15 U.S.C. § 1091 — Supplemental register

Page 1304 TITLE 15—COMMERCE AND TRADE § 1072 section 171 of Title 28, Judiciary and Judicial Proce- dure. EFFECTIVE DATE OF 1975 AMENDMENTS Amendment by Pub. L. 93–600 effective Jan. 2, 1975, but not to affect any suit, proceeding, or appeal then pending, see section 4 of Pub. L. 93–600, set out as a note under section 1063 of this title. 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. EFFECTIVE DATE OF 1958 AMENDMENT For effective date and applicability of amendment by Pub. L. 85–609, see section 3 of Pub. L. 85–609, set out as a note under section 1067 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. REORGANIZATION PLAN NO. 5 OF 1950 Amendment by Pub. L. 85–609 as subject to Reorga- nization Plan No. 5 of 1950, see note set out under sec- tion 1067 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. § 1072. Registration as constructive notice of claim of ownership Registration of a mark on the principal reg- ister provided by this chapter 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. (July 5, 1946, ch. 540, title I, § 22, 60 Stat. 435.) Editorial Notes REFERENCES IN TEXT Acts March 3, 1881, and February 20, 1905, referred to in text, are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444.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. Statutory Notes and Related Subsidiaries 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. SUBCHAPTER II—THE SUPPLEMENTAL REGISTER § 1091. Supplemental register (a) Marks registerable In addition to the principal register, the Di- rector shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled ‘‘An Act to give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes’’, to be called the supplemental register. All marks capable of dis- tinguishing applicant’s goods or services and not registrable on the principal register provided in this chapter, except those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and com- pliance with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are applicable. Nothing in this section shall pre- vent the registration on the supplemental reg- ister of a mark, capable of distinguishing the ap- plicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under sec- tion 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993. (b) Application and proceedings for registration Upon the filing of an application for registra- tion on the supplemental register and payment of the prescribed fee the Director shall refer the application to the examiner in charge of the reg- istration of marks, who shall cause an examina- tion 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 registra- tion the provisions of subsection (b) of section 1062 of this title shall apply. (c) Nature of mark For the purposes of registration on the supple- mental register, a mark may consist of any trademark, symbol, label, package, configura- tion of goods, name, word, slogan, phrase, sur- name, 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 ap- plicant’s goods or services. (July 5, 1946, ch. 540, title II, § 23, 60 Stat. 435; Pub. L. 87–772, § 13, Oct. 9, 1962, 76 Stat. 773; Pub. L. 100–667, title I, § 121, Nov. 16, 1988, 102 Stat. 3942; Pub. L. 103–182, title III, § 333(b), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 105–330, title II, § 201(a)(5), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106–43, § 6(b), Aug. 5, 1999, 113 Stat. 220; 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. 107–273, div. C, title III, § 13207(b)(6), Nov. 2, 2002, 116 Stat. 1908.) Editorial Notes REFERENCES IN TEXT Paragraph (b) of section 1 of the Act of March 19, 1920, referred to in subsec. (a), is paragraph (b) of section 1 of act Mar. 19, 1920, ch. 104, 41 Stat. 533, which was clas- sified to section 121(b) of this title, and repealed by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444, insofar as incon- sistent. Page 1305 TITLE 15—COMMERCE AND TRADE § 1092 PRIOR PROVISIONS Acts Mar. 19, 1920, ch. 104, § 1, 41 Stat. 533; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 2, 52 Stat. 638. AMENDMENTS 2002—Subsec. (c). Pub. L. 107–273 struck out second comma after ‘‘numeral’’. 1999—Subsec. (a). Pub. L. 106–113 substituted ‘‘Direc- tor’’ for ‘‘Commissioner’’. Pub. L. 106–43 substituted ‘‘trademarks’’ for ‘‘trade- marks’’. Subsec. (b). Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’. 1998—Subsec. (c). Pub. L. 105–330 substituted ‘‘, device, any matter that as a whole is not func- tional,’’ for ‘‘or device’’. 1993—Subsec. (a). Pub. L. 103–182 substituted ‘‘(d), and (e)(3)’’ for ‘‘and (d)’’ and inserted at end ‘‘Nothing in this section shall prevent the registration on the sup- plemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is de- clared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in com- merce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.’’ 1988—Pub. L. 100–667, § 121(6), struck out undesignated concluding par. which read as follows: ‘‘Upon a proper showing by the applicant that he requires domestic reg- istration as a basis for foreign protection of his mark, the Commissioner may waive the requirement of a full year’s use and may grant registration forthwith.’’ Subsec. (a). Pub. L. 100–667, § 121(1), (4), designated first par. as subsec. (a), made technical amendment to reference in the original act to subsections (a), (b), (c), and (d) of section 1052 of this title resulting in no change in text, substituted ‘‘are in lawful use in com- merce by the owner thereof, on’’ for ‘‘have been in law- ful use in commerce by the proprietor thereof, upon’’, struck out ‘‘for the year preceding the filing of the ap- plication’’ after ‘‘any goods and services’’, and inserted ‘‘subsections (a) and (e) of’’ before ‘‘section 1051’’. Subsec. (b). Pub. L. 100–667, § 121(2), (5), designated second par. as subsec. (b) and substituted ‘‘prescribed fee’’ for ‘‘fee herein provided’’. Subsec. (c). Pub. L. 100–667, § 121(3), designated third par. as subsec. (c). 1962—Pub. L. 87–772 struck out ‘‘has begun the lawful use of his mark in foreign commerce and that he’’ be- fore ‘‘requires domestic registration’’ in last par. 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 Oct. 30, 1998, and applicable only to any civil action filed or pro- ceeding before the United States Patent and Trade- mark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub. L. 105–330, set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1993 AMENDMENT Amendment by Pub. L. 103–182 applicable only to trademark applications filed on or after Dec. 8, 1993, see section 335(c) of Pub. L. 103–182, formerly set out in a note under section 1052 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. 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. § 1092. Publication; not subject to opposition; cancellation Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register— (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause di- lution by blurring or dilution by tarnishment under section 1125(c) of this title; or (2) on grounds other than dilution by blur- ring 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 Direc- tor to cancel such registration. The Director shall refer such application to the Trademark Trial and Appeal Board which shall give notice thereof to the registrant. If it is found after a hearing before the Board that the registrant is not entitled to registration, or that the mark has been abandoned, the registration shall be canceled by the Director, unless the Director re- considers the decision of the Board, and modifies or sets aside, such decision. However, no final judgment shall be entered in favor of an appli- cant under section 1051(b) of this title before the mark is registered, if such applicant cannot pre- vail without establishing constructive use pur- suant to section 1057(c) of this title. (July 5, 1946, ch. 540, title II, § 24, 60 Stat. 436; Pub. L. 85–609, § 1(d), Aug. 8, 1958, 72 Stat. 540; Pub. L. 87–772, § 14, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 122, Nov. 16, 1988, 102 Stat. 3943; Pub. L. 106–43, § 2(d), 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(d), Oct. 6, 2006, 120 Stat. 1732; Pub. L. 116–260, div. Q, title II, § 228(a)(3), Dec. 27, 2020, 134 Stat. 2210.) Editorial Notes PRIOR PROVISIONS Act Mar. 19, 1920, ch. 104, § 2, 41 Stat. 534. AMENDMENTS 2020—Pub. L. 116–260 inserted ‘‘, unless the Director reconsiders the decision of the Board, and modifies or