15 U.S.C. § 1113 — Fees

Page 1308 TITLE 15—COMMERCE AND TRADE § 1112 1052, 1057, 1058, 1060, 1062, 1063, 1065, 1067, 1069, 1071, 1092, 1112, 1113, 1116 to 1120, 1123, and 1127 of this title, and sections 2 to 4, 6 to 8, 10, 11, 21 to 26, 31 to 33, 41, 104, 119, 121, 122, 135, 142 to 144, 146, 152, 153, 253 to 255, 261, 288, and 293 of Title 35, Patents, and enacting provisions set out as a note under section 1 of title 35] shall be- come effective upon enactment [Jan. 2, 1975]. However, any registrant may continue to give notice of his reg- istration in accordance with section 29 of the Trade- mark Act of 1946 (60 Stat. 427), as amended Oct. 9, 1962 (76 Stat. 769) [this section], as an alternative to notice in accordance with section 29 of the Trademark Act as amended by section 2 of this Act, regardless of whether his mark was registered before or after the effective date of this Act.’’ 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. § 1112. Classification of goods and services; reg- istration in plurality of classes The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights. The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce: Provided, That if the Director by reg- ulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for filing an appli- cation in each class shall be paid, and the Direc- tor may issue a single certificate of registration for such mark. (July 5, 1946, ch. 540, title IV, § 30, 60 Stat. 436; Pub. L. 87–772, § 16, Oct. 9, 1962, 76 Stat. 773; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 126, Nov. 16, 1988, 102 Stat. 3943; 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 PRIOR PROVISIONS Act May 4, 1906, ch. 2081, § 2, 34 Stat. 169. AMENDMENTS 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1988—Pub. L. 100–667 inserted ‘‘or registrant’s’’ after ‘‘applicant’s’’ and substituted ‘‘may apply’’ for ‘‘may file an application’’, ‘‘goods or services on or in connec- tion with which he or she is using or has a bona fide in- tention to use the mark in commerce:’’ for ‘‘goods and services upon or in connection with which he is actu- ally using the mark:’’, and ‘‘Provided, That if the Com- missioner by regulation permits the filing of an appli- cation for the registration of a mark for goods or serv- ices which fall’’ for ‘‘Provided, That when such goods or services fall’’. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. 1962—Pub. L. 87–772, among other changes, sub- stituted ‘‘may’’ for ‘‘shall’’. 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. 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. § 1113. Fees (a) Applications; services; materials The Director shall establish fees for the filing and processing of an application for the registra- tion of a trademark or other mark and for all other services performed by and materials fur- nished by the Patent and Trademark Office re- lated to trademarks and other marks. Fees es- tablished under this subsection may be adjusted by the Director once each year to reflect, in the aggregate, any fluctuations during the pre- ceding 12 months in the Consumer Price Index, as determined by the Secretary of Labor. Changes of less than 1 percent may be ignored. No fee established under this section shall take effect until at least 30 days after notice of the fee has been published in the Federal Register and in the Official Gazette of the Patent and Trademark Office. (b) Waiver; Indian products The Director may waive the payment of any fee for any service or material related to trade- marks or other marks in connection with an oc- casional request made by a department or agen- cy of the Government, or any officer thereof. The Indian Arts and Crafts Board will not be charged any fee to register Government trade- marks of genuineness and quality for Indian products or for products of particular Indian tribes and groups. (July 5, 1946, ch. 540, title V, § 31, 60 Stat. 437; Pub. L. 85–609, § 1(e), Aug. 8, 1958, 72 Stat. 540; Pub. L. 89–83, § 3, July 24, 1965, 79 Stat. 260; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96–517, § 5, Dec. 12, 1980, 94 Stat. 3018; Pub. L. 97–247, § 3(f), Aug. 27, 1982, 96 Stat. 319; Pub. L. 97–256, title I, § 103, Sept. 8, 1982, 96 Stat. 816; Pub. L. 102–204, § 5(f)(1), Dec. 10, 1991, 105 Stat. 1640; Pub. L. 105–330, title II, § 201(a)(7), 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.) Page 1309 TITLE 15—COMMERCE AND TRADE § 1113 Editorial Notes PRIOR PROVISIONS Acts Feb. 20, 1905, ch. 592, §§ 14, 15, 33 Stat. 728; Mar. 19, 1920, ch. 104, § 8, 41 Stat. 535; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155. AMENDMENTS 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1998—Pub. L. 105–330 made technical amendment re- lating to section catchline. 1991—Subsec. (a). Pub. L. 102–204 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as fol- lows: ‘‘The Commissioner will establish fees for the fil- ing and processing of an application for the registra- tion of a trademark or other mark and for all other services performed by and materials furnished by the Patent and Trademark Office related to trademarks and other marks. However, no fee for the filing or proc- essing of an application for the registration of a trade- mark or other mark or for the renewal or assignment of a trademark or other mark will be adjusted more than once every three years. No fee established under this section will take effect prior to sixty days fol- lowing notice in the Federal Register.’’ 1982—Subsec. (a). Pub. L. 97–256 struck out ‘‘of Pat- ents’’ after ‘‘Commissioner’’. Pub. L. 97–247 struck out provisions directing that fees be set and adjusted by the Commissioner to re- cover in aggregate 50 per centum of the estimated aver- age cost to the Office of processing and that fees for all other services or materials related to trademarks and other marks recover the estimated average cost to the Office of performing the service or furnishing the mate- rial. 1980—Subsec. (a). Pub. L. 96–517 in revising fee provi- sions required the Commissioner to establish fees based on recovery of estimated average cost of processing ap- plications, performing services and providing material; authorized triennial adjustments; and prescribed an ef- fective date for fees; deleted prior provisions con- taining statutory schedule covering fees for filing: ap- plications for registration and renewals, affidavits, re- vival petitions for abandoned applications, opposition or application for cancellation, disclaimers, and notice of benefits for a mark to be published; and fees cov- ering: appeals from examiners in charge of registration, certificates of amendment, certifying, printed copies of registered marks, and recordation of documents and pa- pers relating to property in a registration or applica- tion. Subsec. (b). Pub. L. 96–517 added subsec. (b) and struck out former subsec. (b) authorizing Commis- sioner to establish charges for copies of records, publi- cations, or services of Patent and Trademark Office. See subsec. (a). Subsec. (c). Pub. L. 96–517 in revising fee provisions struck out subsec. (c) authorizing Commissioner to re- fund any mistaken or excessive payments. 1975—Subsec. (a). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. Subsec. (b). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’. 1965—Pub. L. 89–83 increased fees for filing an applica- tion for registration of a mark from $25 to $35; for issuance of a new certificate of registration following a change of ownership of a mark or correction of a reg- istrant’s mistake from $10 to $15; for a certificate of correction of registrant’s mistake from $10 to $15; for filing a disclaimer from $10 to $15; and for recording an assignment, agreement, or other paper relating to the property in a registration or application from $3 for documents not exceeding six pages plus $1 for each ad- ditional two pages or less and 50 cents additional for each additional registration or application included in one writing, to a $20 fee for every document plus an ad- ditional fee of $3 for each additional item where the document relates to more than one application or reg- istration; eliminated provisions which established fees for the surrender or cancellation of a registration, for an abstract of title, for a title report required for office use, for certificates that marks have not been reg- istered, and for copies of various specified records and documents; added the fees for filing and affidavit under section 1058(a) or (b) of this title and for filing a peti- tion for the revival of an abandoned application; em- powered the Commissioner to establish charges for cop- ies of records, publications or services furnished by the Patent Office; and made the provisions relating to re- funds of sums paid by mistake permissive. 1958—Pub. L. 85–609 struck out ‘‘to the Commis- sioner’’ after ‘‘on appeal from an examiner in charge of the registration of marks’’, and provisions which re- quired payment of a $25 fee on appeals from an exam- iner in charge of interferences to the Commissioner. 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 1982 AMENDMENT Amendment by Pub. L. 97–247 effective Oct. 1, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of Title 35, Patents. EFFECTIVE DATE OF 1980 AMENDMENT Amendment by Pub. L. 96–517 effective Dec. 12, 1980, with provision for continuation of fees in effect as of such date until corresponding fees are established under this section, see section 8(a), (d) of Pub. L. 96–517, set out as a note under section 41 of Title 35, Patents. 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 1965 AMENDMENT For effective date and applicability of amendment by Pub. L. 89–83, see section 7(a), (d) of Pub. L. 89–83, set out as a note under section 41 of Title 35, Patents. EFFECTIVE DATE OF 1958 AMENDMENT For effective date and applicability of amendment by Pub. L. 85–609, see section 3 of Pub. L. 85–609, set out as a note under section 1067 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. APPROPRIATIONS AND FEES AUTHORIZED TO BE CARRIED OVER For provisions authorizing fees collected under this chapter, and certain appropriations, to remain avail- able until expended, see section 2 of Pub. L. 99–607, set out as a note under section 42 of Title 35, Patents. TRADEMARK FEES Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4203], Nov. 29, 1999, 113 Stat. 1536, 1501A–554, as amended by Page 1310 TITLE 15—COMMERCE AND TRADE § 1114 Pub. L. 107–273, div. C, title III, § 13208, Nov. 2, 2002, 116 Stat. 1908, provided that: ‘‘Notwithstanding the second sentence of section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)), the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office is authorized in fiscal year 2000 to adjust trademark fees without regard to fluctuations in the Consumer Price Index during the preceding 12 months.’’ Pub. L. 103–179, § 4, Dec. 3, 1993, 107 Stat. 2040, provided that: ‘‘Effective on the date of the enactment of this Act [Dec. 3, 1993], the fee under section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for filing an application for the registration of a trademark shall be $245. Any adjustment of such fee under the second sen- tence of such section may not be effective before Octo- ber 1, 1994.’’ Pub. L. 102–204, § 5(f)(2), Dec. 10, 1991, 105 Stat. 1640, provided that fees established by Commissioner of Pat- ents and Trademarks under 15 U.S.C. 1113(a) during fis- cal year 1992 could reflect fluctuations during the pre- ceding 3 years in the Consumer Price Index and could take effect on or after 1 day after such fees are pub- lished in the Federal Register and that the last sen- tence of 31 U.S.C. 31(a) and 5 U.S.C. 553 did not apply to the establishment of such fees. Similar provisions were contained in the following prior appropriation acts: Pub. L. 100–703, title I, § 103(a), Nov. 19, 1988, 102 Stat. 4674. Pub. L. 99–607, § 3(a), Nov. 6, 1986, 100 Stat. 3470. REORGANIZATION PLAN NO. 5 OF 1950 Amendment by Pub. L. 85–609 as subject to Reorga- nization Plan No. 5 of 1950, see note set out under sec- tion 1067 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. § 1114. Remedies; infringement; innocent in- fringement by printers and publishers (1) Any person who shall, without the consent of the registrant— (a) use in commerce any reproduction, coun- terfeit, copy, or colorable imitation of a reg- istered mark in connection with the sale, of- fering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such re- production, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements in- tended to be used in commerce upon or in con- nection with the sale, offering for sale, dis- tribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. As used in this paragraph, the term ‘‘any per- son’’ includes the United States, all agencies and instrumentalities thereof, and all individ- uals, firms, corporations, or other persons act- ing for the United States and with the author- ization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumen- tality of a State acting in his or her official ca- pacity. The United States, all agencies and in- strumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and 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. (2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a per- son bringing an action under section 1125(a) or (d) of this title shall be limited as follows: (A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or in- nocent violator, the owner of the right in- fringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing. (B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the pub- lisher or distributor of such newspaper, maga- zine, or other similar periodical or electronic communication shall be limited to an injunc- tion against the presentation of such adver- tising matter in future issues of such news- papers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this sub- paragraph shall apply only to innocent in- fringers and innocent violators. (C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125(a) of this title with respect to an issue of a news- paper, magazine, or other similar periodical or an electronic communication containing in- fringing matter or violating matter where re- straining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publica- tion and distribution of such periodical or transmission of such electronic communica- tion is customarily conducted in accordance with sound business practice, and not due to