15 U.S.C. § 1051 — Application for registration; verification

Page 1275 TITLE 15—COMMERCE AND TRADE § 1051 1 So in original. The word ‘‘shall’’ probably should not appear. ‘‘An Act to authorize the registration of trade-marks and protect the same,’’ and also act Aug. 5, 1882, ch. 393, 22 Stat. 298, entitled ‘‘An Act relating to the registra- tion of trade marks’’. Former section 109 of this title repealed all inconsistent acts and parts of acts, except so far as they might apply to certificates of registra- tion issued under the Trade-Mark Act of Mar. 3, 1881, ch. 138, and act Aug. 5, 1882, ch. 393. Statutory Notes and Related Subsidiaries EFFECTIVE DATE This chapter, act July 5, 1946, ch. 540, 60 Stat. 427, be- came effective one year from July 5, 1946, and repealed chapter 3 of this title as of that date. See notes under section 1051 of this title. SUBCHAPTER I—THE PRINCIPAL REGISTER § 1051. Application for registration; verification (a) Application for use of trademark (1) The owner of a trademark used in com- merce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Pat- ent and Trademark Office an application and a verified statement, in such form as may be pre- scribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director. (2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark. (3) The statement shall be verified by the ap- plicant and specify that— (A) the person making the verification be- lieves that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be reg- istered; (B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate; (C) the mark is in use in commerce; and (D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in con- nection with the goods of such other person, to cause confusion, or to cause mistake, or to de- ceive, except that, in the case of every applica- tion claiming concurrent use, the applicant shall— (i) state exceptions to the claim of exclu- sive use; and (ii) shall 1 specify, to the extent of the verifier’s knowledge— (I) any concurrent use by others; (II) the goods on or in connection with which and the areas in which each concur- rent use exists; (III) the periods of each use; and (IV) the goods and area for which the ap- plicant desires registration. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Di- rector. The Director shall promulgate rules pre- scribing the requirements for the application and for obtaining a filing date herein. (b) Application for bona fide intention to use trademark (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by pay- ing the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be pre- scribed by the Director. (2) The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark. (3) The statement shall be verified by the ap- plicant and specify— (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce; (B) the applicant’s bona fide intention to use the mark in commerce; (C) that, to the best of the verifier’s knowl- edge and belief, the facts recited in the appli- cation are accurate; and (D) that, to the best of the verifier’s knowl- edge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resem- blance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mis- take, or to deceive. Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Di- rector. The Director shall promulgate rules pre- scribing the requirements for the application and for obtaining a filing date herein. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an applica- tion filed under subsection (b), an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the require- ments of subsection (a). (d) Verified statement that trademark is used in commerce (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trade- mark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified Page 1276 TITLE 15—COMMERCE AND TRADE § 1051 statement that the mark is in use in commerce and specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and accept- ance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registra- tion, and notice of registration shall be pub- lished in the Official Gazette of the Patent and Trademark Office. Such examination may in- clude an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is reg- istered. (2) The Director shall extend, for one addi- tional 6-month period, the time for filing the statement of use under paragraph (1), upon writ- ten request of the applicant before the expira- tion of the 6-month period provided in paragraph (1). In addition to an extension under the pre- ceding sentence, the Director may, upon a show- ing of good cause by the applicant, further ex- tend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written re- quest of the applicant made before the expira- tion of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a con- tinued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a con- tinued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by pay- ment of the prescribed fee. The Director shall issue regulations setting forth guidelines for de- termining what constitutes good cause for pur- poses of this paragraph. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is re- fused, the reasons for the refusal. An applicant may amend the statement of use. (4) The failure to timely file a verified state- ment of use under paragraph (1) or an extension request under paragraph (2) shall result in aban- donment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period speci- fied in paragraphs (1) and (2) for filing a state- ment of use. (e) Designation of resident for service of process and notices If the applicant is not domiciled in the United States the applicant may designate, by a docu- ment filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leav- ing with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not des- ignate by a document filed in the United States Patent and Trademark Office the name and ad- dress of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director. (f) Third-party submission of evidence A third party may submit for consideration for inclusion in the record of an application evi- dence relevant to a ground for refusal of reg- istration. The third-party submission shall iden- tify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal. Not later than 2 months after the date on which the submission is filed, the Director shall deter- mine whether the evidence should be included in the record of the application. The Director shall establish by regulation appropriate procedures for the consideration of evidence submitted by a third party under this subsection and may pre- scribe a fee to accompany the submission. If the Director determines that the third-party evi- dence should be included in the record of the ap- plication, only the evidence and the ground for refusal to which the evidence relates may be so included. Any determination by the Director whether or not to include evidence in the record of an application shall be final and non-review- able, and a determination to include or to not include evidence in the record shall not preju- dice any party’s right to raise any issue and rely on any evidence in any other proceeding. (July 5, 1946, ch. 540, title I, § 1, 60 Stat. 427; Pub. L. 87–772, § 1, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 103, Nov. 16, 1988, 102 Stat. 3935; Pub. L. 105–330, title I, § 103, title II, § 201(a)(1), Oct. 30, 1998, 112 Stat. 3064, 3069; 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)(1), (2), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 116–260, div. Q, title II, § 223(a), Dec. 27, 2020, 134 Stat. 2201.) Editorial Notes PRIOR PROVISIONS Subsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, §§ 1, 2, 33 Stat. 724; May 4, 1906, ch. 2081, § 1, 34 Stat. 168; Feb. 18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 1, 52 Stat. 638. Subsec. (d) is from act Feb. 20, 1905, ch. 592, § 3, 33 Stat. 725. AMENDMENTS 2020—Subsec. (f). Pub. L. 116–260 added subsec. (f). 2002—Subsec. (d)(1). Pub. L. 107–273, § 13207(b)(1), in first sentence, substituted ‘‘specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in com- merce.’’ for ‘‘specifying the date of the applicant’s first use of the mark in commerce and,, those goods or serv- ices specified in the notice of allowance on or in con- nection with which the mark is used in commerce.’’ Page 1277 TITLE 15—COMMERCE AND TRADE § 1051 Subsec. (e). Pub. L. 107–273, § 13207(b)(2), amended sub- sec. (e) generally. Prior to amendment, subsec. (e) re- quired applicant not domiciled in United States to des- ignate name and address of some person resident in the United States on whom may be served notices or proc- ess in proceedings affecting the mark and provided that notices or process be served by leaving with such per- son or mailing to him a copy, or upon Director if des- ignated person cannot be found. 1999—Subsecs. (a), (b), (d), (e). Pub. L. 106–113 sub- stituted ‘‘Director’’ for ‘‘Commissioner’’ wherever ap- pearing. 1998—Subsec. (a). Pub. L. 105–330, § 103(a), amended subsec. (a) generally. Prior to amendment, subsec. (a) related to application by owner of a trademark used in commerce to register the trademark by filing in the Patent and Trademark Office a written application in prescribed form and verified by applicant, by paying prescribed fee, and by complying with prescribed rules or regulations. Subsec. (b). Pub. L. 105–330, § 103(b), amended subsec. (b) generally. Prior to amendment, subsec. (b) related to application, by person with bona fide intention, under circumstances showing good faith, to use a trade- mark in commerce, to register trademark by filing in the Patent and Trademark Office a written application in prescribed form and verified by applicant, by paying prescribed fee, and by complying with prescribed rules or regulations. Subsec. (d)(1). Pub. L. 105–330, § 201(a)(1)(A), inserted ‘‘and,’’ after ‘‘specifying the date of the applicant’s first use of the mark in commerce’’. Pub. L. 105–330, § 201(a)(1)(B), which directed the strik- ing out of ‘‘and, the mode or manner in which the mark is used on or in connection with such goods or serv- ices’’, was executed by striking out ‘‘, and the mode or manner in which the mark is used on or in connection with such goods or services’’ after ‘‘notice of allowance on or in connection with which the mark is used in commerce’’, to reflect the probable intent of Congress. Subsec. (d)(4). Pub. L. 105–330, § 103(c), amended par. (4) generally. Prior to amendment, par. (4) read as fol- lows: ‘‘The failure to timely file a verified statement of use under this subsection shall result in abandonment of the application.’’ 1988—Subsec. (a). Pub. L. 100–667, § 103(1) to (7), in- serted ‘‘(a)’’ preceding introductory provisions and sub- stituted ‘‘may apply to register his or her’’ for ‘‘may register his’’, redesignated former subsecs. (a) to (c) as pars. (1) to (3), respectively, redesignated former pars. (1) to (3) as subpars. (A) to (C), respectively, in par. (1)(A), substituted ‘‘used on or in connection with’’ for ‘‘applied to’’ and ‘‘goods on or in connection’’ for ‘‘goods in connection’’, in par. (1)(C), struck out ‘‘actu- ally’’ after ‘‘the mark as’’, and in par. (2), substituted ‘‘prescribed’’ for ‘‘filing’’. Subsecs. (b), (c). Pub. L. 100–667, § 103(3), (9), added subsecs. (b) and (c) and redesignated former subsecs. (b) and (c) as pars. (2) and (3), respectively, of subsec. (a). Subsecs. (d), (e). Pub. L. 100–667, § 103(8), (9), added subsec. (d) and redesignated former subsec. (d) as (e). 1975—Subsecs. (a), (b), (d). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. 1962—Subsec. (a)(1). Pub. L. 87–772 substituted ‘‘as to be likely, when applied to the goods of such other per- son, to cause confusion, or to cause mistake, or to de- ceive’’ for ‘‘as might be calculated to deceive’’, and struck out ‘‘or services’’ after ‘‘use by others, the goods’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2020 AMENDMENT Pub. L. 116–260, div. Q, title II, § 223(c), Dec. 27, 2020, 134 Stat. 2201, provided that: ‘‘The amendment made by subsection (a) [amending this section] shall take effect 1 year after the date of enactment of this Act [Dec. 27, 2020].’’ 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 Pub. L. 105–330, title I, § 109(b), Oct. 30, 1998, 112 Stat. 3069, provided that: ‘‘This title [see Short Title of 1998 Amendment note below] and the amendments made by this title shall apply to any application for registration of a trademark pending on, or filed on or after, the ef- fective date of this Act [probably should be ‘‘this title’’, see section 110 of Pub. L. 105–330, set out as an Effective Date of 1998 Amendment note below].’’ Pub. L. 105–330, title I, § 110, Oct. 30, 1998, 112 Stat. 3069, provided that: ‘‘This title [see Short Title of 1998 Amendment note below] and the amendments made by this title shall take effect— ‘‘(1) on the date that is 1 year after the date of the enactment of this Act [Oct. 30, 1998], or ‘‘(2) upon the entry into force of the Trademark Law Treaty with respect to the United States [Aug. 12, 2000], whichever occurs first.’’ Pub. L. 105–330, title II, § 201(b), Oct. 30, 1998, 112 Stat. 3070, provided that: ‘‘The amendments made by this section [amending this section and sections 1052, 1057, 1064, 1091, 1094, 1113 to 1115, 1121, and 1124 of this title] shall take effect on the date of enactment of this Act [Oct. 30, 1998], and shall apply only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date re- lating to the registration of a mark.’’ EFFECTIVE DATE OF 1988 AMENDMENT Pub. L. 100–667, title I, § 136, Nov. 16, 1988, 102 Stat. 3948, provided that: ‘‘This title and the amendments made by this title [see Short Title of 1988 Amendment note below] shall become effective on the date which is one year after the date of enactment of this Act [Nov. 16, 1988].’’ 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 Section 46(a) of act July 5, 1946, provided that this chapter shall be in force and take effect one year from July 5, 1946. SHORT TITLE OF 2020 AMENDMENT Pub. L. 116–260, div. Q, title II, § 221(a), Dec. 27, 2020, 134 Stat. 2200, provided that: ‘‘This subtitle [subtitle B (§§ 221–228) of title II of div. Q of Pub. L. 116–260, enact- ing sections 1066a and 1066b of this title, amending this section and sections 1062, 1064, 1065, 1068, 1070, 1071, 1092, 1094, and 1116 of this title, and enacting provisions set out as notes under this section and sections 1064, 1066a, 1068, and 1116 of this title] may be cited as the ‘Trade- mark Modernization Act of 2020’ or the ‘TM Act of 2020’.’’ SHORT TITLE OF 2010 AMENDMENT Pub. L. 111–146, § 1, Mar. 17, 2010, 124 Stat. 66, provided that: ‘‘This Act [amending sections 1057, 1058, 1065, 1071, and 1141k of this title] may be cited as the ‘Trademark Technical and Conforming Amendment Act of 2010’.’’ SHORT TITLE OF 2006 AMENDMENT Pub. L. 109–312, § 1(a), Oct. 6, 2006, 120 Stat. 1730, pro- vided that: ‘‘This Act [amending sections 1052, 1063, 1064, 1092, 1125, and 1127 of this title] may be cited as the ‘Trademark Dilution Revision Act of 2006’.’’ SHORT TITLE OF 2004 AMENDMENT Pub. L. 108–482, § 1, Dec. 23, 2004, 118 Stat. 3912, pro- vided that: ‘‘This Act [amending section 1117 of this title, section 504 of Title 17, Copyrights, sections 2318 Page 1278 TITLE 15—COMMERCE AND TRADE § 1051 and 3559 of Title 18, Crimes and Criminal Procedure, and sections 85 and 112 of Title 28, Judiciary and Judi- cial Procedure, and enacting provisions set out as notes under this section, section 1117 of this title, sections 2311 and 2318 of Title 18, and listed in a table relating to sentencing guidelines set out as a note under section 994 of Title 28] may be cited as the ‘Intellectual Prop- erty Protection and Courts Amendments Act of 2004’.’’ Pub. L. 108–482, title II, § 201, Dec. 23, 2004, 118 Stat. 3916, provided that: ‘‘This title [amending section 1117 of this title, section 504 of Title 17, Copyrights, and sec- tion 3559 of Title 18, Crimes and Criminal Procedure, and enacting provisions set out as notes under section 1117 of this title and listed in a table relating to sen- tencing guidelines set out as a note under section 994 of Title 28, Judiciary and Judicial Procedure] may be cited as the ‘Fraudulent Online Identity Sanctions Act’.’’ SHORT TITLE OF 2002 AMENDMENT Pub. L. 107–273, div. C, title III, § 13401, Nov. 2, 2002, 116 Stat. 1913, provided that: ‘‘This subtitle [subtitle D (§§ 13401–13403) of title III of div. C of Pub. L. 107–273, en- acting subchapter IV of this chapter and provisions set out as a note under section 1141 of this title] may be cited as the ‘Madrid Protocol Implementation Act’.’’ SHORT TITLE OF 1999 AMENDMENTS Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3001(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–545, provided that: ‘‘This title [enacting section 1129 of this title, amend- ing sections 1114, 1116, 1117, 1125, and 1127 of this title, section 470a of Title 16, Conservation, and section 1338 of Title 28, Judiciary and Judicial Procedure, and en- acting provisions set out as notes under this section and sections 1117 and 1125 of this title] may be cited as the ‘Anticybersquatting Consumer Protection Act’.’’ Pub. L. 106–43, § 1, Aug. 5, 1999, 113 Stat. 218, provided that: ‘‘This Act [amending sections 1052 to 1054, 1060, 1063, 1064, 1091, 1092, 1114, 1116 to 1118, 1122, and 1124 to 1127 of this title, enacting provisions set out as a note under section 1052 of this title, and amending provi- sions set out as a note under this section] may be cited as the ‘Trademarks Amendments Act of 1999’.’’ SHORT TITLE OF 1998 AMENDMENT Pub. L. 105–330, title I, § 101, Oct. 30, 1998, 112 Stat. 3064, provided that: ‘‘This title [amending this section and sections 1058 to 1060, 1062, and 1126 of this title and enacting provisions set out as notes under this section and sections 1058 and 1059 of this title] may be cited as the ‘Trademark Law Treaty Implementation Act’.’’ SHORT TITLE OF 1996 AMENDMENT Pub. L. 104–98, § 1, Jan. 16, 1996, 109 Stat. 985, provided that: ‘‘This Act [amending sections 1125 and 1127 of this title and enacting provisions set out as a note under section 1125 of this title] may be cited as the ‘Federal Trademark Dilution Act of 1995’.’’ SHORT TITLE OF 1992 AMENDMENT Pub. L. 102–542, § 1, Oct. 27, 1992, 106 Stat. 3567, pro- vided that: ‘‘This Act [enacting section 1122 of this title, amending sections 1114, 1125, and 1127 of this title, and enacting provisions set out as a note under section 1114 of this title] may be cited as the ‘Trademark Rem- edy Clarification Act’.’’ SHORT TITLE OF 1988 AMENDMENT Pub. L. 100–667, title I, § 101, Nov. 16, 1988, 102 Stat. 3935, provided that: ‘‘This title [amending this section and sections 1052 to 1060, 1062 to 1066, 1068, 1069, 1071, 1091, 1092, 1094, 1095, 1111, 1112, 1114 to 1118, 1121, and 1125 to 1127 of this title, redesignating section 1121a of this title as section 1121(b) of this title, and enacting provi- sions set out as notes under sections 1051 and 1058 of this title] may be cited as the ‘Trademark Law Revi- sion Act of 1988’.’’ SHORT TITLE OF 1984 AMENDMENT Pub. L. 98–620, title I, § 101, Nov. 8, 1984, 98 Stat. 3335, provided that: ‘‘This title [amending sections 1064 and 1127 of this title and enacting provisions set out as a note under section 1064 of this title] may be cited as the ‘Trademark Clarification Act of 1984’.’’ SHORT TITLE Act July 5, 1946, ch. 540, 60 Stat. 427, which is classi- fied to this chapter, is popularly known as the ‘‘Lanham Act’’ and also as the ‘‘Trademark Act of 1946’’. REPEAL OF INCONSISTENT PROVISIONS; CERTAIN PROVISIONS NOT AFFECTED Act July 5, 1946, ch. 540, title XI, § 46(a), 60 Stat. 444, as amended by Pub. L. 106–43, § 6(b), Aug. 5, 1999, 113 Stat. 220, provided in part that all acts and parts of acts inconsistent with this chapter are repealed effec- tive one year from July 5, 1946, but that ‘‘nothing con- tained in this Act [this chapter] shall be construed as limiting, restricting, modifying, or repealing any stat- ute in force on the effective date of this Act [July 5, 1947] which does not relate to trademarks, or as re- stricting or increasing the authority of any Federal de- partment or regulatory agency except as may be spe- cifically provided in this Act [this chapter].’’ Act July 5, 1946, ch. 540, title XI, § 48, 60 Stat. 446, pro- vided that: ‘‘Section 4 of the Act of January 5, 1905 (U.S.C., title 36, sec. 4), as amended, entitled ‘An Act to incorporate the National Red Cross’ [see 18 U.S.C. 706], and section 7 of the Act of June 15, 1916 (U.S.C., title 36, sec. 27), entitled ‘An Act to incorporate the Boy Scouts of America, and for other purposes’ [see 36 U.S.C. 30905], and the Act of June 20, 1936 (U.S.C., title 22, sec. 248), entitled ‘An Act to prohibit the commercial use of the coat of arms of the Swiss Confederation’ [see former 18 U.S.C. 708], are not repealed or affected by this Act.’’ SAVINGS PROVISION Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3008], Nov. 29, 1999, 113 Stat. 1536, 1501A–551, provided that: ‘‘Nothing in this title [see Short Title of 1999 Amend- ments note above] shall affect any defense available to a defendant under the Trademark Act of 1946 [15 U.S.C. 1051 et seq.] (including any defense under section 43(c)(4) of such Act [15 U.S.C. 1125(c)(4)] or relating to fair use) or a person’s right of free speech or expression under the first amendment of the United States Con- stitution.’’ SEPARABILITY Act July 5, 1946, ch. 540, title XI, § 50, 60 Stat. 446, pro- vided that: ‘‘If any provision of this Act [this chapter] or the application of such provision to any person or circumstance is held invalid, the remainder of the Act shall not be affected thereby.’’ DEADLINE FOR PROCEDURES Pub. L. 116–260, div. Q, title II, § 223(b), Dec. 27, 2020, 134 Stat. 2201, provided that: ‘‘Not later than 1 year after the date of enactment of this Act [Dec. 27, 2020], the Director shall establish the appropriate procedures described in section 1(f) of the Trademark Act of 1946 [15 U.S.C. 1051(f)], as added by subsection (a).’’ [For definitions of terms used in section 223(b) of Pub. L. 116–260, set out above, see section 222 of Pub. L. 116–260, set out as a note below.] PENDING PROCEEDINGS AND EXISTING REGISTRATION AND RIGHTS UNDER PRIOR ACTS Act July 5, 1946, ch. 540, title XI, § 46(a), 60 Stat. 444, provided in part that this chapter, except as otherwise specifically provided therein, shall not affect any suit, proceeding or appeal pending on the effective date of this chapter and that the repeal of all inconsistent acts ‘‘shall not affect the validity of registrations granted or applied for under any of said Acts prior to the effec- Page 1279 TITLE 15—COMMERCE AND TRADE § 1052 tive date of this Act [July 5, 1947], or rights or remedies thereunder except as provided in sections 8, 12, 14, 15, and 47 of this Act [sections 1058, 1062, 1064, and 1065 of this title and note under this section].’’ Act July 5, 1946, ch. 540, title XI, §§ 46(b), 47, 60 Stat. 445, provided: ‘‘(b) Registrations now existing under the Act of March 3, 1881, or the Act of February 20, 1905 [sections 81 to 109 of this title], shall continue in full force and effect for the unexpired terms thereof and may be re- newed under the provisions of section 9 of this Act [sec- tion 1059 of this title]. Such registrations and the re- newals thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act [this chap- ter] to the same extent and with the same force and ef- fect as though registered on the principal register es- tablished by this Act [this chapter] except as limited in sections 8, 12, 14, and 15 of this Act [sections 1058, 1062, 1064, 1065, of this title]. Marks registered under the ‘ten-year proviso’ of section 5 of the Act of February 20, 1905, as amended [former section 85 of this title], shall be deemed to have become distinctive of the reg- istrant’s goods in commerce under paragraph (f) of sec- tion 2 of this Act [section 1052 of this title] and may be renewed under section 9 hereof [section 1059 of this title] as marks coming within said paragraph. ‘‘Registrations now existing under the Act of March 19, 1920 [former sections 121 to 128 of this title], shall expire six months after the effective date of this Act [July 5, 1947], or twenty years from the dates of their registrations, whichever date is later. Such registra- tions shall be subject to and entitled to the benefits of the provisions of this Act [this chapter] relating to marks registered on the supplemental register estab- lished by this Act [this chapter], and may not be re- newed unless renewal is required to support foreign reg- istrations. In that event renewal may be effected on the supplemental register under the provisions of section 9 of this Act [section 1059 of this title]. ‘‘Marks registered under previous Acts may, if eligi- ble, also be registered under this Act [this chapter]. ‘‘SEC. 47. (a) All applications for registration pending in the Patent Office at the effective date of this Act [July 5, 1947] may be amended, if practicable, to bring them under the provisions of this Act [this chapter]. The prosecution of such applications so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act [this chapter]. If such amendments are not made, the pros- ecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent and for this purpose only, notwithstanding the foregoing general repeal thereof. ‘‘(b) In any case in which an appeal is pending before the United States Court of Customs and Patent Appeals or any United States Circuit Court of Appeals or the United States Court of Appeals for the District of Co- lumbia or the United States Supreme Court at the ef- fective date of this Act [July 5, 1947], the court, if it be of the opinion that the provisions of this Act [this chapter] are applicable to the subject matter of the ap- peal, may apply such provision or may remand the case to the Commissioner [now Director] or to the district court for the taking of additional evidence or a new trial or for reconsideration of the decision on the record as made, as the appellate court may deem prop- er.’’ Act July 5, 1946, ch. 540, title XI, § 49, 60 Stat. 446, pro- vided: ‘‘Nothing herein [in this chapter] shall adversely affect the rights or the enforcement of rights in marks acquired in good faith prior to the effective date of this Act [July 5, 1947].’’ DEFINITIONS APPLICABLE TO SECTIONS OF PUB. L. 116–260 Pub. L. 116–260, div. Q, title II, § 222, Dec. 27, 2020, 134 Stat. 2200, provided that: ‘‘In this subtitle [subtitle B (§§ 221–228) of title II of div. Q of Pub. L. 116–260, see Short Title of 2020 Amendment note above]: ‘‘(1) DIRECTOR.—The term ‘Director’ means the Under Secretary of Commerce for Intellectual Prop- erty and Director of the United States Patent and Trademark Office. ‘‘(2) TRADEMARK ACT OF 1946.—The term ‘Trademark Act of 1946’ means the Act entitled ‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of cer- tain international conventions, and for other pur- poses’, approved July 5, 1946 (15 U.S.C. 1051 et. seq) (commonly referred to as the ‘Trademark Act of 1946’ or the ‘Lanham Act’).’’ EMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING TRADEMARK CASES Relief as to filing date of trademark application or registration and excusal of delayed fees or actions af- fected by postal situation beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970, see note set out under section 111 of Title 35, Patents. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce to Secretary of Commerce, with certain exceptions, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Govern- ment Organization and Employees. § 1052. Trademarks registrable on principal reg- ister; concurrent registration No trademark by which the goods of the appli- cant may be distinguished from the goods of others shall be refused registration on the prin- cipal register on account of its nature unless it— (a) Consists of or comprises immoral, decep- tive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises a name, portrait, or signature identifying a particular living indi- vidual except by his written consent, or the name, signature, or portrait of a deceased Presi- dent of the United States during the life of his widow, if any, except by the written consent of the widow. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name pre- viously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director deter- mines that confusion, mistake, or deception is not likely to result from the continued use by