15 U.S.C. § 1054 — Collective marks and certification marks

Page 1282 TITLE 15—COMMERCE AND TRADE § 1053 MARKS REGISTERED UNDER TEN-YEAR PROVISO OF TRADE-MARK ACT OF 1905 Marks registered under the ‘‘ten-year proviso’’ of sec- tion 5 of the act of Feb. 20, 1905, as amended, deemed to have become distinctive of the registrant’s goods in commerce under par. (f) of this section, see section 46(b) of act July 5, 1946, set out in note under section 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce to Secretary of Commerce, with certain exceptions, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Govern- ment Organization and Employees. URUGUAY ROUND AGREEMENTS: ENTRY INTO FORCE The Uruguay Round Agreements, including the World Trade Organization Agreement and agreements an- nexed to that Agreement, as referred to in section 3511(d) of Title 19, Customs Duties, entered into force with respect to the United States on Jan. 1, 1995. See note set out under section 3511 of Title 19. § 1053. Service marks registrable Subject to the provisions relating to the reg- istration of trademarks, so far as they are appli- cable, 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 in this chap- ter 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. (July 5, 1946, ch. 540, title I, § 3, 60 Stat. 429; Pub. L. 100–667, title I, § 105, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106–43, § 6(b), Aug. 5, 1999, 113 Stat. 220.) Editorial Notes AMENDMENTS 1999—Pub. L. 106–43 substituted ‘‘trademarks’’ for ‘‘trade-marks’’ wherever appearing. 1988—Pub. L. 100–667 struck out ‘‘used in commerce’’ after ‘‘applicable, service marks’’ and ‘‘, except when used so as to represent falsely that the owner thereof makes or sells the goods on which such mark is used. The Commissioner may establish a separate register for such service marks’’ after ‘‘case of trade-marks’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1054. Collective marks and certification marks registrable Subject to the provisions relating to the reg- istration of trademarks, so far as they are appli- cable, collective and certification marks, includ- ing indications of regional origin, shall be reg- istrable under this chapter, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered, even though not possessing an industrial or commer- cial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks, except in the case of certification marks when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used. Applications and procedure under this section shall conform as nearly as prac- ticable to those prescribed for the registration of trademarks. (July 5, 1946, ch. 540, title I, § 4, 60 Stat. 429; Pub. L. 100–667, title I, § 106, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106–43, § 6(b), Aug. 5, 1999, 113 Stat. 220.) Editorial Notes PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, § 1, 33 Stat. 724; May 4, 1906, ch. 2081, § 1, 34 Stat. 168; Feb. 18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 1, 52 Stat. 638. AMENDMENTS 1999—Pub. L. 106–43 substituted ‘‘trademarks’’ for ‘‘trade-marks’’ wherever appearing. 1988—Pub. L. 100–667 substituted ‘‘origin,’’ for ‘‘origin used in commerce,’’ and ‘‘except in the case of certifi- cation marks when’’ for ‘‘except when’’ and struck out after first sentence ‘‘The Commissioner may establish a separate register for such collective marks and cer- tification marks.’’ Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. Page 1283 TITLE 15—COMMERCE AND TRADE § 1057 § 1055. Use by related companies affecting valid- ity and registration 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 reg- istration, and such use shall not affect the valid- ity of such mark or of its registration, provided such mark is not used in such manner as to de- ceive the public. If first use of a mark by a per- son is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the reg- istrant or applicant, as the case may be. (July 5, 1946, ch. 540, title I, § 5, 60 Stat. 429; Pub. L. 100–667, title I, § 107, Nov. 16, 1988, 102 Stat. 3938.) Editorial Notes AMENDMENTS 1988—Pub. L. 100–667 inserted at end ‘‘If first use of a mark by a person is controlled by the registrant or ap- plicant 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 appli- cant, as the case may be.’’ Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. § 1056. Disclaimer of unregistrable matter (a) Compulsory and voluntary disclaimers The Director may require the applicant to dis- claim an unregistrable component of a mark otherwise registrable. An applicant may volun- tarily disclaim a component of a mark sought to be registered. (b) Prejudice of rights No disclaimer, including those made under subsection (e) of section 1057 of this title, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services. (July 5, 1946, ch. 540, title I, § 6, 60 Stat. 429; Pub. L. 87–772, § 3, Oct. 9, 1962, 76 Stat. 769; Pub. L. 100–667, title I, § 108, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583.) Editorial Notes AMENDMENTS 1999—Subsec. (a). Pub. L. 106–113 substituted ‘‘Direc- tor’’ for ‘‘Commissioner’’. 1988—Subsec. (b). Pub. L. 100–667 substituted ‘‘sub- section (e)’’ for ‘‘paragraph (d)’’. 1962—Pub. L. 87–772, among other changes, provided that an applicant may voluntarily disclaim a compo- nent of a mark sought to be registered. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1057. Certificates of registration (a) Issuance and form Certificates of registration of marks reg- istered 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 United States Patent and Trade- mark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the par- ticular goods or services for which it is reg- istered, the number and date of the registration, the term thereof, the date on which the applica- tion 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) Certificate as prima facie evidence A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the reg- istered mark in commerce on or in connection with the goods or services specified in the cer- tificate, subject to any conditions or limitations stated in the certificate. (c) Application to register mark considered con- structive use Contingent on the registration of a mark on the principal register provided by this chapter,