15 U.S.C. § 1057 — Certificates of registration

Page 1283 TITLE 15—COMMERCE AND TRADE § 1057 § 1055. Use by related companies affecting valid- ity and registration Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for reg- istration, and such use shall not affect the valid- ity of such mark or of its registration, provided such mark is not used in such manner as to de- ceive the public. If first use of a mark by a per- son is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the reg- istrant or applicant, as the case may be. (July 5, 1946, ch. 540, title I, § 5, 60 Stat. 429; Pub. L. 100–667, title I, § 107, Nov. 16, 1988, 102 Stat. 3938.) Editorial Notes AMENDMENTS 1988—Pub. L. 100–667 inserted at end ‘‘If first use of a mark by a person is controlled by the registrant or ap- plicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or appli- cant, as the case may be.’’ Statutory Notes and Related Subsidiaries 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. § 1056. Disclaimer of unregistrable matter (a) Compulsory and voluntary disclaimers The Director may require the applicant to dis- claim an unregistrable component of a mark otherwise registrable. An applicant may volun- tarily disclaim a component of a mark sought to be registered. (b) Prejudice of rights No disclaimer, including those made under subsection (e) of section 1057 of this title, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services. (July 5, 1946, ch. 540, title I, § 6, 60 Stat. 429; Pub. L. 87–772, § 3, Oct. 9, 1962, 76 Stat. 769; Pub. L. 100–667, title I, § 108, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583.) Editorial Notes AMENDMENTS 1999—Subsec. (a). Pub. L. 106–113 substituted ‘‘Direc- tor’’ for ‘‘Commissioner’’. 1988—Subsec. (b). Pub. L. 100–667 substituted ‘‘sub- section (e)’’ for ‘‘paragraph (d)’’. 1962—Pub. L. 87–772, among other changes, provided that an applicant may voluntarily disclaim a compo- nent of a mark sought to be registered. 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. 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. § 1057. Certificates of registration (a) Issuance and form Certificates of registration of marks reg- istered upon the principal register shall be issued in the name of the United States of America, under the seal of the United States Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the United States Patent and Trade- mark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the par- ticular goods or services for which it is reg- istered, the number and date of the registration, the term thereof, the date on which the applica- tion for registration was received in the United States Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration. (b) Certificate as prima facie evidence A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the reg- istered mark in commerce on or in connection with the goods or services specified in the cer- tificate, subject to any conditions or limitations stated in the certificate. (c) Application to register mark considered con- structive use Contingent on the registration of a mark on the principal register provided by this chapter, Page 1284 TITLE 15—COMMERCE AND TRADE § 1057 the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such fil- ing— (1) has used the mark; (2) has filed an application to register the mark which is pending or has resulted in reg- istration of the mark; or (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark. (d) Issuance to assignee A certificate of registration of a mark may be issued to the assignee of the applicant, but the assignment must first be recorded in the United States Patent and Trademark Office. In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period. (e) Surrender, cancellation, or amendment by owner Upon application of the owner the Director may permit any registration to be surrendered for cancellation, and upon cancellation appro- priate entry shall be made in the records of the United States Patent and Trademark Office. Upon application of the owner and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materi- ally the character of the mark. Appropriate entry shall be made in the records of the United States Patent and Trademark Office and upon the certificate of registration. (f) Copies of United States Patent and Trade- mark Office records as evidence Copies of any records, books, papers, or draw- ings belonging to the United States Patent and Trademark Office relating to marks, and copies of registrations, when authenticated by the seal of the United States Patent and Trademark Of- fice and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have such copies. (g) Correction of United States Patent and Trademark Office mistake Whenever a material mistake in a registra- tion, incurred through the fault of the United States Patent and Trademark Office, is clearly disclosed by the records of the Office a certifi- cate stating the fact and nature of such mistake shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration and such cor- rected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discre- tion of the Director a new certificate of registra- tion may be issued without charge. All certifi- cates of correction heretofore issued in accord- ance with the rules of the United States Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by stat- ute. (h) Correction of applicant’s mistake Whenever a mistake has been made in a reg- istration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discre- tion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registra- tion as to require republication of the mark. (July 5, 1946, ch. 540, title I, § 7, 60 Stat. 430; Aug. 17, 1950, ch. 733, 64 Stat. 459; Pub. L. 87–772, § 4, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 109, Nov. 16, 1988, 102 Stat. 3938; Pub. L. 105–330, title II, § 201(a)(3), Oct. 30, 1998, 112 Stat. 3070; 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(a), Mar. 17, 2010, 124 Stat. 66.) Editorial Notes PRIOR PROVISIONS Subsecs. (a) and (c) are from acts Feb. 20, 1905, ch. 592, § 11, 33 Stat. 727; Mar. 4, 1925, ch. 535, § 3, 43 Stat. 1269. Subsec. (e) is from act Mar. 19, 1920, ch. 104, § 7, 41 Stat. 535. Subsec. (f) is from act Mar. 4, 1925, ch. 535, § 1, 43 Stat. 1268. AMENDMENTS 2010—Subsec. (a). Pub. L. 111–146, § 3(a)(1), inserted ‘‘United States’’ before ‘‘Patent and Trademark Office’’ wherever appearing. Subsec. (b). Pub. L. 111–146, § 3(a)(2), substituted ‘‘owner’s’’ for ‘‘registrant’s’’ in two places. Subsec. (d). Pub. L. 111–146, § 3(a)(1), inserted ‘‘United States’’ before ‘‘Patent and Trademark Office’’. Subsec. (e). Pub. L. 111–146, § 3(a)(1), (3), inserted ‘‘United States’’ before ‘‘Patent and Trademark Office’’ in two places, substituted ‘‘owner’’ for ‘‘registrant’’ in two places, and struck out ‘‘or, if said certificate is lost or destroyed, upon a certified copy thereof’’ after ‘‘cer- tificate of registration’’. Subsec. (f). Pub. L. 111–146, § 3(a)(1), inserted ‘‘United States’’ before ‘‘Patent and Trademark Office’’ in two places. Subsec. (g). Pub. L. 111–146, § 3(a)(4), amended subsec. (g) generally. Prior to amendment, text read as follows: ‘‘Whenever a material mistake in a registration, in- curred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mis- take, shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration certificate and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Director a new certifi- cate of registration may be issued without charge. All certificates of correction heretofore issued in accord- Page 1285 TITLE 15—COMMERCE AND TRADE § 1058 ance with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by stat- ute.’’ 1999—Subsecs. (a), (d) to (h). Pub. L. 106–113 sub- stituted ‘‘Director’’ for ‘‘Commissioner’’ wherever ap- pearing. 1998—Subsec. (a). Pub. L. 105–330 struck out second period at end of first sentence. 1988—Subsec. (b). Pub. L. 100–667, § 109(1), amended subsec. (b) generally. Prior to amendment, subsec. (b) read as follows: ‘‘A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the reg- istration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in com- merce in connection with the goods or services speci- fied in the certificate, subject to any conditions and limitations stated therein.’’ Subsec. (c). Pub. L. 100–667, § 109(3), added subsec. (c). Former subsec. (c) redesignated (d). Subsec. (d). Pub. L. 100–667, § 109(2), (4), redesignated former subsec. (c) as (d) and substituted ‘‘prescribed fee’’ for ‘‘fee herein provided’’. Former subsec. (d) re- designated (e). Subsec. (e). Pub. L. 100–667, § 109(2), redesignated former subsec. (d) as (e). Former subsec. (e) redesig- nated (f). Subsec. (f). Pub. L. 100–667, § 109(2), (5), redesignated former subsec. (e) as (f) and substituted ‘‘prescribed fee’’ for ‘‘fee required by law’’. Former subsec. (f) redes- ignated (g). Subsec. (g). Pub. L. 100–667, § 109(2), redesignated former subsec. (f) as (g). Former subsec. (g) redesig- nated (h). Subsec. (h). Pub. L. 100–667, § 109(2), (6), redesignated former subsec. (g) as (h) and substituted ‘‘prescribed fee’’ for ‘‘required fee’’. 1975—Subsecs. (a), (c) to (f). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. 1962—Subsec. (a). Pub. L. 87–772 substituted ‘‘signa- ture placed’’ for ‘‘name printed’’, and struck out provi- sions requiring an attestation by an assistant commis- sioner or by one of the law examiners designated by the Commissioner, together with printed copies of the drawing and statement of the applicant, to be kept in books for that purpose. Subsec. (d). Pub. L. 87–772, among other charges, re- moved the requirement of a fee in connection with the voluntary surrender or cancellation of a registration. Subsec. (e). Pub. L. 87–772 substituted ‘‘an employee of the Office’’ for ‘‘a chief of division’’, among other changes. Subsec. (f). Pub. L. 87–772, among other changes, struck out ‘‘, signed by the Commissioner and sealed with the seal of the Patent Office’’ after ‘‘nature of such mistake’’. 1950—Subsec. (a). Act Aug. 17, 1950, made it unneces- sary to include in the certificate a statement of the ap- plicant. 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 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 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. 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. § 1058. Duration, affidavits and fees (a) Time periods for required affidavits Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods: (1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title. (2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registra- tion. (3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in sub- section (b) and the additional grace period sur- charge prescribed by the Director. (b) Requirements for affidavit The affidavit referred to in subsection (a) shall— (1)(A) state that the mark is in use in com- merce; (B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce; (C) be accompanied by such number of speci- mens or facsimiles showing current use of the mark in commerce as may be required by the Director; and (D) be accompanied by the fee prescribed by the Director; or (2)(A) set forth the goods and services re- cited in the registration on or in connection with which the mark is not in use in com- merce;