§ 1051. — Application for registration; verification.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1051]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1051. Application for registration; verification
(a) Application for use of trademark
(1) The owner of a trademark used in commerce may request
registration of its trademark on the principal register hereby
established by paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement, in such form
as may be prescribed 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 applicant and specify
that--
(A) 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 the owner of the mark sought to be registered;
(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 connection with the goods of such other
person, to cause confusion, or to cause mistake, or to deceive,
except that, in the case of every application claiming concurrent
use, the applicant shall--
(i) state exceptions to the claim of exclusive use; and
(ii) shall 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 concurrent use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires
registration.
(4) The applicant shall comply with such rules or regulations as may
be prescribed by the Director. The Director shall promulgate rules
prescribing 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 paying the prescribed fee and filing in the Patent
and Trademark Office an application and a verified statement, in such
form as may be prescribed 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 applicant 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 knowledge and belief,
the facts recited in the application are accurate; and
(D) that, 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 connection with the goods of such
other person, to cause confusion, or to cause mistake, 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 Director. The Director shall promulgate rules
prescribing 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 application filed under
subsection (b) of this section, 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 requirements of subsection (a) of this section.
(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 Trademark 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 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 acceptance 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 registration, and
notice of registration shall be published in the Official Gazette of the
Patent and Trademark Office. Such examination may include 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 registered.
(2) The Director shall extend, for one additional 6-month period,
the time for filing the statement of use under paragraph (1), upon
written request of the applicant before the expiration of the 6-month
period provided in paragraph (1). In addition to an extension under the
preceding sentence, the Director may, upon a showing of good cause by
the applicant, further extend the time for filing the statement of use
under paragraph (1) for periods aggregating not more than 24 months,
pursuant to written request of the applicant made before the expiration
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 continued 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 continued bona fide intention to use the mark in commerce. Any
request for an extension under this paragraph shall be accompanied by
payment of the prescribed fee. The Director shall issue regulations
setting forth guidelines for determining what constitutes good cause for
purposes 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
refused, the reasons for the refusal. An applicant may amend the
statement of use.
(4) The failure to timely file a verified statement of use under
paragraph (1) or an extension request under paragraph (2) shall result
in abandonment 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 specified in paragraphs (1) and
(2) for filing a statement 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 document 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 leaving 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 designate
by a document 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 on the Director.
(July 5, 1946, ch. 540, title I, Sec. 1, 60 Stat. 427; Pub. L. 87-772,
Sec. 1, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93-596, Sec. 1, Jan. 2,
1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 103, Nov. 16, 1988,
102 Stat. 3935; Pub. L. 105-330, title I, Sec. 103, title II,
Sec. 201(a), Oct. 30, 1998, 112 Stat. 3064, 3069; Pub. L. 106-113, div.
B, Sec. 1000(a)(9) [title IV, Sec. 4732(b)(1)(B)], Nov. 29, 1999, 113
Stat. 1536, 1501A-583; Pub. L. 107-273, div. C, title III,
Sec. 13207(b)(1), (2), Nov. 2, 2002, 116 Stat. 1906.)
Prior Provisions
Subsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, Secs. 1,
2, 33 Stat. 724; May 4, 1906, ch. 2081, Sec. 1, 34 Stat. 168; Feb. 18,
1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, Sec. 4, 46 Stat.
155; June 10, 1938, ch. 332, Sec. 1, 52 Stat. 638.
Subsec. (d) is from act Feb. 20, 1905, ch. 592, Sec. 3, 33 Stat.
725.
Amendments
2002--Subsec. (d)(1). Pub. L. 107-273, Sec. 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
commerce.'' for ``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.''
Subsec. (e). Pub. L. 107-273, Sec. 13207(b)(2), amended subsec. (e)
generally. Prior to amendment, subsec. (e) required applicant not
domiciled in United States to designate name and address of some person
resident in the United States on whom may be served notices or process
in proceedings affecting the mark and provided that notices or process
be served by leaving with such person or mailing to him a copy, or upon
Director if designated person cannot be found.
1999--Subsecs. (a), (b), (d), (e). Pub. L. 106-113 substituted
``Director'' for ``Commissioner'' wherever appearing.
1998--Subsec. (a). Pub. L. 105-330, Sec. 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, Sec. 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 trademark 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, Sec. 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, Sec. 201(a)(1)(B), which directed the striking out
of ``and, the mode or manner in which the mark is used on or in
connection with such goods or services'', 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, Sec. 103(c), amended par. (4)
generally. Prior to amendment, par. (4) read as follows: ``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, Sec. 103(1) to (7), inserted
``(a)'' preceding introductory provisions and substituted ``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 ``actually'' after ``the mark as'', and in par. (2),
substituted ``prescribed'' for ``filing''.
Subsecs. (b), (c). Pub. L. 100-667, Sec. 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, Sec. 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 person, to cause confusion, or
to cause mistake, or to deceive'' for ``as might be calculated to
deceive'', and struck out ``or services'' after ``use by others, the
goods''.
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, Sec. 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, Sec. 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 effective 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, Sec. 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, Sec. 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 relating to the registration of a
mark.''
Effective Date of 1988 Amendment
Section 136 of title I of Pub. L. 100-667 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 2002 Amendment
Pub. L. 107-273, div. C, title III, Sec. 13401, Nov. 2, 2002, 116
Stat. 1913, provided that: ``This subtitle [subtitle D (Secs. 13401-
13403) of title III of div. C of Pub. L. 107-273, enacting 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, Sec. 1000(a)(9) [title III, Sec. 3001(a)],
Nov. 29, 1999, 113 Stat. 1536, 1501A-545, provided that: ``This title
[enacting section 1129 of this title, amending 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 enacting 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, Sec. 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 provisions 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, Sec. 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, Sec. 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, Sec. 1, Oct. 27, 1992, 106 Stat. 3567, provided
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
Remedy Clarification Act'.''
Short Title of 1988 Amendment
Section 101 of title I of Pub. L. 100-667 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 provisions set
out as notes under sections 1051 and 1058 of this title] may be cited as
the `Trademark Law Revision Act of 1988'.''
Short Title of 1984 Amendment
Pub. L. 98-620, title I, Sec. 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 classified 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
Section 46(a) of act July 5, 1946, as amended by Pub. L. 106-43,
Sec. 6(b), Aug. 5, 1999, 113 Stat. 220, provided in part that all acts
and parts of acts inconsistent with this chapter are repealed effective
one year from July 5, 1946, but that ``nothing contained in this Act
[this chapter] shall be construed as limiting, restricting, modifying,
or repealing any statute in force on the effective date of this Act
[July 5, 1947] which does not relate to trademarks, or as restricting or
increasing the authority of any Federal department or regulatory agency
except as may be specifically provided in this Act [this chapter].''
Section 48 of act July 5, 1946, provided 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 18 U.S.C. 708], are
not repealed or affected by this Act.''
Savings Provision
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title III, Sec. 3008],
Nov. 29, 1999, 113 Stat. 1536, 1501A-551, provided that: ``Nothing in
this title [see Short Title of 1999 Amendments 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 Constitution.''
Separability
Section 50 of act July 5, 1946, provided 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.''
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, Secs. 1, 2, eff. May 24,
1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5,
Government Organization and Employees.
Pending Proceedings and Existing Registration and Rights Under Prior
Acts
Section 46(a) of act July 5, 1946, 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 effective 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].''
Sections 46(b) and 47 of act July 5, 1946, 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 renewed under the provisions of section 9 of this Act [section
1059 of this title]. Such registrations and the renewals thereof shall
be subject to and shall be entitled to the benefits of the provisions of
this Act [this chapter] to the same extent and with the same force and
effect as though registered on the principal register established 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 registrant's goods in
commerce under paragraph (f) of section 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
registrations 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 established by this Act [this chapter], and
may not be renewed unless renewal is required to support foreign
registrations. 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 eligible, 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 prosecution 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 Columbia or the United States Supreme Court at the effective 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 appeal, 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
proper.''
Section 49 of said act July 5, 1946, provided: ``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].''
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 affected 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.
Section Referred to in Other Sections
This section is referred to in sections 1060, 1062, 1063, 1068,
1071, 1091, 1092, 1094, 1126, 1141j of this title.
