§ 1126. — International conventions.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1126]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER III--GENERAL PROVISIONS
Sec. 1126. International conventions
(a) Register of marks communicated by international bureaus
The Director shall keep a register of all marks communicated to him
by the international bureaus provided for by the conventions for the
protection of industrial property, trademarks, trade and commercial
names, and the repression of unfair competition to which the United
States is or may become a party, and upon the payment of the fees
required by such conventions and the fees required in this chapter may
place the marks so communicated upon such register. This register shall
show a facsimile of the mark or trade or commercial name; the name,
citizenship, and address of the registrant; the number, date, and place
of the first registration of the mark, including the dates on which
application for such registration was filed and granted and the term of
such registration; a list of goods or services to which the mark is
applied as shown by the registration in the country of origin, and such
other data as may be useful concerning the mark. This register shall be
a continuation of the register provided in section 1(a) of the Act of
March 19, 1920.
(b) Benefits of section to persons whose country of origin is party to
convention or treaty
Any person whose country of origin is a party to any convention or
treaty relating to trademarks, trade or commercial names, or the
repression of unfair competition, to which the United States is also a
party, or extends reciprocal rights to nationals of the United States by
law, shall be entitled to the benefits of this section under the
conditions expressed herein to the extent necessary to give effect to
any provision of such convention, treaty or reciprocal law, in addition
to the rights to which any owner of a mark is otherwise entitled by this
chapter.
(c) Prior registration in country of origin; country of origin defined
No registration of a mark in the United States by a person described
in subsection (b) of this section shall be granted until such mark has
been registered in the country of origin of the applicant, unless the
applicant alleges use in commerce.
For the purposes of this section, the country of origin of the
applicant is the country in which he has a bona fide and effective
industrial or commercial establishment, or if he has not such an
establishment the country in which he is domiciled, or if he has not a
domicile in any of the countries described in subsection (b) of this
section, the country of which he is a national.
(d) Right of priority
An application for registration of a mark under section 1051, 1053,
1054, or 1091 of this title or under subsection (e) of this section,
filed by a person described in subsection (b) of this section who has
previously duly filed an application for registration of the same mark
in one of the countries described in subsection (b) of this section
shall be accorded the same force and effect as would be accorded to the
same application if filed in the United States on the same date on which
the application was first filed in such foreign country: Provided,
That--
(1) the application in the United States is filed within six
months from the date on which the application was first filed in the
foreign country;
(2) the application conforms as nearly as practicable to the
requirements of this chapter, including a statement that the
applicant has a bona fide intention to use the mark in commerce;
(3) the rights acquired by third parties before the date of the
filing of the first application in the foreign country shall in no
way be affected by a registration obtained on an application filed
under this subsection;
(4) nothing in this subsection shall entitle the owner of a
registration granted under this section to sue for acts committed
prior to the date on which his mark was registered in this country
unless the registration is based on use in commerce.
In like manner and subject to the same conditions and requirements,
the right provided in this section may be based upon a subsequent
regularly filed application in the same foreign country, instead of the
first filed foreign application: Provided, That any foreign application
filed prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been laid open to
public inspection and without leaving any rights outstanding, and has
not served, nor thereafter shall serve, as a basis for claiming a right
of priority.
(e) Registration on principal or supplemental register; copy of foreign
registration
A mark duly registered in the country of origin of the foreign
applicant may be registered on the principal register if eligible,
otherwise on the supplemental register in this chapter provided. Such
applicant shall submit, within such time period as may be prescribed by
the Director, a true copy, a photocopy, a certification, or a certified
copy of the registration in the country of origin of the applicant. The
application must state the applicant's bona fide intention to use the
mark in commerce, but use in commerce shall not be required prior to
registration.
(f) Domestic registration independent of foreign registration
The registration of a mark under the provisions of subsections (c),
(d), and (e) of this section by a person described in subsection (b) of
this section shall be independent of the registration in the country of
origin and the duration, validity, or transfer in the United States of
such registration shall be governed by the provisions of this chapter.
(g) Trade or commercial names of foreign nationals protected without
registration
Trade names or commercial names of persons described in subsection
(b) of this section shall be protected without the obligation of filing
or registration whether or not they form parts of marks.
(h) Protection of foreign nationals against unfair competition
Any person designated in subsection (b) of this section as entitled
to the benefits and subject to the provisions of this chapter shall be
entitled to effective protection against unfair competition, and the
remedies provided in this chapter for infringement of marks shall be
available so far as they may be appropriate in repressing acts of unfair
competition.
(i) Citizens or residents of United States entitled to benefits of
section
Citizens or residents of the United States shall have the same
benefits as are granted by this section to persons described in
subsection (b) of this section.
(July 5, 1946, ch. 540, title IX, Sec. 44, 60 Stat. 441; Pub. L. 87-333,
Sec. 2, Oct. 3, 1961, 75 Stat. 748; Pub. L. 87-772, Sec. 20, Oct. 9,
1962, 76 Stat. 774; Pub. L. 100-667, title I, Sec. 133, Nov. 16, 1988,
102 Stat. 3946; Pub. L. 105-330, title I, Sec. 108, Oct. 30, 1998, 112
Stat. 3068; Pub. L. 106-43, Sec. 6(b), Aug. 5, 1999, 113 Stat. 220; 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)(12), Nov. 2, 2002, 116 Stat. 1908.)
References in Text
Section 1(a) of the Act of March 19, 1920, referred to in subsec.
(a), is section 1(a) of act Mar. 19, 1920, ch. 104, 41 Stat. 533, which
was classified to section 121(a) of this title, and repealed by act July
5, 1946, ch. 540, Sec. 46(a), 60 Stat. 444, insofar as inconsistent with
this chapter.
Prior Provisions
Acts Feb. 20, 1905, ch. 592, Secs. 1, 2, 4, 33 Stat. 724, 725; May
4, 1906, ch. 2081, Secs. 1, 3, 34 Stat. 168, 169; Feb. 18, 1909, ch.
144, 35 Stat. 628; Mar. 19, 1920, ch. 104, Secs. 1, 6, 41 Stat. 533,
535; Apr. 11, 1930, ch. 132, Sec. 4, 46 Stat. 155; June 20, 1936, ch.
617, 49 Stat. 1539; June 10, 1938, ch. 332, Secs. 1, 2, 3, 52 Stat. 638,
639.
Amendments
2002--Subsec. (e). Pub. L. 107-273 substituted ``a true copy, a
photocopy, a certification,'' for ``a certification''.
1999--Subsec. (a). Pub. L. 106-113 substituted ``Director'' for
``Commissioner''.
Pub. L. 106-43 substituted ``trademarks'' for ``trade-marks''.
Subsec. (e). Pub. L. 106-113 substituted ``Director'' for
``Commissioner''.
1998--Subsec. (d). Pub. L. 105-330, Sec. 108(1)(A), in introductory
provisions, substituted ``or 1091 of this title or under subsection (e)
of this section'' for ``1091 of this title, or subsection (e) of this
section''.
Subsec. (d)(3), (4). Pub. L. 105-330, Sec. 108(1)(B), made technical
amendment to reference in original act which appears in text as
reference to this subsection.
Subsec. (e). Pub. L. 105-330, Sec. 108(2), substituted ``Such
applicant shall submit, within such time period as may be prescribed by
the Commissioner, a certification or a certified copy of the
registration in the country of origin of the applicant'' for ``The
application therefor shall be accompanied by a certification or a
certified copy of the registration in the country of origin of the
applicant''.
1988--Subsec. (a). Pub. L. 100-667, Sec. 133(2), substituted
``required in this chapter'' for ``herein prescribed''.
Subsec. (c). Pub. L. 100-667, Sec. 133(1), made technical amendment
in two places to references in the original act to subsection (b) of
this section, resulting in no change in text.
Subsec. (d). Pub. L. 100-667, Sec. 133(1), (3), (4), (5), in
introductory provisions, made technical amendment in two places to
references in the original act to subsection (b) of this section,
resulting in no change in text, and substituted ``section 1051, 1053,
1054, or 1091 of this title, or subsection (e) of this section'' for
``sections 1051, 1052, 1053, 1054, or 1091 of this title'', in par. (2),
substituted ``including a statement that the applicant has a bona fide
intention to use the mark in commerce'' for ``but use in commerce need
not be alleged'', and in par. (3), substituted ``foreign'' for
``foreing''.
Subsec. (e). Pub. L. 100-667, Sec. 133(6), inserted at end ``The
application must state the applicant's bona fide intention to use the
mark in commerce, but use in commerce shall not be required prior to
registration.''
Subsec. (f). Pub. L. 100-667, Sec. 133(1), (7), made technical
amendment to references in the original act to subsections (c), (d), and
(e) of this section and to subsection (b) of this section, resulting in
no change in text.
Subsecs. (g) to (i). Pub. L. 100-667, Sec. 133(1), (8), made
technical amendment to references in the original act to subsection (b)
of this section, resulting in no change in text.
1962--Subsec. (b). Pub. L. 87-772 inserted ``or extends reciprocal
rights to nationals of the United States by law,'' and substituted
provisions requiring the person's country of origin to be a party to any
convention or treaty, for provisions which required such persons to be
nationals of, domiciled in, or have a bona fide and effective business
or commercial establishment in a foreign country which was a party to
the International Convention for the Protection of Industrial Property,
or the General Inter-American Convention for Trade Mark and Commercial
Protection, or any other convention or treaty relating to trademarks,
trade, or commercial names.
Subsec. (e). Pub. L. 87-772 inserted ``certification or a'' after
``accompanied by a'' and struck out ``application for or'' before
``registration''.
1961--Subsec. (d). Pub. L. 87-333 inserted par. at end authorizing
the right provided by this section to be based upon a subsequent
application in the same foreign country, instead of the first
application, provided that any foreign application filed prior to such
subsequent one was withdrawn, or otherwise disposed of, without having
been open to public inspection and without leaving any rights
outstanding, nor any basis for claiming priority.
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.
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.
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 1961 Amendment
Section 3 of Pub. L. 87-333 provided that: ``This Act [amending this
section and section 119 of Title 35, Patents] shall take effect on the
date when the Convention of Paris for the Protection of Industrial
Property of March 20, 1883, as revised at Lisbon, October 31, 1958,
comes into force with respect to the United States and shall apply only
to applications thereafter filed in the United States by persons
entitled to the benefit of said convention, as revised at the time of
such filing.''
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, 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.
Section Referred to in Other Sections
This section is referred to in sections 1051, 1057, 1063, 1141j of
this title.
