15 U.S.C. § 1064 — Cancellation of registration

Page 1292 TITLE 15—COMMERCE AND TRADE § 1064 Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENTS 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. Amendment by Pub. L. 106–43 effective Aug. 5, 1999, and applicable only to any application for registration filed on or after Jan. 16, 1996, see section 2(e) of Pub. L. 106–43, set out as 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. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as a note under section 294 of Title 35, Patents. EFFECTIVE DATE OF 1975 AMENDMENTS Pub. L. 93–600, § 4, Jan. 2, 1975, 88 Stat. 1955, provided that: ‘‘This Act [amending this section and sections 1071 and 1117 of this title] shall become effective upon enactment [Jan. 2, 1975], but shall not affect any suit, proceeding, or appeal then pending.’’ 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. § 1064. Cancellation of registration A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon pay- ment 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 1125(c) of this title, by the reg- istration of a mark on the principal register es- tablished by this chapter, 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 chapter. (2) Within five years from the date of publi- cation under section 1062(c) of this title 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 be- comes the generic name for the goods or serv- ices, or a portion thereof, for which it is reg- istered, or is functional, or has been aban- doned, or its registration was obtained fraudu- lently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar pro- hibitory provisions of such prior Acts for a registration under such Acts, or if the reg- istered mark is being used by, or with the per- mission of, the registrant so as to misrepre- sent 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 reg- istered 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 serv- ices 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 sec- tion 1062 of this title. (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 certifi- cation 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 cer- tifies. (6) At any time after the 3-year period fol- lowing the date of registration, if the reg- istered 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 chapter, 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 cer- tification mark shall not be grounds for can- cellation under paragraph (5), so long as the reg- istrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied. Nothing in paragraph (6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title shall not be cancelled pursuant to paragraph (6) if the registrant dem- onstrates that any nonuse is due to special cir- cumstances that excuse such nonuse. (July 5, 1946, ch. 540, title I, § 14, 60 Stat. 433; Pub. L. 87–772, § 9, Oct. 9, 1962, 76 Stat. 771; Pub. Page 1293 TITLE 15—COMMERCE AND TRADE § 1064 L. 97–247, § 9(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98–620, title I, § 102, Nov. 8, 1984, 98 Stat. 3335; Pub. L. 100–667, title I, § 115, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105–330, title II, § 201(a)(4), title III, § 301, Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106–43, § 2(c), Aug. 5, 1999, 113 Stat. 218; Pub. L. 109–312, § 3(c), Oct. 6, 2006, 120 Stat. 1732; Pub. L. 116–260, div. Q, title II, § 225(b), Dec. 27, 2020, 134 Stat. 2204.) Editorial Notes REFERENCES IN TEXT Acts March 3, 1881 and February 20, 1905, referred to in opening par. and pars. (2) and (4), 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. PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 13, 33 Stat. 728. AMENDMENTS 2020—Pub. L. 116–260, § 225(b)(3), in concluding proviso, inserted ‘‘Nothing in paragraph (6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title 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 ap- plied.’’ Par. (6). Pub. L. 116–260, § 225(b)(1), (2), added par. (6). 2006—Pub. L. 109–312 substituted ‘‘, including as a re- sult of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title,’’ for ‘‘, including as a result of dilution under section 1125(c) of this title,’’ in introductory provisions. 1999—Pub. L. 106–43 inserted ‘‘, including as a result of dilution under section 1125(c) of this title,’’ after ‘‘damaged’’ in introductory provisions. 1998—Pub. L. 105–330, § 301, inserted at end ‘‘Nothing in paragraph (5) shall be deemed to prohibit the reg- istrant 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 certifi- cation 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.’’ Par. (3). Pub. L. 105–330, § 201(a)(4), inserted ‘‘or is functional,’’ before ‘‘or has been abandoned’’. 1988—Pub. L. 100–667, § 115(1), (7), in introductory pro- visions, inserted ‘‘as follows’’ and substituted ‘‘1905:’’ for ‘‘1905—’’, and in concluding proviso substituted ‘‘paragraphs (3) and (5)’’ for ‘‘subsections (c) and (e)’’. Par. (1). Pub. L. 100–667, § 115(2), substituted ‘‘(1) With- in’’ for ‘‘(a) within’’ and ‘‘chapter.’’ for ‘‘chapter; or’’. Par. (2). Pub. L. 100–667, § 115(3), substituted ‘‘(2) With- in’’ for ‘‘(b) within’’, and ‘‘1905.’’ for ‘‘1905; or’’. Par. (3). Pub. L. 100–667, § 115(4), substituted ‘‘(3)’’ for ‘‘(c)’’ and amended text generally. Prior to amendment, text read as follows: ‘‘at any time if the registered mark becomes the common descriptive name of an arti- cle or substance, or has been abandoned, or its registra- tion was obtained fraudulently or contrary to the pro- visions of section 1054 of this title or of subsections (a), (b), or (c) of section 1052 of this title for a registration hereunder, or contrary to similar prohibitory provi- sions of said prior Acts for a registration thereunder, or if the registered mark is being used by, or with the per- mission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used. A registered mark shall not be deemed to be the common descriptive 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 rel- evant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used; or’’. Par. (4). Pub. L. 100–667, § 115(5), substituted ‘‘(4) At’’ for ‘‘(d) at’’, and ‘‘title.’’ for ‘‘title; or’’. Par. (5). Pub. L. 100–667, § 115(6), substituted ‘‘(5) At’’ for ‘‘(e) at’’ and redesignated former pars. (1) to (4) as subpars. (A) to (D), respectively. 1984—Par. (c). Pub. L. 98–620 inserted provision that a registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service, and that the primary signifi- cance 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 common descriptive name of goods or services in connection with which it has been used. 1982—Pub. L. 97–247 struck out ‘‘verified’’ before ‘‘pe- tition to cancel’’ in provision preceding par. (a). 1962—Pub. L. 87–772 inserted provisions which require a verified petition to cancel a registration, redesig- nated par. (d) as (e), added par. (d) which is composed of provisions formerly part of par. (c), and in said par. (c), substituted ‘‘registrant’’ for ‘‘assignee’’, and struck out ‘‘on which the patent has expired’’ before ‘‘or has been abandoned’’, and ‘‘has been assigned and’’ before ‘‘is being used by’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2020 AMENDMENT Pub. L. 116–260, div. Q, title II, § 225(g), Dec. 27, 2020, 134 Stat. 2208, provided that: ‘‘The amendments made by this section [enacting sections 1066a and 1066b of this title and amending this section and sections 1065, 1070, 1071, and 1094 of this title] shall take effect upon the ex- piration of the 1-year period beginning on the date of enactment of this Act [Dec. 27, 2020], and shall apply to any mark registered before, on, or after that effective date.’’ EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–43 effective Aug. 5, 1999, and applicable only to any application for registration filed on or after Jan. 16, 1996, see section 2(e) of Pub. L. 106–43, set out as a note under section 1052 of this title. EFFECTIVE DATE OF 1998 AMENDMENT Amendment by section 201(a)(4) of Pub. L. 105–330 ef- fective Oct. 30, 1998, and applicable only to any civil ac- tion filed or proceeding before the United States Pat- ent and Trademark 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 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 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as a note under section 294 of Title 35, Patents. FINALITY OF JUDGMENTS PRIOR TO NOVEMBER 8, 1984 Pub. L. 98–620, title I, § 104, Nov. 8, 1984, 98 Stat. 3336, provided that: ‘‘Nothing in this title [amending this section and section 1127 of this title and enacting provi- sions set out as a note under section 1051 of this title] shall be construed to provide a basis for reopening of Page 1294 TITLE 15—COMMERCE AND TRADE § 1065 any final judgment entered prior to the date of enact- ment of this title [Nov. 8, 1984].’’ 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. RESTRICTION ON USE OF FUNDS TO CANCEL REGISTRATION OF TRADEMARKS For provisions restricting the use of funds authorized to be appropriated to carry out section 41 et seq. of this title for fiscal year 1980, 1981, or 1982, for the purpose of taking any action under this section with respect to the cancellation of the registration of any mark on the ground that such mark has become the common de- scriptive name of an article or substance, see section 18 of Pub. L. 96–252, set out as a note under section 57c of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of Federal Trade Commis- sion, with certain exceptions, to Chairman of such Commission, see Reorg. Plan No. 8 of 1950, § 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat. 1264, set out under section 41 of this title. § 1065. Incontestability of right to use mark under certain conditions Except on a ground for which application to cancel may be filed at any time under para- graphs (3), (5), and (6) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal reg- ister 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 chapter 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 com- merce, 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 own- er’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 fi- nally 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 other mat- ters specified in paragraphs (1) and (2) hereof; 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 ref- erence to a mark registered under this chapter 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 provi- sions of subsection (c) of section 1062 of this title. The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof. (July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433; Pub. L. 87–772, § 10, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–247, § 10, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 116, Nov. 16, 1988, 102 Stat. 3941; 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. 111–146, § 3(b), Mar. 17, 2010, 124 Stat. 67; Pub. L. 116–260, div. Q, title II, § 225(e)(1), Dec. 27, 2020, 134 Stat. 2207.) 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. AMENDMENTS 2020—Pub. L. 116–260 substituted ‘‘paragraphs (3), (5), and (6)’’ for ‘‘paragraphs (3) and (5)’’ in introductory provisions. 2010—Pub. L. 111–146, § 3(b)(1), substituted ‘‘right of the owner’’ for ‘‘right of the registrant’’ in introduc- tory provisions. Par. (1). Pub. L. 111–146, § 3(b)(2), amended par. (1) gen- erally. Prior to amendment, par. (1) read as follows: ‘‘there has been no final decision adverse to reg- istrant’s claim of ownership of such mark for such goods or services, or to registrant’s right to register the same or to keep the same on the register; and’’. Par. (2). Pub. L. 111–146, § 3(b)(3), inserted ‘‘United States’’ before ‘‘Patent and Trademark Office’’. 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’ in par. (3) and in two places in con- cluding provisions. 1988—Pub. L. 100–667, in introductory provisions, sub- stituted ‘‘paragraphs (3) and (5)’’ for ‘‘subsections (c) and (e)’’, in par. (3) ‘‘paragraphs’’ for ‘‘subsections’’, and in par. (4) ‘‘the generic name for the goods or serv- ices or a portion thereof, for which it is registered’’ for ‘‘the common descriptive name of any article or sub- stance, patented or otherwise’’. 1982—Pub. L. 97–247 substituted ‘‘registration’’ for ‘‘the publication’’ in provision preceding par. (1). 1975—Par. (2). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. 1962—Pub. L. 87–772 substituted ‘‘(c) and (e) of section 1064’’ for ‘‘(c) and (d) of section 1064’’ in provision pre- ceding par. (1), and struck out ‘‘or trade name’’ after ‘‘in a mark’’ in par. (4). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2020 AMENDMENT Amendment by Pub. L. 116–260 effective upon the ex- piration of the 1-year period beginning on Dec. 27, 2020, and applicable to any mark registered before, on, or after that effective date, see section 225(g) of div. Q of Pub. L. 116–260, set out as a note under section 1064 of this title.