15 U.S.C. § 1067 — Interference, opposition, and proceedings

Page 1299 TITLE 15—COMMERCE AND TRADE § 1067 1 So in original. Probably should be preceded by ‘‘the’’. 2 So in original. Probably should be followed by a comma. section 225(f) of Pub. L. 116–260, set out as a note under section 1066a of this title. § 1067. Interference, opposition, and proceedings for concurrent use registration or for can- cellation; notice; Trademark Trial and Ap- peal Board (a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trade- mark Trial and Appeal Board to determine and decide the respective rights of registration. (b) The Trademark Trial and Appeal Board shall include the Director, Deputy 1 Director of the United States Patent and Trademark Office 2 the Commissioner for Patents, the Commis- sioner for Trademarks, and administrative trademark judges who are appointed by the Sec- retary of Commerce, in consultation with the Director. (c) AUTHORITY OF THE SECRETARY.—The Sec- retary of Commerce may, in his or her discre- tion, deem the appointment of an administra- tive trademark judge who, before August 12, 2008, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administra- tive trademark judge. (d) DEFENSE TO CHALLENGE OF APPOINTMENT.— It shall be a defense to a challenge to the ap- pointment of an administrative trademark judge on the basis of the judge’s having been origi- nally appointed by the Director that the admin- istrative trademark judge so appointed was act- ing as a de facto officer. (July 5, 1946, ch. 540, title I, § 17, 60 Stat. 434; Pub. L. 85–609, § 1(a), Aug. 8, 1958, 72 Stat. 540; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96–455, § 1, Oct. 15, 1980, 94 Stat. 2024; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4716], Nov. 29, 1999, 113 Stat. 1536, 1501A–580; Pub. L. 107–273, div. C, title III, § 13203(a)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 110–313, § 1(b), Aug. 12, 2008, 122 Stat. 3014.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726. AMENDMENTS 2008—Subsec. (b). Pub. L. 110–313, § 1(b)(1), inserted ‘‘Deputy Director of the United States Patent and Trademark Office’’ after ‘‘Director,’’ and substituted ‘‘appointed by the Secretary of Commerce, in consulta- tion with the Director’’ for ‘‘appointed by the Direc- tor’’. Subsecs. (c), (d). Pub. L. 110–313, § 1(b)(2), added sub- secs. (c) and (d). 2002—Subsec. (b). Pub. L. 107–273, which directed amendment of subsec. (b) by inserting ‘‘the Deputy Commissioner,’’ after ‘‘Commissioner,’’, could not be executed because ‘‘Commissioner,’’ does not appear in text. 1999—Pub. L. 106–113 amended section generally. Prior to amendment, section read as follows: ‘‘In every case of interference, opposition to registra- tion, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registra- tion. ‘‘The Trademark Trial and Appeal Board shall in- clude the Commissioner, the Deputy Commissioner, the Assistant Commissioners, and members appointed by the Commissioner. Employees of the Patent and Trade- mark Office and other persons, all of whom shall be competent in trademark law, shall be eligible for ap- pointment as members. Each case shall be heard by at least three members of the Board, the members hearing such case to be designated by the Commissioner.’’ 1980—Pub. L. 96–455 inserted provisions requiring that the Trademark Trial and Appeal Board include the Deputy Commissioner and members appointed by the Commissioner and provisions that employees of the Patent and Trademark Office and other persons, all of whom shall be competent in trademark law, shall be el- igible for appointment as members; and struck out pro- vision that the Board include Patent and Trademark Office employees, designated by the Commissioner and whose qualifications have been approved by the Civil Service Commission as being adequate for appointment to the position of examiner in charge of interferences. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. 1958—Pub. L. 85–609 substituted ‘‘a Trademark Trial and Appeal Board’’ for ‘‘the examiner in charge of interferences’’ in first paragraph, and inserted second paragraph relating to the composition of the Board. 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 1980 AMENDMENT; BOARD MEMBERSHIP AS OF OCTOBER 15, 1980, UNAFFECTED Pub. L. 96–455, § 2, Oct. 15, 1980, 94 Stat. 2024, provided that: ‘‘This amendment [amending this section] shall become effective on the date of its enactment [Oct. 15, 1980]. Members of the Trademark Trial and Appeal Board on the date of enactment shall continue to be members under and in accordance with the provisions of section 17 of the Act of July 5, 1946, as amended [this section], in effect immediately preceding the date of enactment.’’ 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. EFFECTIVE DATE OF 1958 AMENDMENT Pub. L. 85–609, § 3, Aug. 8, 1958, 72 Stat. 541, provided that: ‘‘This Act [amending this section and sections 1070, 1071, 1092, and 1113 of this title] shall take effect on approval [Aug. 8, 1958]; it shall apply to ex parte ap- peals taken to the Commissioner prior to the date of approval which have not been heard but shall not apply to any such appeal which has been heard or decided in which event further proceedings may be had as though this Act had not been passed; it shall apply to inter partes cases instituted prior to the date of approval which have not been heard by an examiner of inter- ferences, but shall not apply to any such case which has been heard or decided by an examiner of interferences in which event further proceedings may be had as though this Act had not passed.’’ REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations Page 1300 TITLE 15—COMMERCE AND TRADE § 1068 and rights under prior acts, see notes set out under sec- tion 1051 of this title. REORGANIZATION PLAN NO. 5 OF 1950 Pub. L. 85–609, § 2, Aug. 8, 1958, 72 Stat. 540, provided that: ‘‘The provisions of this Act [amending this sec- tion and sections 1070, 1071, 1092, and 1113 of this title] shall be subject to Reorganization Plan No. 5 of 1950 (64 Stat. 1263).’’ 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. § 1068. Action of Director in interference, opposi- tion, and proceedings for concurrent use reg- istration or for cancellation In such proceedings the Director may refuse to register the opposed mark, may cancel the reg- istration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise re- strict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the per- son or persons entitled thereto, as the rights of the parties under this chapter may be estab- lished in the proceedings. The authority of the Director under this section includes the author- ity to reconsider, and modify or set aside, a de- cision of the Trademark Trial and Appeal Board: Provided, That in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limi- tations provided for in subsection (d) of section 1052 of this title. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title. (July 5, 1946, ch. 540, title I, § 18, 60 Stat. 434; Pub. L. 100–667, title I, § 118, 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. 116–260, div. Q, title II, § 228(a)(1), Dec. 27, 2020, 134 Stat. 2209.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, §§ 7, 13, 33 Stat. 726, 728. AMENDMENTS 2020—Pub. L. 116–260 inserted ‘‘. The authority of the Director under this section includes the authority to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board’’ after ‘‘established in the proceedings’’. 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. 1988—Pub. L. 100–667 substituted ‘‘the registration, in whole or in part, may modify the application or reg- istration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register’’ for ‘‘or restrict’’, and ‘‘may refuse’’ for ‘‘or may refuse’’, and inserted provisions that no final judgment be entered before mark is registered if appli- cant cannot prevail without establishing constructive use. 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. CONSTRUCTION OF 2020 AMENDMENT Pub. L. 116–260, div. Q, title II, § 228(b), Dec. 27, 2020, 134 Stat. 2210, provided that: ‘‘(1) AUTHORITY BEFORE DATE OF ENACTMENT.—The amendments made by subsection (a) [amending this section and sections 1070 and 1092 of this title] shall not be construed to mean that the Director lacked the au- thority to reconsider, and modify or set aside, a deci- sion of the Trademark Trial and Appeal Board before the date of enactment of this Act [Dec. 27, 2020]. ‘‘(2) AUTHORITY WITH RESPECT TO PARTICULAR DECI- SIONS.—The amendments made by subsection (a) shall not be construed to require the Director to reconsider, modify, or set aside any particular decision of the Trademark Trial and Appeal Board.’’ [‘‘Director’’ as used in section 228(b) of Pub. L. 116–260, set out above, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, see sec- tion 222 of Pub. L. 116–260, set out as a note 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. § 1069. Application of equitable principles in inter partes proceedings In all inter partes proceedings equitable prin- ciples of laches, estoppel, and acquiescence, where applicable may be considered and applied. (July 5, 1946, ch. 540, title I, § 19, 60 Stat. 434; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 119, Nov. 16, 1988, 102 Stat. 3941.) Editorial Notes AMENDMENTS 1988—Pub. L. 100–667 struck out at end ‘‘The provi- sions of this section shall also govern proceedings here- tofore begun in the Patent and Trademark Office and not finally determined.’’