15 U.S.C. § 1126 — International conventions

Page 1326 TITLE 15—COMMERCE AND TRADE § 1126 Commission, shall conduct a study and report to Con- gress with recommendations on guidelines and proce- dures for resolving disputes involving the registration or use by a person of a domain name that includes the personal name of another person, in whole or in part, or a name confusingly similar thereto, including con- sideration of and recommendations for— ‘‘(1) protecting personal names from registration by another person as a second level domain name for purposes of selling or otherwise transferring such do- main name to such other person or any third party for financial gain; ‘‘(2) protecting individuals from bad faith uses of their personal names as second level domain names by others with malicious intent to harm the reputa- tion of the individual or the goodwill associated with that individual’s name; ‘‘(3) protecting consumers from the registration and use of domain names that include personal names in the second level domain in manners which are in- tended or are likely to confuse or deceive the public as to the affiliation, connection, or association of the domain name registrant, or a site accessible under the domain name, with such other person, or as to the origin, sponsorship, or approval of the goods, services, or commercial activities of the domain name registrant; ‘‘(4) protecting the public from registration of do- main names that include the personal names of gov- ernment officials, official candidates, and potential official candidates for Federal, State, or local polit- ical office in the United States, and the use of such domain names in a manner that disrupts the elec- toral process or the public’s ability to access accu- rate and reliable information regarding such individ- uals; ‘‘(5) existing remedies, whether under State law or otherwise, and the extent to which such remedies are sufficient to address the considerations described in paragraphs (1) through (4); and ‘‘(6) the guidelines, procedures, and policies of the Internet Corporation for Assigned Names and Num- bers and the extent to which they address the consid- erations described in paragraphs (1) through (4). ‘‘(b) GUIDELINES AND PROCEDURES.—The Secretary of Commerce shall, under its Memorandum of Under- standing with the Internet Corporation for Assigned Names and Numbers, collaborate to develop guidelines and procedures for resolving disputes involving the reg- istration or use by a person of a domain name that in- cludes the personal name of another person, in whole or in part, or a name confusingly similar thereto.’’ § 1126. International conventions (a) Register of marks communicated by inter- national bureaus The Director shall keep a register of all marks communicated to him by the international bu- reaus 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 conven- tions and the fees required in this chapter 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 registra- tion of the mark, including the dates 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) Benefits of section to persons whose country of origin is party to convention or treaty Any person whose country of origin is a party to any convention or treaty relating to trade- marks, trade or commercial names, or the re- pression of unfair competition, to which the United States is also a party, or extends recip- rocal rights to nationals of the United States by law, shall be entitled to the benefits of this sec- tion under the conditions expressed herein to the extent necessary to give effect to any provi- sion of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter. (c) Prior registration in country of origin; coun- try of origin defined 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 na- tional. (d) Right of priority An application for registration of a mark under section 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section, filed by a person described in subsection (b) of this sec- tion who has previously duly filed an applica- tion 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 ap- plication 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 for- eign country; (2) the application conforms as nearly as practicable to the requirements of this chap- ter, including a statement that the applicant has a bona fide intention to use the mark in commerce; (3) the rights acquired by third parties be- fore the date of the filing of the first applica- tion in the foreign country shall in no way be affected by a registration obtained on an ap- plication 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 condi- tions and requirements, the right provided in Page 1327 TITLE 15—COMMERCE AND TRADE § 1126 this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign appli- cation: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise dis- posed of, without having been laid open to pub- lic inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of pri- ority. (e) Registration on principal or supplemental register; copy of foreign registration A mark duly registered in the country of ori- gin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter pro- vided. Such applicant shall submit, within such time period as may be prescribed by the Direc- tor, a true copy, a photocopy, a certification, or a certified copy of the registration in the coun- try 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) Domestic registration independent of foreign registration The registration of a mark under the provi- sions of subsections (c), (d), and (e) of this sec- tion by a person described in subsection (b) shall be independent of the registration in the coun- try of origin and the duration, validity, or trans- fer in the United States of such registration shall be governed by the provisions of this chap- ter. (g) Trade or commercial names of foreign nation- als protected without registration 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) Protection of foreign nationals against unfair competition Any person designated in subsection (b) of this section as entitled to the benefits and subject to the provisions of this chapter shall be entitled to effective protection against unfair competi- tion, and the remedies provided in this chapter 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 United States entitled to benefits of section 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. (July 5, 1946, ch. 540, title IX, § 44, 60 Stat. 441; Pub. L. 87–333, § 2, Oct. 3, 1961, 75 Stat. 748; Pub. L. 87–772, § 20, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100–667, title I, § 133, Nov. 16, 1988, 102 Stat. 3946; Pub. L. 105–330, title I, § 108, Oct. 30, 1998, 112 Stat. 3068; 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)(12), Nov. 2, 2002, 116 Stat. 1908.) Editorial Notes REFERENCES IN TEXT Section 1(a) of the Act of March 19, 1920, referred to in subsec. (a), is section 1(a) of act Mar. 19, 1920, ch. 104, 41 Stat. 533, which was classified to section 121(a) of this title, and repealed by act July 5, 1946, ch. 540, § 46(a), 60 Stat. 444, insofar as inconsistent with this chapter. PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, §§ 1, 2, 4, 33 Stat. 724, 725; May 4, 1906, ch. 2081, §§ 1, 3, 34 Stat. 168, 169; Feb. 18, 1909, ch. 144, 35 Stat. 628; Mar. 19, 1920, ch. 104, §§ 1, 6, 41 Stat. 533, 535; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 20, 1936, ch. 617, 49 Stat. 1539; June 10, 1938, ch. 332, §§ 1, 2, 3, 52 Stat. 638, 639. AMENDMENTS 2002—Subsec. (e). Pub. L. 107–273 substituted ‘‘a true copy, a photocopy, a certification,’’ for ‘‘a certifi- cation’’. 1999—Subsec. (a). Pub. L. 106–113 substituted ‘‘Direc- tor’’ for ‘‘Commissioner’’. Pub. L. 106–43 substituted ‘‘trademarks’’ for ‘‘trade- marks’’. Subsec. (e). Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’. 1998—Subsec. (d). Pub. L. 105–330, § 108(1)(A), in intro- ductory provisions, substituted ‘‘or 1091 of this title or under subsection (e) of this section’’ for ‘‘1091 of this title, or subsection (e) of this section’’. Subsec. (d)(3), (4). Pub. L. 105–330, § 108(1)(B), made technical amendment to reference in original act which appears in text as reference to this subsection. Subsec. (e). Pub. L. 105–330, § 108(2), substituted ‘‘Such applicant shall submit, within such time period as may be prescribed by the Commissioner, a certification or a certified copy of the registration in the country of ori- gin of the applicant’’ for ‘‘The application therefor shall be accompanied by a certification or a certified copy of the registration in the country of origin of the applicant’’. 1988—Subsec. (a). Pub. L. 100–667, § 133(2), substituted ‘‘required in this chapter’’ for ‘‘herein prescribed’’. Subsec. (c). Pub. L. 100–667, § 133(1), made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text. Subsec. (d). Pub. L. 100–667, § 133(1), (3), (4), (5), in in- troductory provisions, made technical amendment in two places to references in the original act to sub- section (b) of this section, resulting in no change in text, and substituted ‘‘section 1051, 1053, 1054, or 1091 of this title, or subsection (e) of this section’’ for ‘‘sec- tions 1051, 1052, 1053, 1054, or 1091 of this title’’, in par. (2), substituted ‘‘including a statement that the appli- cant has a bona fide intention to use the mark in com- merce’’ for ‘‘but use in commerce need not be alleged’’, and in par. (3), substituted ‘‘foreign’’ for ‘‘foreing’’. Subsec. (e). Pub. L. 100–667, § 133(6), inserted at end ‘‘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.’’ Subsec. (f). Pub. L. 100–667, § 133(1), (7), made technical amendment to references in the original act to sub- sections (c), (d), and (e) of this section and to sub- section (b) of this section, resulting in no change in text. Subsecs. (g) to (i). Pub. L. 100–667, § 133(1), (8), made technical amendment to references in the original act to subsection (b) of this section, resulting in no change in text. 1962—Subsec. (b). Pub. L. 87–772 inserted ‘‘or extends reciprocal rights to nationals of the United States by law,’’ and substituted provisions requiring the person’s country of origin to be a party to any convention or treaty, for provisions which required such persons to be nationals of, domiciled in, or have a bona fide and ef- Page 1328 TITLE 15—COMMERCE AND TRADE § 1127 fective business or commercial establishment in a for- eign country which was a party to the International Convention for the Protection of Industrial Property, or the General Inter-American Convention for Trade Mark and Commercial Protection, or any other conven- tion or treaty relating to trademarks, trade, or com- mercial names. Subsec. (e). Pub. L. 87–772 inserted ‘‘certification or a’’ after ‘‘accompanied by a’’ and struck out ‘‘applica- tion for or’’ before ‘‘registration’’. 1961—Subsec. (d). Pub. L. 87–333 inserted par. at end authorizing the right provided by this section to be based upon a subsequent application in the same for- eign country, instead of the first application, provided that any foreign application filed prior to such subse- quent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority. 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 1961 AMENDMENT Pub. L. 87–333, § 3, Oct. 3, 1961, 75 Stat. 748, provided that: ‘‘This Act [amending this section and section 119 of Title 35, Patents] shall take effect on the date when the Convention of Paris for the Protection of Industrial Property of March 20, 1883, as revised at Lisbon, Octo- ber 31, 1958, comes into force with respect to the United States and shall apply only to applications thereafter filed in the United States by persons entitled to the benefit of said convention, as revised at the time of such filing.’’ 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. § 1127. Construction and definitions; intent of chapter In the construction of this chapter, unless the contrary is plainly apparent from the context— The United States includes and embraces all territory which is under its jurisdiction and con- trol. The word ‘‘commerce’’ means all commerce which may lawfully be regulated by Congress. The term ‘‘principal register’’ refers to the register provided for by sections 1051 to 1072 of this title, and the term ‘‘supplemental register’’ refers to the register provided for by sections 1091 to 1096 of this title. The term ‘‘person’’ and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered lia- ble under the provisions of this chapter includes a juristic person as well as a natural person. The term ‘‘juristic person’’ includes a firm, corpora- tion, 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 sub- ject to the provisions of this chapter in the same manner and to the same extent as any non- governmental entity. The term ‘‘person’’ also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. The terms ‘‘applicant’’ and ‘‘registrant’’ em- brace the legal representatives, predecessors, successors and assigns of such applicant or reg- istrant. The term ‘‘Director’’ means the Under Sec- retary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The term ‘‘related company’’ means any per- son 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 con- nection with which the mark is used. The terms ‘‘trade name’’ and ‘‘commercial name’’ mean any name used by a person to iden- tify 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 chap- ter, to identify and distinguish his or her goods, in- cluding a unique product, from those manufac- tured or sold by others and to indicate the source of the goods, even if that source is un- known. 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