U.S.C. 1116(d)) shall give ten days’ notice to the United States attorney for the judicial district in which such order is sought (unless
good cause is shown for lesser notice) and such United States attorney may, if such destruction may affect evidence of an offense
against the United States, seek a hearing on such destruction or
participate in any hearing otherwise to be held with respect to such
destruction.
ø15 U.S.C. 1118¿

SEC. 37. In any action involving a registered mark the court
may determine the right to registration, order the cancelation of
registrations, in whole or in part, restore canceled registrations,
and otherwise rectify the register with respect to the registrations
of any party to the action. Decrees and orders shall be certified by
the court to the Director, who shall make appropriate entry upon
the records of the Patent and Trademark Office, and shall be controlled thereby.
ø15 U.S.C. 1119¿

SEC. 38. Any person who shall procure registration in the Patent and Trademark Office of a mark by a false or fraudulent declaration or representation, oral or in writing, or by any false
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Sec. 39

Act of July 5, 1946

38

means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof.
ø15 U.S.C. 1120¿

SEC. 39. (a) The district and territorial courts of the United
States shall have original jurisdiction, the courts of appeals 18 of
the United States (other than the United States Court of Appeals
for the Federal Circuit) and the United States Court of Appeals for
the District of Columbia shall have appellate jurisdiction, of all actions arising under this Act, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the
parties.
(b) No State or other jurisdiction of the United States or any
political subdivision or any agency thereof may require alteration
of a registered mark, or require that additional trademarks, service
marks, trade names, or corporate names that may be associated
with or incorporated into the registered mark be displayed in the
mark in a manner differing from the display of such additional
trademarks, service marks, trade names, or corporate names contemplated by the registered mark as exhibited in the certificate of
registration issued by the United States Patent and Trademark Office.
ø15 U.S.C. 1121¿

SEC. 40. (a) WAIVER OF SOVEREIGN IMMUNITY BY THE UNITED
STATES.—The United States, all agencies and instrumentalities
thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent
of the United States, shall not be immune from suit in Federal or
State court by any person, including any governmental or nongovernmental entity, for any violation under this Act.
(b) WAIVER OF SOVEREIGN IMMUNITY BY STATES.—Any State,
instrumentality of a State or any officer or employee of a State or
instrumentality of a State acting in his or her official capacity,
shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity for any violation
under this Act.
(c) In a suit described in subsection (a) or (b) for a violation described therein, remedies (including remedies both at law and in
equity) are available for the violation to the same extent as such
remedies are available for such a violation in a suit against any
person other than the United States or any agency or instrumentality thereof, or any individual, firm, corporation, or other person
acting for the United States and with authorization and consent of
the United States, or a State, instrumentality of a State, or officer
or employee of a State or instrumentality of a State acting in his
or her official capacity. Such remedies include injunctive relief
under section 34, actual damages, profits, costs and attorney’s fees
under section 35, destruction of infringing articles under section 36,
18 Section 127 of chapter 139, 63 Stat. 107, provided that a reference to a ‘‘circuit court of appeals’’ is amended by substituting ‘‘court of appeals’’.

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Act of July 5, 1946

Sec. 43

the remedies provided for under sections 32, 37, 38, 42 and 43, and
for any other remedies provided under this Act.
ø15 U.S.C. 1122¿

SEC. 41. The Director shall make rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent
and Trademark Office under this Act.
ø15 U.S.C. 1123¿

TITLE VII—IMPORTATION FORBIDDEN OF GOODS BEARING
INFRINGING MARKS OR NAMES
SEC. 42. Except as provided in subsection (d) of section 526 of
the Tariff Act of 1930, no article of imported merchandise which
shall copy or simulate the name of any domestic manufacture, or
manufacturer, or trader, or of any manufacturer or trader located
in any foreign country which, by treaty, convention, or law affords
similar privileges to citizens of the United States, or which shall
copy or simulate a trademark registered in accordance with the
provisions of this Act or shall bear a name or mark calculated to
induce the public to believe that the article is manufactured in the
United States, or that it is manufactured in any foreign country or
locality other than the country or locality in which it is in fact
manufactured, shall be admitted to entry at any customhouse of
the United States; and, in order to aid the officers of the customs
in enforcing this prohibition, any domestic manufacturer or trader,
and any foreign manufacturer or trader, who is entitled under the
provisions of a treaty, convention, declaration, or agreement between the United States and any foreign country to the advantages
afforded by law to citizens of the United States in respect to trademarks and commercial names, may require his name and residence, and the name of the locality in which his goods are manufactured, and a copy of the certificate of registration of his trademark, issued in accordance with the provisions of this Act, to be
recorded in books which shall be kept for this purpose in the Department of the Treasury, under such regulations as the Secretary
of the Treasury shall prescribe, and may furnish to the Department
facsimiles of his name, the name of the locality in which his goods
are manufactured, or of his registered trademark, and thereupon
the Secretary of the Treasury shall cause one or more copies of the
same to be transmitted to each collector or other proper officer of
customs.
ø15 U.S.C. 1124¿

TITLE VIII—FALSE DESIGNATIONS OF ORIGIN, FALSE
DESCRIPTIONS, AND DILUTION FORBIDDEN
SEC. 43. (a)(1) Any person who, on or in connection with any
goods or services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination thereof,
or any false designation of origin, false or misleading description of
fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such
person with another person, or as to the origin, sponsorship, or
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Sec. 43

Act of July 5, 1946

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approval of his or her goods, services, or commercial activities
by another person, or
(B) in commercial advertising or promotion, misrepresents
the nature, characteristics, qualities, or geographic origin of his
or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.
(2) As used in this subsection, the term ‘‘any person’’ includes
any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any
State, and any such instrumentality, officer, or employee, shall be
subject to the provisions of this Act in the same manner and to the
same extent as any nongovernmental entity.
(3) In a civil action for trade dress infringement under this Act
for trade dress not registered on the principal register, the person
who asserts trade dress protection has the burden of proving that
the matter sought to be protected is not functional.
(b) Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States
or admitted to entry at any customhouse of the United States. The
owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the
remedy given by this Act in cases involving goods refused entry or
seized.
(c) DILUTION BY BLURRING; DILUTION BY TARNISHMENT.—
(1) INJUNCTIVE RELIEF.—Subject to the principles of equity,
the owner of a famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s
mark has become famous, commences use of a mark or trade
name in commerce that is likely to cause dilution by blurring
or dilution by tarnishment of the famous mark, regardless of
the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
(2) DEFINITIONS.—(A) For purposes of paragraph (1), a
mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source
of the goods or services of the mark’s owner. In determining
whether a mark possesses the requisite degree of recognition,
the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or
publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of
sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
(B) For purposes of paragraph (1), ‘‘dilution by blurring’’ is
association arising from the similarity between a mark or
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41

Act of July 5, 1946

Sec. 43

trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or
trade name is likely to cause dilution by blurring, the court
may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade
name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness
of the famous mark.
(iii) The extent to which the owner of the famous mark
is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade
name and the famous mark.
(C) For purposes of paragraph (1), ‘‘dilution by
tarnishment’’ is association arising from the similarity between
a mark or trade name and a famous mark that harms the reputation of the famous mark.
(3) EXCLUSIONS.—The following shall not be actionable as
dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive
fair use, or facilitation of such fair use, of a famous mark
by another person other than as a designation of source for
the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or
services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
(4) BURDEN OF PROOF.—In a civil action for trade dress dilution under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection
has the burden of proving that—
(A) the claimed trade dress, taken as a whole, is not
functional and is famous; and
(B) if the claimed trade dress includes any mark or
marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and
apart from any fame of such registered marks.
(5) ADDITIONAL REMEDIES.—In an action brought under
this subsection, the owner of the famous mark shall be entitled
to injunctive relief as set forth in section 34. The owner of the
famous mark shall also be entitled to the remedies set forth in
sections 35(a) and 36, subject to the discretion of the court and
the principles of equity if—
(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first
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Sec. 43

Act of July 5, 1946

42

tion is sought after the date of enactment of the Trademark Dilution Revision Act of 2006; and
(B) in a claim arising under this subsection—
(i) by reason of dilution by blurring, the person
against whom the injunction is sought willfully intended to trade on the recognition of the famous mark;
or
(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
(6) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO
ACTION.—The ownership by a person of a valid registration
under the Act of March 3, 1881, or the Act of February 20,
1905, or on the principal register under this Act shall be a
complete bar to an action against that person, with respect to
that mark, that—
(A) is brought by another person under the common
law or a statute of a State; and
(B)(i) seeks to prevent dilution by blurring or dilution
by tarnishment; or
(ii) asserts any claim of actual or likely damage or
harm to the distinctiveness or reputation of a mark, label,
or form of advertisement.
(7) SAVINGS CLAUSE.—Nothing in this subsection shall be
construed to impair, modify, or supersede the applicability of
the patent laws of the United States.
(d)(1)(A) A person shall be liable in a civil action by the owner
of a mark, including a personal name which is protected as a mark
under this section, if, without regard to the goods or services of the
parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this
section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time
of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the
time of registration of the domain name, is identical or
confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.
(B)(i) In determining whether a person has a bad faith intent
described under subparagraph (A), a court may consider factors
such as, but not limited to—
(I) the trademark or other intellectual property rights of
the person, if any, in the domain name;
(II) the extent to which the domain name consists of the
legal name of the person or a name that is otherwise commonly
used to identify that person;
(III) the person’s prior use, if any, of the domain name in
connection with the bona fide offering of any goods or services;
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43

Act of July 5, 1946

Sec. 43

(IV) the person’s bona fide noncommercial or fair use of
the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the domain
name that could harm the goodwill represented by the mark,
either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the
source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign
the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use,
the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such
conduct;
(VII) the person’s provision of material and misleading
false contact information when applying for the registration of
the domain name, the person’s intentional failure to maintain
accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple
domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time
of registration of such domain names, or dilutive of famous
marks of others that are famous at the time of registration of
such domain names, without regard to the goods or services of
the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A) shall
not be found in any case in which the court determines that the
person believed and had reasonable grounds to believe that the use
of the domain name was a fair use or otherwise lawful.
(C) In any civil action involving the registration, trafficking, or
use of a domain name under this paragraph, a court may order the
forfeiture or cancellation of the domain name or the transfer of the
domain name to the owner of the mark.
(D) A person shall be liable for using a domain name under
subparagraph (A) only if that person is the domain name registrant
or that registrant’s authorized licensee.
(E) As used in this paragraph, the term ‘‘traffics in’’ refers to
transactions that include, but are not limited to, sales, purchases,
loans, pledges, licenses, exchanges of currency, and any other
transfer for consideration or receipt in exchange for consideration.
(2)(A) The owner of a mark may file an in rem civil action
against a domain name in the judicial district in which the domain
name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if—
(i) the domain name violates any right of the owner of a
mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and
(ii) the court finds that the owner—
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Sec. 43

Act of July 5, 1946

44

(I) is not able to obtain in personam jurisdiction over
a person who would have been a defendant in a civil action
under paragraph (1); or
(II) through due diligence was not able to find a person who would have been a defendant in a civil action
under paragraph (1) by—
(aa) sending a notice of the alleged violation and
intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail
address provided by the registrant to the registrar;
and
(bb) publishing notice of the action as the court
may direct promptly after filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute
service of process.
(C) In an in rem action under this paragraph, a domain name
shall be deemed to have its situs in the judicial district in which—
(i) the domain name registrar, registry, or other domain
name authority that registered or assigned the domain name
is located; or
(ii) documents sufficient to establish control and authority
regarding the disposition of the registration and use of the domain name are deposited with the court.
(D)(i) The remedies in an in rem action under this paragraph
shall be limited to a court order for the forfeiture or cancellation
of the domain name or the transfer of the domain name to the
owner of the mark. Upon receipt of written notification of a filed,
stamped copy of a complaint filed by the owner of a mark in a
United States district court under this paragraph, the domain
name registrar, domain name registry, or other domain name authority shall—
(I) expeditiously deposit with the court documents sufficient to establish the court’s control and authority regarding
the disposition of the registration and use of the domain name
to the court; and
(II) not transfer, suspend, or otherwise modify the domain
name during the pendency of the action, except upon order of
the court.
(ii) The domain name registrar or registry or other domain
name authority shall not be liable for injunctive or monetary relief
under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such
court order.
(3) The civil action established under paragraph (1) and the in
rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil
action or remedy otherwise applicable.
(4) The in rem jurisdiction established under paragraph (2)
shall be in addition to any other jurisdiction that otherwise exists,
whether in rem or in personam.
ø15 U.S.C. 1125¿
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45

Act of July 5, 1946

Sec. 44

TITLE VIX—INTERNATIONAL CONVENTIONS
SEC. 44. (a) The Director shall keep a register of all marks
communicated to him by the international bureaus provided for by
the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair
competition to which the United States is or may become a party,
and upon the payment of the fees required by such conventions and
the fees required in this Act may place the marks so communicated
upon such register. This register shall show a facsimile of the mark
or trade or commercial name; the name, citizenship, and address
of the registrant; the number, date, and place of the first registration of the mark, including the date on which application for such
registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as
shown by the registration in the country of origin, and such other
data as may be useful concerning the mark. This register shall be
a continuation of the register provided in section 1(a) of the Act of
March 19, 1920.
(b) Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial
names, or the repression of unfair competition, to which the United
States is also a party, or extends reciprocal rights to nationals of
the United States by law, shall be entitled to the benefits of this
section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of a
mark is otherwise entitled by this Act.
(c) No registration of a mark in the United States by a person
described in subsection (b) of this section shall be granted until
such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.
For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not
a domicile in any of the countries described in subsection (b) of this
section, the country of which he is a national.
(d) An application for registration of a mark under section 1,
3, 4, or 23 of this Act or under subsection (e) of this section filed
by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark
in one of the countries described in subsection (b) shall be accorded
the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the
application was first filed in such foreign country: Provided, That—
(1) the application in the United States is filed within six
months from the date on which the application was first filed
in the foreign country;
(2) the application conforms as nearly as practicable to the
requirements of this Act, including a statement that the applicant has a bona fide intention to use the mark in commerce;
(3) the rights required by third parties before the date of
the filing of the first application in the foreign country shall in
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Sec. 45

Act of July 5, 1946

46

no way be affected by a registration obtained on an applicant
filed under this subsection;
(4) nothing in this subsection shall entitle the owner of a
registration granted under this section to sue for acts committed prior to the date on which his mark was registered in
this country unless the registration is based on use in commerce.
In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been
withdrawn, abandoned, or otherwise disposed of, without having
been laid open to public inspection and without leaving any rights
outstanding, and has not served, nor thereafter shall serve, as a
basis for claiming a right of priority.
(e) A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein provided. Such
applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or
a certified copy of the registration in the country of origin of the
applicant. The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall
not be required prior to registration.
(f) The registration of a mark under the provisions of subsections (c), (d), and (e) of this section by a person described in subsection (b) shall be independent of the registration in the country
of origin and the duration, validity, or transfer in the United States
of such registration shall be governed by the provisions of this Act.
(g) Trade names or commercial names of persons described in
subsection (b) of this section shall be protected without the obligation of filing or registration whether or not they form parts of
marks.
(h) Any person designated in subsection (b) of this section as
entitled to the benefits and subject to the provisions of this Act
shall be entitled to effective protection against unfair competition,
and the remedies provided herein for infringement of marks shall
be available so far as they may be appropriate in repressing acts
of unfair competition.
(i) Citizens or residents of the United States shall have the
same benefits as are granted by this section to persons described
in subsection (b) of this section.
ø15 U.S.C. 1126¿

TITLE X—CONSTRUCTION AND DEFINITIONS
SEC. 45. In the construction of this Act, unless the contrary is
plainly apparent from the context—
The United States includes and embraces all territory which is
under its jurisdiction and control.
The word ‘‘commerce’’ means all commerce which may lawfully
be regulated by Congress.
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Act of July 5, 1946

Sec. 45

The term ‘‘principal register’’ refers to the register provided for
by sections 1 through 22 hereof, and the term ‘‘supplemental register’’ refers to the register provided for by sections 23 through 28
hereof.
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 Act in the
same manner and to the same extent as any nongovernmental entity.
The term ‘‘person’’ also includes any State, any instrumentality
of a State, and any officer or employee of a State or instrumentality
of a State acting in his or her official capacity. Any State, and any
such instrumentality, officer, or employee, shall be subject to the
provisions of this Act in the same manner and to the same extent
as any nongovernmental entity.
The terms ‘‘applicant’’ and ‘‘registrant’’ embrace the legal representative, predecessors, successors and assigns of such applicant
or registrant.
The term ‘‘Director’’ means the Under Secretary of Commerce
for Intellectual Property and Director of the United States Patent
and Trademark Office.
The term ‘‘related company’’ means any person whose use of a
mark is controlled by the owner of the mark with respect to the
nature and quality of the goods or services on or in connection with
which the mark is used.
The terms ‘‘trade name’’ and ‘‘commercial name’’ mean any
name used by a person to identify his or her business or vocation.
The term ‘‘trademark’’ includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique
product, from those manufactured or sold by others and to indicate
the source of the goods, even if that source is unknown.
The term ‘‘service mark’’ 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 Act,
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Act of July 5, 1946

48

to identify and distinguish the services of one person, including a
unique service, from the services of others and to indicate the
source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television
programs may be registered as service marks notwithstanding that
they, or the programs, may advertise the goods of the sponsor.
The term ‘‘certification mark’’ means any word, name, symbol,
or device, or any combination thereof—
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a
person other than the owner to use in commerce and files an
application to register on the principal register established by
this Act,
to certify regional or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of such person’s goods or
services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ‘‘collective mark’’ means a trademark or service
mark—
(1) used by the members of a cooperative, an association,
or other collective group or organization, or
(2) which such cooperative, association, or other collective
group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
and includes marks indicating membership in a union, an association, or other organization.
The term ‘‘mark’’ includes any trademark, service mark, collective mark, or certification mark.
The term ‘‘use in commerce’’ means the bona fide use of a mark
in the ordinary course of trade, and not made merely to reserve a
right in a mark. For purposes of this Act, a mark shall be deemed
to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on the
tags or labels affixed thereto, or if the nature of the goods
makes such placement impracticable, then on documents
associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or
in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with
the services.
A mark shall be deemed to be ‘‘abandoned’’ if either of the following occurs:
(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment. ‘‘Use’’ of a mark means the
bona fide use of such mark made in the ordinary course of
trade, and not made merely to reserve a right in a mark.
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49

Act of July 5, 1946

Sec. 46

(2) When any course of conduct of the owner, including
acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for
determining abandonment under this paragraph.
The term ‘‘registered mark’’ means a mark registered in the
United States Patent and Trade Mark Office under this Act 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 Trade Office’’ means registered marks.
The term ‘‘Act of March 3, 1881’’, ‘‘Act of February 20, 1905’’,
or ‘‘Act of March 19, 1920’’, means the respective Act as amended.
A ‘‘counterfeit’’ is a spurious mark which is identical with, or
substantially indistinguishable from, a registered mark.
The term ‘‘domain name’’ means any alphanumeric designation
which is registered with or assigned by any domain name registrar,
domain name registry, or other domain name registration authority
as part of an electronic address on the Internet.
The term ‘‘Internet’’ has the meaning given that term in section 230(f)(1) of the Communications Act of 1934 (47 U.S.C.
230(f)(1)).
Words used in the singular include the plural and vice versa.
The intent of this Act is to regulate commerce within the control of Congress by making actionable the deceptive and misleading
use of marks in such commerce; to protect registered marks used
in such commerce from interference by 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.
ø15 U.S.C. 1127¿

TITLE XI—REPEAL OF PREVIOUS ACTS
SEC. 46. (a) This Act shall be in force and take effect one year
from its enactment, but except as otherwise herein specifically provided shall not affect any suit, proceeding, or appeal then pending.
All Acts and parts of Acts inconsistent herewith are hereby repealed effective one year from the enactment hereof, including the
following Acts insofar as they are inconsistent herewith: The Act
of Congress approved March 3, 1881, entitled ‘‘An Act to authorize
the registration of trademarks and protect the same’’; the Act approved August 5, 1882, entitled ‘‘An Act relating to the registration
of trademarks’’; the Act of February 20, 1905 (U.S.C., title 15, secs.
81 to 109, inclusive), entitled ‘‘An Act to authorize the registration
of trademarks used in commerce with foreign nations or among the
several States or with Indian tribes, and to protect the same’’, and
the amendments thereto by the Acts of May 4, 1906 (U.S.C., title
15, secs. 131 and 132; 34 Stat. 169), March 2, 1907 (34 Stat. 1251,
1252), February 18, 1909 (35 Stat. 627, 628), February 18, 1911 (36
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Act of July 5, 1946

50

Stat. 918), January 8, 1913 (37 Stat. 649), June 7, 1924 (43 Stat.
647), March 4, 1925 (43 Stat. 1926, 1269), April 11, 1930 (46 Stat.
155), June 10, 1938 (Public Numbered 586, Seventy-fifth Congress,
ch. 332, third session); the Act of March 19, 1920 (U.S.C., title 15,
secs. 121 to 128, inclusive), entitled ‘‘An Act to give effect to certain
provisions of the convention for the protection of trademarks and
commercial names made and signed in the city of Buenos Aires, in
the Argentine Republic, August 20, 1910, and for other purposes’’,
and the amendments thereto, including the Act of June 10, 1938
(Public, Numbered 586, Seventy-fifth Congress, ch. 332, third session): Provided, That this repeal shall not affect the validity of registrations granted or applied for under any of said Acts prior to the
effective date of this Act, or rights or remedies thereunder except
as provided in sections 8, 12, 14, 15, and 47 of this Act; but nothing
contained in this Act shall be construed as limiting, restricting,
modifying, or repealing any statute in force on the effective date of
this Act which does not relate to trademarks, or as restricting or
increasing the authority of any Federal department or regulatory
agency except as may be specifically provided in this Act.
(b) Registrations now existing under the Act of March 3, 1881,
or the Act of February 20, 1905, shall continue in full force and effect for the unexpired terms thereof and may be renewed under the
provisions of section 9 of this Act. Such registrations and the renewals thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act to the same extent and with the
same force and effect as though registered on the principal register
established by this Act except as limited in sections 8, 12, 14, and
15 of this Act. Marks registered under the ‘‘ten-year proviso’’ of section 5 of the Act of February 20, 1905, as amended, shall be
deemed to have become distinctive of the registrant’s goods in commerce under paragraphs (f) of section 2 of this Act and may be renewed under section 9 hereof as marks coming within said paragraph.
Registrations now existing under the Act of March 19, 1920,
shall expire six months after the effective date of this Act, or twenty years from the dates of their registrations, whichever date is
later. Such registrations shall be subject to and entitled to the benefits of the provisions of this Act relating to marks registered on
the supplemental register established by this Act, and may not be
renewed unless renewal is required to support foreign registrations. In that event renewal may be effected on the supplemental
register under the provisions of section 9 of this Act.
Marks registered under previous Acts may, if eligible, also be
registered under this Act.
ø15 U.S.C. 1051 nt¿

SEC. 47. (a) All applications for registration pending in the Patent and Trademark Office at the effective date of this Act may be
amended, if practicable, to bring them under the provisions of this
Act. The prosecution of such applications so amended and the grant
of registrations thereon shall be proceeded with in accordance with
the provisions of this Act. If such amendments are not made, the
prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which
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51

Act of July 5, 1946

Sec. 60

said applications were filed, and said Acts are hereby continued in
force to this extent and for this purpose only, notwithstanding the
foregoing general repeal thereof.
(b) In any case in which an appeal is pending before the
United States Court of Customs and Patent Appeals or any United
States Circuit Court of Appeals or the United States Court of Appeals for the District of Columbia or the United States Supreme
Court at the effective date of this Act, the court, if it be of the opinion that the provisions of this Act are applicable to the subject matter of the appeal, may apply such provision or may remand the
case to the Director or to the district court for the taking of additional evidence or a new trial or for reconsideration of the decision
on the record as made, as the appellate court may deem proper.
ø15 U.S.C. 1051 nt¿

SEC. 48. Section 4 of the Act of January 5, 1905 (U.S.C., title
36, sec. 4), as amended, entitled ‘‘An Act to incorporate the National Red Cross’’, and section 7 of the Act of June 15, 1916 (U.S.C.,
title 36, sec. 27), entitled ‘‘An Act to incorporate the Boy Scouts of
America, and for other purposes’’, and the Act of June 20, 1936
(U.S.C., title 22, sec. 248), entitled ‘‘An Act to prohibit the commercial use of the coat of arms of the Swiss Confederation’’, are not repealed or affected by this Act.
ø15 U.S.C. 1051 nt¿

SEC. 49. Nothing herein shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith prior to the
effective date of this Act.
ø15 U.S.C. 1051 nt¿

SEC. 50. If any provision of this Act or the application of such
provision to any person or circumstance is held invalid, the remainder of the Act shall not be affected thereby.
ø15 U.S.C. 1051 nt¿

SEC. 51. All certificates of registration based upon applications
for registration pending in the Patent and Trademark Office on the
effective date of the Trademark Law Revision Act of 1988 shall remain in force for a period of 10 years.
ø15 U.S.C. 1058 nt¿

TITLE XII—THE MADRID PROTOCOL 19
SEC. 60. DEFINITIONS.

In this title:
(1) BASIC APPLICATION.—The term ‘‘basic application’’
means the application for the registration of a mark that has
been filed with an Office of a Contracting Party and that con19 This title was added by section 13401 of Public Law 107–273 (subtitle D of title III; 116
Stat. 1930). Section 13403 of such public law provides as follows:

SEC. 13403. EFFECTIVE DATE.
This subtitle and the amendments made by this subtitle shall take effect on the later of—
(1) the date on which the Madrid Protocol (as defined in section 60 of the Trademark Act
of 1946) enters into force with respect to the United States; or
(2) the date occurring 1 year after the date of enactment of this Act øNov. 2, 2002¿.

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Act of July 5, 1946

52

stitutes the basis for an application for the international registration of that mark.
(2) BASIC REGISTRATION.—The term ‘‘basic registration’’
means the registration of a mark that has been granted by an
Office of a Contracting Party and that constitutes the basis for
an application for the international registration of that mark.
(3) CONTRACTING PARTY.—The term ‘‘Contracting Party’’
means any country or inter-governmental organization that is
a party to the Madrid Protocol.
(4) DATE OF RECORDAL.—The term ‘‘date of recordal’’
means the date on which a request for extension of protection,
filed after an international registration is granted, is recorded
on the International Register.
(5) DECLARATION OF BONA FIDE INTENTION TO USE THE
MARK IN COMMERCE.—The term ‘‘declaration of bona fide intention to use the mark in commerce’’ means a declaration that
is signed by the applicant for, or holder of, an international
registration who is seeking extension of protection of a mark
to the United States and that contains a statement that—
(A) the applicant or holder has a bona fide intention
to use the mark in commerce;
(B) the person making the declaration believes himself
or herself, or the firm, corporation, or association in whose
behalf he or she makes the declaration, to be entitled to
use the mark in commerce; and
(C) no other person, firm, corporation, or association,
to the best of his or her knowledge and belief, has the
right to use such mark in commerce either in the identical
form of the mark or in such near resemblance to the mark
as to be likely, when used on or in connection with the
goods of such other person, firm, corporation, or association, to cause confusion, mistake, or deception.
(6) EXTENSION OF PROTECTION.—The term ‘‘extension of
protection’’ means the protection resulting from an international registration that extends to the United States at the
request of the holder of the international registration, in accordance with the Madrid Protocol.
(7) HOLDER OF AN INTERNATIONAL REGISTRATION.—A ‘‘holder’’ of an international registration is the natural or juristic
person in whose name the international registration is recorded on the International Register.
(8) INTERNATIONAL APPLICATION.—The term ‘‘international
application’’ means an application for international registration
that is filed under the Madrid Protocol.
(9) INTERNATIONAL BUREAU.—The term ‘‘International Bureau’’ means the International Bureau of the World Intellectual Property Organization.
(10) INTERNATIONAL REGISTER.—The term ‘‘International
Register’’ means the official collection of data concerning international registrations maintained by the International Bureau
that the Madrid Protocol or its implementing regulations require or permit to be recorded.
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53

Act of July 5, 1946

Sec. 62

(11) INTERNATIONAL REGISTRATION.—The term ‘‘international registration’’ means the registration of a mark granted under the Madrid Protocol.
(12) INTERNATIONAL REGISTRATION DATE.—The term ‘‘international registration date’’ means the date assigned to the
international registration by the International Bureau.
(13) MADRID PROTOCOL.—The term ‘‘Madrid Protocol’’
means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at
Madrid, Spain, on June 27, 1989.
(14) NOTIFICATION OF REFUSAL.—The term ‘‘notification of
refusal’’ means the notice sent by the United States Patent and
Trademark Office to the International Bureau declaring that
an extension of protection cannot be granted.
(15) OFFICE OF A CONTRACTING PARTY.—The term ‘‘Office of
a Contracting Party’’ means—
(A) the office, or governmental entity, of a Contracting
Party that is responsible for the registration of marks; or
(B) the common office, or governmental entity, of more
than 1 Contracting Party that is responsible for the registration of marks and is so recognized by the International Bureau.
(16) OFFICE OF ORIGIN.—The term ‘‘office of origin’’ means
the Office of a Contracting Party with which a basic application was filed or by which a basic registration was granted.
(17) OPPOSITION PERIOD.—The term ‘‘opposition period’’
means the time allowed for filing an opposition in the United
States Patent and Trademark Office, including any extension
of time granted under section 13.
ø15 U.S.C. 1141¿
SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES
APPLICATIONS OR REGISTRATIONS.
(a) IN GENERAL.—The owner of a basic application pending be-

fore the United States Patent and Trademark Office, or the owner
of a basic registration granted by the United States Patent and
Trademark Office may file an international application by submitting to the United States Patent and Trademark Office a written
application in such form, together with such fees, as may be prescribed by the Director.
(b) QUALIFIED OWNERS.—A qualified owner, under subsection
(a), shall—
(1) be a national of the United States;
(2) be domiciled in the United States; or
(3) have a real and effective industrial or commercial establishment in the United States.
ø15 U.S.C. 1141a¿
SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
(a) CERTIFICATION PROCEDURE.—Upon the filing of an applica-

tion for international registration and payment of the prescribed
fees, the Director shall examine the international application for
the purpose of certifying that the information contained in the
international application corresponds to the information contained
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Act of July 5, 1946

54

in the basic application or basic registration at the time of the certification.
(b) TRANSMITTAL.—Upon examination and certification of the
international application, the Director shall transmit the international application to the International Bureau.
ø15 U.S.C. 1141b¿
SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRATION OF A BASIC APPLICATION OR BASIC REGISTRATION.

With respect to an international application transmitted to the
International Bureau under section 62, the Director shall notify the
International Bureau whenever the basic application or basic registration which is the basis for the international application has
been restricted, abandoned, or canceled, or has expired, with respect to some or all of the goods and services listed in the international registration—
(1) within 5 years after the international registration date;
or
(2) more than 5 years after the international registration
date if the restriction, abandonment, or cancellation of the
basic application or basic registration resulted from an action
that began before the end of that 5-year period.
ø15 U.S.C. 1141c¿
SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT TO
INTERNATIONAL REGISTRATION.

The holder of an international registration that is based upon
a basic application filed with the United States Patent and Trademark Office or a basic registration granted by the Patent and
Trademark Office may request an extension of protection of its
international registration by filing such a request—
(1) directly with the International Bureau; or
(2) with the United States Patent and Trademark Office
for transmittal to the International Bureau, if the request is in
such form, and contains such transmittal fee, as may be prescribed by the Director.
ø15 U.S.C. 1141d¿
SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO THE UNITED STATES UNDER THE MADRID
PROTOCOL.
(a) IN GENERAL.—Subject to the provisions of section 68, the

holder of an international registration shall be entitled to the benefits of extension of protection of that international registration to
the United States to the extent necessary to give effect to any provision of the Madrid Protocol.
(b) IF THE UNITED STATES IS OFFICE OF ORIGIN.—Where the
United States Patent and Trademark Office is the office of origin
for a trademark application or registration, any international registration based on such application or registration cannot be used
to obtain the benefits of the Madrid Protocol in the United States.
ø15 U.S.C. 1141e¿
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55

Act of July 5, 1946

Sec. 68

SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTECTION OF AN INTERNATIONAL REGISTRATION TO THE
UNITED STATES.
(a) REQUIREMENT FOR REQUEST FOR EXTENSION OF PROTECTION.—A request for extension of protection of an international reg-

istration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be
deemed to be properly filed in the United States if such request,
when received by the International Bureau, has attached to it a
declaration of bona fide intention to use the mark in commerce that
is verified by the applicant for, or holder of, the international registration.
(b) EFFECT OF PROPER FILING.—Unless extension of protection
is refused under section 68, the proper filing of the request for extension of protection under subsection (a) shall constitute constructive use of the mark, conferring the same rights as those specified
in section 7(c), as of the earliest of the following:
(1) The international registration date, if the request for
extension of protection was filed in the international application.
(2) The date of recordal of the request for extension of protection, if the request for extension of protection was made
after the international registration date.
(3) The date of priority claimed pursuant to section 67.
ø15 U.S.C. 1141f¿
SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF PROTECTION TO THE UNITED STATES.

The holder of an international registration with a request for
an extension of protection to the United States shall be entitled to
claim a date of priority based on a right of priority within the
meaning of Article 4 of the Paris Convention for the Protection of
Industrial Property if—
(1) the request for extension of protection contains a claim
of priority; and
(2) the date of international registration or the date of the
recordal of the request for extension of protection to the United
States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of
the Paris Convention for the Protection of Industrial Property)
or a subsequent application (within the meaning of Article
4(C)(4) of the Paris Convention for the Protection of Industrial
Property).
ø15 U.S.C. 1141g¿
SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTENSION OF PROTECTION; NOTIFICATION OF REFUSAL.
(a) EXAMINATION AND OPPOSITION.—(1) A request for extension

of protection described in section 66(a) shall be examined as an application for registration on the Principal Register under this Act,
and if on such examination it appears that the applicant is entitled
to extension of protection under this title, the Director shall cause
the mark to be published in the Official Gazette of the United
States Patent and Trademark Office.
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Sec. 68

Act of July 5, 1946

56

(2) Subject to the provisions of subsection (c), a request for extension of protection under this title shall be subject to opposition
under section 13.
(3) Extension of protection shall not be refused on the ground
that the mark has not been used in commerce.
(4) Extension of protection shall be refused to any mark not
registrable on the Principal Register.
(b) NOTIFICATION OF REFUSAL.—If, a request for extension of
protection is refused under subsection (a), the Director shall declare in a notification of refusal (as provided in subsection (c)) that
the extension of protection cannot be granted, together with a
statement of all grounds on which the refusal was based.
(c) NOTICE TO INTERNATIONAL BUREAU.—(1) Within 18 months
after the date on which the International Bureau transmits to the
Patent and Trademark Office a notification of a request for extension of protection, the Director shall transmit to the International
Bureau any of the following that applies to such request:
(A) A notification of refusal based on an examination of the
request for extension of protection.
(B) A notification of refusal based on the filing of an opposition to the request.
(C) A notification of the possibility that an opposition to
the request may be filed after the end of that 18-month period.
(2) If the Director has sent a notification of the possibility of
opposition under paragraph (1)(C), the Director shall, if applicable,
transmit to the International Bureau a notification of refusal on
the basis of the opposition, together with a statement of all the
grounds for the opposition, within 7 months after the beginning of
the opposition period or within 1 month after the end of the opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension of protection is transmitted under paragraph (1) or (2), no grounds for refusal of such request other than those set forth in such notification
may be transmitted to the International Bureau by the Director
after the expiration of the time periods set forth in paragraph (1)
or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is not sent
to the International Bureau within the time period set forth in
such paragraph, with respect to a request for extension of protection, the request for extension of protection shall not be refused
and the Director shall issue a certificate of extension of protection
pursuant to the request.
(d) DESIGNATION OF AGENT FOR SERVICE OF PROCESS.—In responding to a notification of refusal with respect to a mark, the
holder of the international registration of the mark may designate,
by a document filed in the United States Patent and Trademark
Office, the name and address of a person residing in the United
States on whom notices or process in proceedings affecting the
mark may be served. Such notices or process may be served upon
the person designated by leaving with that person, or mailing to
that person, a copy thereof at the address specified in the last designation filed. If the person designated cannot be found at the address given in the last designation, or if the holder does not designate by a document filed in the United States Patent and TradeFebruary 10, 2021

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57

Act of July 5, 1946

Sec. 70

mark Office the name and address of a person residing in the
United States for service of notices or process in proceedings affecting the mark, the notice or process may be served on the Director.
ø15 U.S.C. 1141h¿
SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
(a) ISSUANCE OF EXTENSION OF PROTECTION.—Unless

a request
for extension of protection is refused under section 68, the Director
shall issue a certificate of extension of protection pursuant to the
request and shall cause notice of such certificate of extension of
protection to be published in the Official Gazette of the United
States Patent and Trademark Office.
(b) EFFECT OF EXTENSION OF PROTECTION.—From the date on
which a certificate of extension of protection is issued under subsection (a)—
(1) such extension of protection shall have the same effect
and validity as a registration on the Principal Register; and
(2) the holder of the international registration shall have
the same rights and remedies as the owner of a registration on
the Principal Register.
ø15 U.S.C. 1141i¿

SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE
UNITED STATES ON THE UNDERLYING INTERNATIONAL
REGISTRATION.
(a) EFFECT OF CANCELLATION OF INTERNATIONAL REGISTRATION.—If the International Bureau notifies the United States Pat-

ent and Trademark Office of the cancellation of an international
registration with respect to some or all of the goods and services
listed in the international registration, the Director shall cancel
any extension of protection to the United States with respect to
such goods and services as of the date on which the international
registration was canceled.
(b) EFFECT OF FAILURE TO RENEW INTERNATIONAL REGISTRATION.—If the International Bureau does not renew an international
registration, the corresponding extension of protection to the
United States shall cease to be valid as of the date of the expiration of the international registration.
(c) TRANSFORMATION OF AN EXTENSION OF PROTECTION INTO A
UNITED STATES APPLICATION.—The holder of an international registration canceled in whole or in part by the International Bureau
at the request of the office of origin, under article 6(4) of the Madrid Protocol, may file an application, under section 1 or 44 of this
Act, for the registration of the same mark for any of the goods and
services to which the cancellation applies that were covered by an
extension of protection to the United States based on that international registration. Such an application shall be treated as if it
had been filed on the international registration date or the date of
recordal of the request for extension of protection with the International Bureau, whichever date applies, and, if the extension of
protection enjoyed priority under section 67 of this title, shall enjoy
the same priority. Such an application shall be entitled to the benefits conferred by this subsection only if the application is filed not
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Sec. 71

Act of July 5, 1946

58

istration was canceled, in whole or in part, and only if the application complies with all the requirements of this Act which apply to
any application filed pursuant to section 1 or 44.
ø15 U.S.C. 1141j¿
SEC. 71. DURATION, AFFIDAVITS AND FEES.
(a) TIME PERIODS FOR REQUIRED AFFIDAVITS.—Each

extension
of protection for which a certificate has been issued under section
69 shall remain in force for the term of the international registration upon which it is based, except that the extension of protection
of any mark shall be canceled by the Director unless the holder of
the international registration files in the United States Patent and
Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of extension of protection, and each successive 10-year period following the date of issuance of the certificate of extension of protection.
(3) The holder may file the affidavit required under this
section within a grace period of 6 months after the end of the
applicable time period established in paragraph (1) or (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.
(b) REQUIREMENTS FOR AFFIDAVIT.—The affidavit referred to in
subsection (a) shall—
(1)(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the extension of protection on or in connection with which the mark is
in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may
be required by the Director; and
(D) be accompanied by the fee prescribed by the Director;
or
(2)(A) set forth the goods and services recited in the extension of protection on or in connection with which the mark is
not in use in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any
intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.
(c) DEFICIENT AFFIDAVIT.—If any submission filed within the
period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the holder of the international
registration, the deficiency may be corrected after the statutory
time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional
deficiency surcharge prescribed by the Director.
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G:\COMP\MISC\TRADEMARK ACT OF 1946.XML
59

Act of July 5, 1946

Sec. 74

(d) NOTICE OF REQUIREMENT.—Special notice of the requirement for such affidavit shall be attached to each certificate of extension of protection.
(e) NOTIFICATION OF ACCEPTANCE OR REFUSAL.—The Director
shall notify the holder of the international registration who files
any affidavit required by this section of the Director’s acceptance
or refusal thereof and, in the case of a refusal, the reasons therefor.
(f) DESIGNATION OF RESIDENT FOR SERVICE OF PROCESS AND
NOTICES.—If the holder of the international registration of the
mark is not domiciled in the United States, the holder 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 last designated address, or if the holder does not designate by
a document filed in the United States Patent and Trademark Office
the name and address of a person 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.
ø15 U.S.C. 1141k¿
SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.

An extension of protection may be assigned, together with the
goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial
or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.
ø15 U.S.C. 1141l¿
SEC. 73. INCONTESTABILITY.

The period of continuous use prescribed under section 15 for a
mark covered by an extension of protection issued under this title
may begin no earlier than the date on which the Director issues
the certificate of the extension of protection under section 69, except as provided in section 74.
ø15 U.S.C. 1141m¿
SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.

When a United States registration and a subsequently issued
certificate of extension of protection to the United States are owned
by the same person, identify the same mark, and list the same
goods or services, the extension of protection shall have the same
rights that accrued to the registration prior to issuance of the certificate of extension of protection.
ø15 U.S.C. 1141n¿

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