§ 1064. — Cancellation of 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: 15USC1064]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER I--THE PRINCIPAL REGISTER
Sec. 1064. Cancellation of registration
A petition to cancel a registration of a mark, stating the grounds
relied upon, may, upon payment of the prescribed fee, be filed as
follows by any person who believes that he is or will be damaged,
including as a result of dilution under section 1125(c) of this title,
by the registration of a mark on the principal register established by
this chapter, or under the Act of March 3, 1881, or the Act of February
20, 1905:
(1) Within five years from the date of the registration of the
mark under this chapter.
(2) Within five years from the date of publication under section
1062(c) of this title of a mark registered under the Act of March 3,
1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name
for the goods or services, or a portion thereof, for which it is
registered, or is functional, or has been abandoned, or its
registration was obtained fraudulently or contrary to the provisions
of section 1054 of this title or of subsection (a), (b), or (c) of
section 1052 of this title for a registration under this chapter, or
contrary to similar prohibitory provisions of such prior Acts for a
registration under such Acts, or if the registered mark is being
used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection
with which the mark is used. If the registered mark becomes the
generic name for less than all of the goods or services for which it
is registered, a petition to cancel the registration for only those
goods or services may be filed. A registered mark shall not be
deemed to be the generic name of goods or services solely because
such mark is also used as a name of or to identify a unique product
or service. The primary significance of the registered mark to the
relevant public rather than purchaser motivation shall be the test
for determining whether the registered mark has become the generic
name of goods or services on or in connection with which it has been
used.
(4) At any time if the mark is registered under the Act of March
3, 1881, or the Act of February 20, 1905, and has not been published
under the provisions of subsection (c) of section 1062 of this
title.
(5) At any time in the case of a certification mark on the
ground that the registrant (A) does not control, or is not able
legitimately to exercise control over, the use of such mark, or (B)
engages in the production or marketing of any goods or services to
which the certification mark is applied, or (C) permits the use of
the certification mark for purposes other than to certify, or (D)
discriminately refuses to certify or to continue to certify the
goods or services of any person who maintains the standards or
conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the
grounds specified in paragraphs (3) and (5) of this section any mark
registered on the principal register established by this chapter, and
the prescribed fee shall not be required. Nothing in paragraph (5) shall
be deemed to prohibit the registrant from using its certification mark
in advertising or promoting recognition of the certification program or
of the goods or services meeting the certification standards of the
registrant. Such uses of the certification mark shall not be grounds for
cancellation under paragraph (5), so long as the registrant does not
itself produce, manufacture, or sell any of the certified goods or
services to which its identical certification mark is applied.
(July 5, 1946, ch. 540, title I, Sec. 14, 60 Stat. 433; Pub. L. 87-772,
Sec. 9, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97-247, Sec. 9(b), Aug. 27,
1982, 96 Stat. 320; Pub. L. 98-620, title I, Sec. 102, Nov. 8, 1984, 98
Stat. 3335; Pub. L. 100-667, title I, Sec. 115, Nov. 16, 1988, 102 Stat.
3940; Pub. L. 105-330, title II, Sec. 201(a)(4), title III, Sec. 301,
Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106-43, Sec. 2(c), Aug. 5, 1999,
113 Stat. 218.)
References in Text
Acts March 3, 1881 and February 20, 1905, referred to in opening
par. and pars. (2) and (4), 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
Act Feb. 20, 1905, ch. 592, Sec. 13, 33 Stat. 728.
Amendments
1999--Pub. L. 106-43 inserted ``, including as a result of dilution
under section 1125(c) of this title,'' after ``damaged'' in introductory
provisions.
1998--Pub. L. 105-330, Sec. 301, inserted at end ``Nothing in
paragraph (5) shall be deemed to prohibit the registrant from using its
certification mark in advertising or promoting recognition of the
certification program or of the goods or services meeting the
certification standards of the registrant. Such uses of the
certification mark shall not be grounds for cancellation under paragraph
(5), so long as the registrant does not itself produce, manufacture, or
sell any of the certified goods or services to which its identical
certification mark is applied.''
Par. (3). Pub. L. 105-330, Sec. 201(a)(4), inserted ``or is
functional,'' before ``or has been abandoned''.
1988--Pub. L. 100-667, Sec. 115(1), (7), in introductory provisions,
inserted ``as follows'' and substituted ``1905:'' for ``1905--'', and in
concluding proviso substituted ``paragraphs (3) and (5)'' for
``subsections (c) and (e)''.
Par. (1). Pub. L. 100-667, Sec. 115(2), substituted ``(1) Within''
for ``(a) within'' and ``chapter.'' for ``chapter; or''.
Par. (2). Pub. L. 100-667, Sec. 115(3), substituted ``(2) Within''
for ``(b) within'', and ``1905.'' for ``1905; or''.
Par. (3). Pub. L. 100-667, Sec. 115(4), substituted ``(3)'' for
``(c)'' and amended text generally. Prior to amendment, text read as
follows: ``at any time if the registered mark becomes the common
descriptive name of an article or substance, or has been abandoned, or
its registration was obtained fraudulently or contrary to the provisions
of section 1054 of this title or of subsections (a), (b), or (c) of
section 1052 of this title for a registration hereunder, or contrary to
similar prohibitory provisions of said prior Acts for a registration
thereunder, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the
goods or services in connection with which the mark is used. A
registered mark shall not be deemed to be the common descriptive name of
goods or services solely because such mark is also used as a name of or
to identify a unique product or service. The primary significance of the
registered mark to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered mark has become
the common descriptive name of goods or services in connection with
which it has been used; or''.
Par. (4). Pub. L. 100-667, Sec. 115(5), substituted ``(4) At'' for
``(d) at'', and ``title.'' for ``title; or''.
Par. (5). Pub. L. 100-667, Sec. 115(6), substituted ``(5) At'' for
``(e) at'' and redesignated former pars. (1) to (4) as subpars. (A) to
(D), respectively.
1984--Par. (c). Pub. L. 98-620 inserted provision that a registered
mark shall not be deemed to be the common descriptive name of goods or
services solely because such mark is also used as a name of or to
identify a unique product or service, and that the primary significance
of the registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the registered mark
has become the common descriptive name of goods or services in
connection with which it has been used.
1982--Pub. L. 97-247 struck out ``verified'' before ``petition to
cancel'' in provision preceding par. (a).
1962--Pub. L. 87-772 inserted provisions which require a verified
petition to cancel a registration, redesignated par. (d) as (e), added
par. (d) which is composed of provisions formerly part of par. (c), and
in said par. (c), substituted ``registrant'' for ``assignee'', and
struck out ``on which the patent has expired'' before ``or has been
abandoned'', and ``has been assigned and'' before ``is being used by''.
Effective Date of 1999 Amendment
Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and applicable
only to any application for registration filed on or after Jan. 16,
1996, see section 2(e) of Pub. L. 106-43, set out as a note under
section 1052 of this title.
Effective Date of 1998 Amendment
Amendment by section 201(a)(4) of 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 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.
Finality of Judgments Prior to November 8, 1984
Section 104 of title I of Pub. L. 98-620 provided that: ``Nothing in
this title [amending this section and section 1127 of this title and
enacting provisions set out as a note under section 1051 of this title]
shall be construed to provide a basis for reopening of any final
judgment entered prior to the date of enactment of this title [Nov. 8,
1984].''
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 Federal Trade Commission, with certain
exceptions, to Chairman of such Commission, see Reorg. Plan No. 8 of
1950, Sec. 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat. 1264, set out
under section 41 of this title.
Restriction on Use of Funds To Cancel Registration of Trademarks
For provisions restricting the use of funds authorized to be
appropriated to carry out section 41 et seq. of this title for fiscal
year 1980, 1981, or 1982, for the purpose of taking any action under
this section with respect to the cancellation of the registration of any
mark on the ground that such mark has become the common descriptive name
of an article or substance, see section 18 of Pub. L. 96-252, set out as
a note under section 57c of this title.
Section Referred to in Other Sections
This section is referred to in sections 1052, 1065, 1094 of this
title.
