§ 1052. — Trademarks registrable on principal register; concurrent registration.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1052]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1052. Trademarks registrable on principal register;
concurrent registration
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration on
the principal register on account of its nature unless it--
(a) Consists of or comprises immoral, deceptive, 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 individual except by his written
consent, or the name, signature, or portrait of a deceased President 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
previously 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 determines that confusion, mistake, or
deception is not likely to result from the continued use by more than
one person of the same or similar marks under conditions and limitations
as to the mode or place of use of the marks or the goods on or in
connection with which such marks are used, concurrent registrations may
be issued to such persons when they have become entitled to use such
marks as a result of their concurrent lawful use in commerce prior to
(1) the earliest of the filing dates of the applications pending or of
any registration issued under this chapter; (2) July 5, 1947, in the
case of registrations previously issued under the Act of March 3, 1881,
or February 20, 1905, and continuing in full force and effect on that
date; or (3) July 5, 1947, in the case of applications filed under the
Act of February 20, 1905, and registered after July 5, 1947. Use prior
to the filing date of any pending application or a registration shall
not be required when the owner of such application or registration
consents to the grant of a concurrent registration to the applicant.
Concurrent registrations may also be issued by the Director when a court
of competent jurisdiction has finally determined that more than one
person is entitled to use the same or similar marks in commerce. In
issuing concurrent registrations, the Director shall prescribe
conditions and limitations as to the mode or place of use of the mark or
the goods on or in connection with which such mark is registered to the
respective persons.
(e) Consists of a mark which (1) when used on or in connection with
the goods of the applicant is merely descriptive or deceptively
misdescriptive of them, (2) when used on or in connection with the goods
of the applicant is primarily geographically descriptive of them, except
as indications of regional origin may be registrable under section 1054
of this title, (3) when used on or in connection with the goods of the
applicant is primarily geographically deceptively misdescriptive of
them, (4) is primarily merely a surname, or (5) comprises any matter
that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d),
(e)(3), and (e)(5) of this section, nothing in this chapter shall
prevent the registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce. The Director
may accept as prima facie evidence that the mark has become distinctive,
as used on or in connection with the applicant's goods in commerce,
proof of substantially exclusive and continuous use thereof as a mark by
the applicant in commerce for the five years before the date on which
the claim of distinctiveness is made. Nothing in this section shall
prevent the registration of a mark which, when used on or in connection
with the goods of the applicant, is primarily geographically deceptively
misdescriptive of them, and which became distinctive of the applicant's
goods in commerce before December 8, 1993.
A mark which when used would cause dilution under section 1125(c) of
this title may be refused registration only pursuant to a proceeding
brought under section 1063 of this title. A registration for a mark
which when used would cause dilution under section 1125(c) of this title
may be canceled pursuant to a proceeding brought under either section
1064 of this title or section 1092 of this title.
(July 5, 1946, ch. 540, title I, Sec. 2, 60 Stat. 428; Pub. L. 87-772,
Sec. 2, 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. 104, Nov. 16, 1988,
102 Stat. 3937; Pub. L. 103-182, title III, Sec. 333(a), Dec. 8, 1993,
107 Stat. 2114; Pub. L. 103-465, title V, Sec. 522, Dec. 8, 1994, 108
Stat. 4982; Pub. L. 105-330, title II, Sec. 201(a)(2), (12), Oct. 30,
1998, 112 Stat. 3069, 3070; Pub. L. 106-43, Sec. 2(a), Aug. 5, 1999, 113
Stat. 218; 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.)
References in Text
Acts March 3, 1881, and February 20, 1905, referred to in subsec.
(d), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502, and Feb. 20, 1905,
ch. 592, 33 Stat. 724, which were repealed insofar as inconsistent with
this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat. 444. Act
Feb. 20, 1905, was classified to sections 81 to 109 of this title.
Prior Provisions
Acts Feb. 20, 1905, ch. 592, Sec. 5, 33 Stat. 725; Mar. 2, 1907, ch.
2573, Sec. 1, 34 Stat. 1251; Feb. 18, 1911, ch. 113, 36 Stat. 918; Jan.
8, 1913, ch. 7, 37 Stat. 649; Mar. 19, 1920, ch. 104, Sec. 9, 41 Stat.
535; June 7, 1924, ch. 341, 43 Stat. 647.
Amendments
1999--Pub. L. 106-43 inserted concluding provisions.
Subsecs. (d), (f). Pub. L. 106-113 substituted ``Director'' for
``Commissioner'' wherever appearing.
1998--Pub. L. 105-330, Sec. 201(a)(12), substituted ``trademark''
for ``trade-mark'' in introductory provisions.
Subsec. (e). Pub. L. 105-330, Sec. 201(a)(2)(A), struck out ``or''
before ``(4)'' and inserted ``, or (5) comprises any matter that, as a
whole, is functional'' before period at end.
Subsec. (f). Pub. L. 105-330, Sec. 201(a)(2)(B), substituted
``subsections (a), (b), (c), (d), (e)(3), and (e)(5)'' for ``paragraphs
(a), (b), (c), (d), and (e)(3)''.
1994--Subsec. (a). Pub. L. 103-465 amended subsec. (a) generally.
Prior to amendment, subsec. (a) read as follows: ``Consists of or
comprises immoral, deceptive, 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.''
1993--Subsec. (e). Pub. L. 103-182, Sec. 333(a)(1), amended subsec.
(e) generally. Prior to amendment, subsec. (e) read as follows:
``Consists of a mark which, (1) when used on or in connection with the
goods of the applicant is merely descriptive or deceptively
misdescriptive of them, or (2) when used on or in connection with the
goods of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, except as indications of regional
origin may be registrable under section 1054 of this title, or (3) is
primarily merely a surname.''
Subsec. (f). Pub. L. 103-182, Sec. 333(a)(2), substituted ``(d), and
(e)(3)'' for ``and (d)'' and inserted at end ``Nothing in this section
shall prevent the registration of a mark which, when used on or in
connection with the goods of the applicant, is primarily geographically
deceptively misdescriptive of them, and which became distinctive of the
applicant's goods in commerce before December 8, 1993.''
1988--Subsec. (d). Pub. L. 100-667, Sec. 104(1), amended subsec. (d)
generally. Prior to amendment, subsec. (d) read as follows: ``Consists
of or comprises a mark which so resembles a mark registered in the
Patent and Trademark Office or a mark or trade name previously used in
the United States by another and not abandoned, as to be likely, when
applied to the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive: Provided, That when the Commissioner determines
that confusion, mistake, or deception is not likely to result from the
continued use by more than one person of the same or similar marks under
conditions and limitations as to the mode or place of use of the marks
or the goods in connection with which such marks are used, concurrent
registrations may be issued to such persons when they have become
entitled to use such marks as a result of their concurrent lawful use in
commerce prior to (i) the earliest of the filing dates of the
applications pending or of any registration issued under this chapter;
or (ii) July 5, 1947, in the case of registrations previously issued
under the Act of March 3, 1881, or February 20, 1905, and continuing in
full force and effect on that date; or (iii) July 5, 1947, in the case
of applications filed under the Act of February 20, 1905, and registered
after July 5, 1947. Concurrent registrations may also be issued by the
Commissioner when a court of competent jurisdiction has finally
determined that more than one person is entitled to use the same or
similar marks in commerce. In issuing concurrent registrations, the
Commissioner shall prescribe conditions and limitations as to the mode
or place of use of the mark or the goods in connection with which such
mark is registered to the respective persons.''
Subsec. (e). Pub. L. 100-667, Sec. 104(2), substituted ``used on or
in connection with'' for ``applied to'' in two places.
Subsec. (f). Pub. L. 100-667, Sec. 104(3), substituted ``used on or
in connection with'' for ``applied to'' and ``five years before the date
on which the claim of distinctiveness is made'' for ``five years next
preceding the date of the filing of the application for its
registration''
1975--Subsec. (d). Pub. L. 93-596 substituted ``Patent and Trademark
Office'' for ``Patent Office''.
1962--Subsec. (d). Pub. L. 87-772, among other changes, substituted
provisions authorizing the issuance of concurrent registrations to
persons when they have become entitled to use such marks as a result of
their concurrent lawful use in commerce prior to the earliest of the
filing dates of the applications pending or of any registration issued
under this chapter, or July 5, 1947, in the case of registrations
previously issued under the act of Mar. 3, 1881, or Feb. 20, 1905, and
continuing in full force and effect on that date, or July 5, 1947, in
the case of applications under the act of Feb. 20, 1905, and registered
after July 5, 1947, for provisions which restricted issuance of
concurrent registrations to persons entitled to use such mark as a
result of their concurrent lawful use thereof in commerce prior to any
of the filing dates of the applications involved, and provisions
directing that issuance of the mark be upon such conditions and
limitations as to the mode or place of use of the marks or the goods in
connection with which such marks are used, for provisions which required
issuance under conditions and limitations as to the mode or place of use
of the goods in connection with which such registrations may be granted,
and eliminated provisions which limited confusion, mistake, or deception
to purchasers, required written notice of applications for concurrent
registrations and of hearings thereon, and publication in the Official
Gazette upon a decision to grant such a registration and permitted a
court to order such a registration under section 4915 of the Revised
Statutes.
Effective Date of 1999 Amendments
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.
Pub. L. 106-43, Sec. 2(e), Aug. 5, 1999, 113 Stat. 218, provided
that: ``The amendments made by this section [amending this section and
sections 1063, 1064, and 1092 of this title] shall take effect on the
date of enactment of this Act [Aug. 5, 1999] and shall apply only to any
application for registration filed on or after January 16, 1996.''
Effective Date of 1998 Amendment
Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and applicable
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, see section 201(b) of Pub. L. 105-330, set
out as a note under section 1051 of this title.
Effective Date of 1994 Amendment
Section 523 of title V of Pub. L. 103-465 provided that: ``The
amendments made by this subtitle [subtitle B (Secs. 521-523) of title V
of Pub. L. 103-465, amending this section and section 1127 of this
title] take effect one year after the date on which the WTO Agreement
enters into force with respect to the United States [Jan. 1, 1995].''
Effective Date of 1993 Amendment
Section 335 of title III of Pub. L. 103-182 provided that:
``(a) In General.--Subject to subsections (b) and (c), the
amendments made by this subtitle [subtitle C (Secs. 331-335) of title
III of Pub. L. 103-182, enacting section 104A of Title 17, Copyrights,
amending this section, section 1091 of this title, and section 104 of
Title 35, Patents, and amending provisions set out as a note under
section 109 of Title 17] take effect on the date the Agreement [North
American Free Trade Agreement] enters into force with respect to the
United States [Jan. 1, 1994].
``(b) Section 331.--The amendments made by section 331 [amending
section 104 of Title 35] shall apply to all patent applications that are
filed on or after the date of the enactment of this Act [Dec. 8, 1993]:
Provided, That an applicant for a patent, or a patentee, may not
establish a date of invention by reference to knowledge or use thereof,
or other activity with respect thereto, in a NAFTA country, except as
provided in sections 119 and 365 of title 35, United States Code, that
is earlier than the date of the enactment of this Act.
``(c) Section 333.--The amendments made by section 333 [amending
this section and section 1091 of this title] shall apply only to
trademark applications filed on or after the date of the enactment of
this Act.''
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 chapter on pending
proceedings and existing registrations and rights under prior acts, see
notes set out under section 1051 of this title.
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.
Uruguay Round Agreements: Entry Into Force
The Uruguay Round Agreements, including the World Trade Organization
Agreement and agreements annexed to that Agreement, as referred to in
section 3511(d) of Title 19, Customs Duties, entered into force with
respect to the United States on Jan. 1, 1995. See note set out under
section 3511 of Title 19.
Marks Registered Under Ten-Year Proviso of Trade-Mark Act of 1905
Marks registered under the ``ten-year proviso'' of section 5 of the
act of Feb. 20, 1905, as amended, deemed to have become distinctive of
the registrant's goods in commerce under par. (f) of this section, see
section 46(b) of act July 5, 1946, set out in note under section 1051 of
this title.
Section Referred to in Other Sections
This section is referred to in sections 1051, 1064, 1068, 1091, 1094
of this title.
