15 U.S.C. § 1062 — Publication

Page 1290 TITLE 15—COMMERCE AND TRADE § 1062 AMENDMENTS 1982—Pub. L. 97–247 substituted ‘‘is’’ for ‘‘shall be’’ after ‘‘whose authority’’, and inserted ‘‘, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of Title 35, Patents. 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. § 1062. Publication (a) Examination and publication Upon the filing of an application for registra- tion and payment of the prescribed fee, the Di- rector shall refer the application to the exam- iner 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 appli- cant is entitled to registration, or would be enti- tled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Pat- ent and Trademark Office: Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 1066 of this title the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings. (b) Refusal of registration; amendment of appli- cation; abandonment; extensions of time to respond (1) If the applicant is found not entitled to reg- istration, the examiner shall notify the appli- cant thereof and of the reasons therefor. The ap- plicant may reply or amend the application, which shall then be reexamined. This procedure may be repeated until the examiner finally re- fuses 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 with- in the relevant time period, including any exten- sion 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 re- vive. (3) The Director shall provide, by regulation, for extensions of time to respond to the exam- iner 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 Di- rector may set by regulation the time for indi- vidual periods of extension, and prescribe a fee, by regulation, for any extension request. Any re- quest for extension shall be filed on or before the date on which a reply or amendment is due under paragraph (1). (c) Republication of marks registered under prior acts A registrant of a mark registered under the provisions of the Act of March 3, 1881, or the Act of February 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the payment of the prescribed fee file with the Director an affidavit setting forth those goods stated in the registration on which said mark is in use in commerce and that the registrant claims the benefits of this chapter for said mark. The Director shall publish notice thereof with a reproduction of said mark in the Official Gazette, and notify the registrant of such publi- cation and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of this title. Marks published under this subsection shall not be subject to the provisions of section 1063 of this title. (July 5, 1946, ch. 540, title I, § 12, 60 Stat. 432; Pub. L. 87–772, § 7, Oct. 9, 1962, 76 Stat. 770; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 113, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105–330, title I, § 104, Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 116–260, div. Q, title II, § 224, Dec. 27, 2020, 134 Stat. 2201.) Editorial Notes REFERENCES IN TEXT Acts March 3, 1881 and February 20, 1905, referred to in subsec. (c), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were re- pealed insofar as inconsistent with this chapter by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title. PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, § 6, 33 Stat. 726; Mar. 2, 1907, ch. 2573, § 2, 34 Stat. 1252. AMENDMENTS 2020—Subsec. (b). Pub. L. 116–260 amended subsec. (b) generally. Prior to amendment, text read as follows: ‘‘If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reasons therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registra- tion of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been aban- doned, unless it can be shown to the satisfaction of the Director that the delay in responding was uninten- tional, whereupon such time may be extended.’’ 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1998—Subsec. (b). Pub. L. 105–330 substituted ‘‘unin- tentional’’ for ‘‘unavoidable’’ in last sentence. 1988—Subsec. (a). Pub. L. 100–667 substituted ‘‘pre- scribed fee’’ for ‘‘fee herein provided’’, and ‘‘entitled to Page 1291 TITLE 15—COMMERCE AND TRADE § 1063 registration, or would be entitled to registration upon the acceptance of the statement of use required by sec- tion 1051(d) of this title, the’’ for ‘‘entitled to registra- tion, the’’. 1975—Subsec. (a). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. 1962—Subsec. (a). Pub. L. 87–772 inserted proviso per- mitting publication of the mark in the case of an appli- cant claiming concurrent use, or an application to be placed in an interference, if such mark is otherwise registrable, subject to the determination of the rights of the parties. Subsec. (c). Pub. L. 87–772 inserted ‘‘Marks published under’’ before ‘‘this subsection shall not be subject’’. 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 1998 AMENDMENT Amendment by Pub. L. 105–330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of Pub. L. 105–330, set out as a note under section 1051 of this title. For provisions relating to applicability of amend- ment by Pub. L. 105–330 to applications for registration of trademarks, see section 109(b) of Pub. L. 105–330, set out as a note under section 1051 of this title. 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. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 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. § 1063. Opposition to registration (a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilu- tion by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposi- tion 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 expira- tion 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 op- posed— (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent and Trademark Office, a certifi- cate 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 reg- istration under section 1051(b) of this title. (July 5, 1946, ch. 540, title I, § 13, 60 Stat. 433; Pub. L. 87–772, § 8, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93–600, § 1, Jan. 2, 1975, 88 Stat. 1955; Pub. L. 97–247, § 9(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 114, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 106–43, § 2(b), Aug. 5, 1999, 113 Stat. 218; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 109–312, § 3(b), Oct. 6, 2006, 120 Stat. 1732.) Editorial Notes PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, §§ 6, 7, 33 Stat. 726; Mar. 2, 1907, ch. 2573, § 2, 34 Stat. 1252. AMENDMENTS 2006—Subsec. (a). Pub. L. 109–312 substituted ‘‘the reg- istration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment’’ for ‘‘as a result of dilution’’. 1999—Subsec. (a). Pub. L. 106–113 substituted ‘‘Direc- tor’’ for ‘‘Commissioner’’ wherever appearing. Pub. L. 106–43 inserted ‘‘, including as a result of di- lution under section 1125(c) of this title,’’ after ‘‘prin- cipal register’’ in first sentence. 1988—Pub. L. 100–667 designated existing provisions as subsec. (a), substituted ‘‘prescribed fee’’ for ‘‘required fee’’, and added subsec. (b). 1982—Pub. L. 97–247 substituted ‘‘an’’ for ‘‘a verified’’ after ‘‘required fee, file’’, inserted ‘‘when requested prior to the expiration of an extension’’ after ‘‘Commis- sioner for good cause’’ and struck out provision that an unverified opposition could be filed by a duly author- ized attorney, but such opposition would be null and void unless verified by the opposer within a reasonable time after such filing is fixed by the Commissioner. 1975—Pub. L. 93–600 substituted provisions relating to extensions of time for filing opposition upon written request prior to the expiration of the thirty-day period for an additional thirty days, and further extensions for good cause, for provisions relating to extensions of the time for filing opposition for good cause shown. Pub. L. 93–596 substituted ‘‘Patent and Trademark Of- fice’’ for ‘‘Patent Office’’. 1962—Pub. L. 87–772 inserted ‘‘An opposition may be amended under such conditions as may be prescribed by the Commissioner’’, and struck out ‘‘notice of’’ after ‘‘file a verified’’ and ‘‘time for filing’’.