§ 1058. — Duration.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1058]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1058. Duration
(a) In general
Each registration shall remain in force for 10 years, except that
the registration of any mark shall be canceled by the Director for
failure to comply with the provisions of subsection (b) of this section,
upon the expiration of the following time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this
chapter, at the end of 6 years following the date of registration.
(2) For registrations published under the provisions of section
1062(c) of this title, at the end of 6 years following the date of
publication under such section.
(3) For all registrations, at the end of each successive 10-year
period following the date of registration.
(b) Affidavit of continuing use
During the 1-year period immediately preceding the end of the
applicable time period set forth in subsection (a) of this section, the
owner of the registration shall pay the prescribed fee and file in the
Patent and Trademark Office--
(1) an affidavit setting forth those goods or services recited
in the registration on or in connection with which the mark is in
use in commerce and such number of specimens or facsimiles showing
current use of the mark as may be required by the Director; or
(2) an affidavit setting forth those goods or services recited
in the registration on or in connection with which the mark is not
in use in commerce and showing that any such nonuse is due to
special circumstances which excuse such nonuse and is not due to any
intention to abandon the mark.
(c) Grace period for submissions; deficiency
(1) The owner of the registration may make the submissions required
under this section within a grace period of 6 months after the end of
the applicable time period set forth in subsection (a) of this section.
Such submission is required to be accompanied by a surcharge prescribed
by the Director.
(2) If any submission filed under this section is deficient, the
deficiency may be corrected after the statutory time period and within
the time prescribed after notification of the deficiency. Such
submission is required to be accompanied by a surcharge prescribed by
the Director.
(d) Notice of affidavit requirement
Special notice of the requirement for affidavits under this section
shall be attached to each certificate of registration and notice of
publication under section 1062(c) of this title.
(e) Notification of acceptance or refusal of affidavits
The Director shall notify any owner who files 1 of the affidavits
required by this section of the Commissioner's \1\ acceptance or refusal
thereof and, in the case of a refusal, the reasons therefor.
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\1\ So in original. Probably should be ``Director's''.
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(f) Designation of resident for service of process and notices
If the registrant is not domiciled in the United States, the
registrant 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. 8, 60 Stat. 431; Pub. L. 93-596,
Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97-247, Sec. 8, Aug. 27,
1982, 96 Stat. 320; Pub. L. 100-667, title I, Sec. 110, Nov. 16, 1988,
102 Stat. 3939; Pub. L. 105-330, title I, Sec. 105, Oct. 30, 1998, 112
Stat. 3066; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B), (C)], Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Pub.
L. 107-273, div. C, title III, Sec. 13207(b)(3), Nov. 2, 2002, 116 Stat.
1906.)
Prior Provisions
Act Feb. 20, 1905, ch. 592, Sec. 12, 33 Stat. 727.
Amendments
2002--Subsec. (f). Pub. L. 107-273 amended subsec. (f) generally.
Prior to amendment, text read as follows: ``If the registrant is not
domiciled in the United States, the registrant shall designate by a
written document filed in the Patent and Trademark Office the name and
address of some 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,
such notice or process may be served upon the Director.''
1999--Subsecs. (a) to (c). Pub. L. 106-113, Sec. 1000(a)(9) [title
IV, Sec. 4732(b)(1)(B)], substituted ``Director'' for ``Commissioner''
wherever appearing.
Subsec. (e). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B), (C)], amended subsec. (e) identically, substituting
``Director'' for ``Commissioner''.
Subsec. (f). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B)], substituted ``Director'' for ``Commissioner''.
1998--Pub. L. 105-330 amended section catchline and text generally.
Prior to amendment, text consisted of subsecs. (a) to (c) relating to
affidavits of continuing use, registrations published under other
provisions of law, and notification of acceptance or refusal of
affidavits.
1988--Subsec. (a). Pub. L. 100-667 substituted ``ten'' for
``twenty'' and ``setting forth those goods or services recited in the
registration on or in connection with which the mark is in use in
commerce and attaching to the affidavit a specimen or facsimile showing
current use of the mark, or showing that any'' for ``showing that said
mark is in use in commerce or showing that its''.
1982--Subsecs. (a), (b). Pub. L. 97-247 struck out ``still'' after
``showing that said mark is'', and inserted ``in commerce'' after
``use''.
1975--Subsecs. (a), (b). Pub. L. 93-596 substituted ``Patent and
Trademark Office'' for ``Patent Office''.
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
Amendment by Pub. L. 105-330 effective on the date that is 1 year
after Oct. 30, 1998, see section 110 of Pub. L. 105-330, set out as a
note under section 1051 of this title.
Pub. L. 105-330, title I, Sec. 109(a), Oct. 30, 1998, 112 Stat.
3069, provided that: ``The provisions of section 8 of the Trademark Act
of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall
apply to a registration for trademark issued or renewed for a 20-year
term, if the expiration date of the registration is 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 under section 1051 of this title].''
For provisions relating to applicability of amendment by Pub. L.
105-330 to applications for registration of trademarks, see section
109(b) of Pub. L. 105-330, set out as a note under section 1051 of this
title.
Pub. L. 105-330, title I, Sec. 109(c), Oct. 30, 1998, 112 Stat.
3069, provided that: ``The provisions of section 8 of the Trademark Act
of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall
apply to the filing of an affidavit if the sixth or tenth anniversary of
the registration, or the sixth anniversary of publication of the
registration under section 12(c) of the Trademark Act of 1946 [15 U.S.C.
1062(c)], for which the affidavit is filed is 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
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 1982 Amendment
Amendment by Pub. L. 97-247 effective six months after Aug. 27,
1982, see section 17(c) of Pub. L. 97-247, set out as a note under
section 294 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.
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, and
saving clause, 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, with certain exceptions, to Secretary of
Commerce, with power to delegate, 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.
References to Trademark Act of 1946
Pub. L. 105-330, title I, Sec. 102, Oct. 30, 1998, 112 Stat. 3064,
provided that: ``For purposes of this title [see Short Title of 1998
Amendment note set out under section 1051 of this title], the Act
entitled `An Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes', approved July 5,
1946 (15 U.S.C. 1051 et seq.), shall be referred to as the `Trademark
Act of 1946'.''
Pending Applications
Act July 5, 1946, ch. 540, title XI, Sec. 51, as added Nov. 16,
1988, Pub. L. 100-667, title I, Sec. 135, 102 Stat. 3948, provided that:
``All certificates of registration based upon applications for
registration pending in the Patent and Trademark Office on the effective
date of the Trademark Law Revision Act of 1988 [see Effective Date of
1988 Amendment note set out under section 1051 of this title] shall
remain in force for a period of 10 years.''
Section Referred to in Other Sections
This section is referred to in section 1059 of this title.
