§ 1062. Publication; proceedings on refusal of registration; republication of marks registered under prior acts.

(a) Upon the filing of an application for registration and payment of the fee provided in this chapter, the Commissioner shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, the Commissioner shall cause the mark to be published in the Official Gazette of the Patent Office.

(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reasons therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Commissioner that the delay in responding was unavoidable, whereupon such time may be extended.

(c) A registrant of a mark registered under the provisions of the Act of March 3, 1881, or the Act of February 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the payment of the prescribed fee file with the Commissioner an affidavit setting forth those goods stated in the registration on which said mark is in use in commerce and that the registrant claims the benefits of this chapter for said mark. The Commissioner shall publish notice thereof with a reproduction of said mark in the Official Gazette, and notify the registrant of such publication and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of this title. This subsection shall not be subject to the provisions of section 1063 of this title. (July 5, 1946, ch. 540, title I, § 12, 60 Stat. 432.)

DERIVATION

Acts Feb. 20, 1905, ch. 592, § 6, 33 Stat. 726; Mar. 2, 1907, ch. 2573, § 2, 34 Stat. 1252.

REFERENCES IN TEXT

Acts Mar. 3, 1881, and Feb. 20, 1905, referred to in the text of subsec. (c) of this section, were prior trademark registration acts which were repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section 46 (a) of act July 5, 1946. Said act Feb. 20, 1905, constituted former sections 81-109 of this title.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power

vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Cancellation of registration, see section 1064 of this

title.

Supplemental register, subsection (a) inapplicable to trade-marks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Publication and allowance of trade-mark, see § 100.151 et seq., set out in Appendix to this title. Republication of marks, rules relating to, see § 100.301 et seq., set out in Appendix to this title.

FORMS FOR TRADE-MARK CASES

Affidavit of use or nonuse required under subsection (b) of this section, see § 110.26, set out in Appendix to this title.

Form of affidavit required under subsection (c), see § 110.26a, set out in Appendix to this title.

§ 1063. Opposition to registration.

Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the required fee, file a verified notice of opposition in the Patent Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. For good cause shown, the time for filing notice of opposition may be extended by the Commissioner, who shall notify the applicant. An unverified opposition may be filed by a duly authorized attorney, but such opposition shall be null and void unless verified by the opposer within a reasonable time after such filing to be fixed by the Commissioner. (July 5, 1946, ch. 540, title I, § 13, 60 Stat. 433.)

DERIVATION

Acts Feb. 20, 1905, ch. 592, §§ 6, 7, 33 Stat. 726; Mar. 2, 1907, ch. 2573, § 2, 34 Stat. 1252.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Opposition to registration, rules relating to, see § 100.201 et seq., set out in Appendix to this title.

FORMS FOR TRADE-MARK CASES Form of notice of opposition, see § 110.31, set out in Appendix to this title.

§ 1064. Cancellation of registration.

Any person who believes that he is or will be damaged 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, may upon the payment of the prescribed fee, apply to cancel said registration

(a) within five years from the date of the registration of the mark under this chapter; or (b) within five years from the date of the 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; or

(c) at any time if the registered mark becomes the common descriptive name of an article or substance on which the patent has expired, 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 under this chapter, or contrary to similar prohibitory provisions of said prior Acts for a registration thereunder, or if the registered mark has been assigned and is being used by, or with the permission of, the assignee so as to misrepresent the source of the goods or services in connection with which the mark is used, or if the mark was 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; or

(d) at any time in the case of a certification mark on the ground that the registrant (1) does not control, or is not able legitimately to exercise control over, the use of such mark, or (2) engages in the production or marketing of any goods or services to which the mark is applied, or (3) permits the use of such mark for other purposes than as a certification mark, or (4) 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 subsections (c) and (d) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. (July 5, 1946, ch. 540, title I, § 14, 60 Stat. 433.)

DERIVATION

Act Feb. 20, 1905, ch. 592, § 13, 33 Stat. 728.

REFERENCES IN TEXT

Acts Mar. 3, 1881, and Feb. 20, 1905, referred to in the text, were prior trade-mark registration acts which were repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section 46 (a) of act July 5, 1946. Said act Feb. 20, 1905, constituted former sections 81-109 of this title.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

All executive and administrative functions of the Federal Trade Commission were, with certain reservations, transferred to the Chairman of such Commission by 1950 Reorg. Plan No. 8, § 1, eff. May 24, 1950, 15 F. R. 3175, 64 Stat. 1264, set out in note under section 41 of this title. CROSS REFERENCES

Interference and opposition proceedings, see section 1067 of this title. Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Cancellation of registration, rules relating to, see § 100.211 et seq., set out in Appendix to this title. FORMS FOR TRADE-MARK CASES

Petition for cancellation of trade-mark, see § 110.32, set out in Appendix to this title.

§ 1065. Incontestability of right to use mark under certain conditions.

Except on a ground for which application to cancel may be filed at any time under subsections (c) and (d) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of the publication under this chapter of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That

(1) there has been no final decision adverse to registrant's claim of ownership of such mark for such goods or services, or to registrant's right to register the same or to keep the same on the register; and

(2) there is no proceeding involving said rights pending in the Patent Office or in a court and not finally disposed of; and

(3) an affidavit is filed with the Commissioner within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and the other matters specified in subsections (1) and (2) of this section; and

(4) no incontestable right shall be acquired in a mark or trade name which is the common descriptive name of any article or substance, patented or otherwise.

Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the

required affidavit with the Commissioner within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title.

The Commissioner shall notify any registrant who files the above-prescribed affidavit of the filing thereof. (July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433.)

REFERENCES IN TEXT

Acts Mar. 3, 1881, and Feb. 20, 1905, referred to in the text, were prior trade-mark registration acts which were repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section 46 (a) of act July 5, 1946. Said act Feb. 20, 1905, constituted former sections 81-109 of this title.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Registration of marks used exclusively and continuously for five years preceding application, see section 1052 (f) of this title.

Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Affidavit of incontestability, see § 100.331, set out in Appendix to this title.

FORMS FOR TRADE-MARK CASES

Affidavit of five year use required by this section, see § 110.27, set out in Appendix to this title.

§ 1066. Interference; declaration by Commissioner.

Whenever application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when applied to the goods or when used in connection with the services of the applicant to cause confusion or mistake or to deceive purchasers, the Commissioner may declare that an interference exists. No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable. (July 5, 1946, ch. 540, title I, § 16, 60 Stat. 434.)

DERIVATION

Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Cancellation of registration, see section 1064 of this

title.

Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Interferences, rules relating to, see § 100.191 et seq., set out in Appendix to this title.

§ 1067. Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice to parties; determination of rights.

In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall direct the examiner in charge of interferences to determine and decide the respective rights of registration. (July 5, 1946, ch. 540, title I, § 17, 60 Stat. 434.)

DERIVATION

Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Concurrent user, proceedings in application for registration as, see § 100.221, set out in Appendix to this title. Procedure in inter partes or contested proceedings, see § 100.231 et seq., set out in Appendix to this title.

§ 1068. Same; action of Commissioner.

In such proceedings the Commissioner may refuse to register the opposed mark, may cancel or restrict

AMENDMENTS

1952-Act July 19, 1952, amended section by substituting references to new Title 35 in lieu of repealed sections of Title 35.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies, and employees, by 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F. R. 3174, 64 Stat. 1263, set out in note under section 591 of Title 5, Executive Departments and Government Officers and Employees.

CROSS REFERENCES

Notice of appeal to be given to the Commissioner of Patents, see section 1116 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Appeals, procedure relating to, see § 100.261 et seq., set out in Appendix to this title.

§ 1072. Registration as constructive notice of claim of ownership.

Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof. (July 5, 1946, ch. 540, title I, § 22,

60 Stat. 435.)

REFERENCES IN TEXT

Acts Mar. 3, 1881, and Feb. 20, 1905, referred to in the text, were prior trade-mark registration acts which were repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section 46 (a) of act July 5, 1946. Said act Feb. 20, 1905, constituted former sections 81-109 of this title.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

CROSS REFERENCES

Duty of registrant to give actual notice of registration, see section 1111 of this title.

Supplemental register, section inapplicable to trademarks on, see section 1094 of this title.

SUBCHAPTER II—THE SUPPLEMENTAL REGISTER

CROSS REFERENCES

Application of other sections of chapter to marks on supplemental register, see section 1094 of this title.

§ 1091. Marks registrable on supplemental register; application and proceedings for registration; nature of mark; mark used in foreign commerce. In addition to the principal register, the Commissioner shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled "An Act to give effect to cer

tain provisions of the convention for the protection of trade-marks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes", to be called the supplemental register. All marks capable of distinguishing applicant's goods or services and not registrable on the principal register provided in this chapter, except those declared to be unregistrable under paragraphs (a)-(d) of section 1052 of this title, which have been in lawful use in commerce by the proprietor thereof, upon or in connection with any goods or services for the year preceding the filing of the application may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of section 1051 of this title so far as they are applicable.

Upon the filing of an application for registration on the supplemental register and payment of the fee herein provided the Commissioner shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this title shall apply.

For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, or device or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services.

Upon a proper showing by the applicant that he has begun the lawful use of his mark in foreign commerce and that he requires domestic registration as a basis for foreign protection of his mark, the Commissioner may waive the requirement of a full year's use and may grant registration forthwith. (July 5, 1946, ch. 540, title II, § 23, 60 Stat. 435.)

DERIVATION

Acts Mar. 19, 1920, ch. 104, § 1, 41 Stat. 533; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 2, 52 Stat. 638.

REFERENCES IN TEXT

Section 1 (b) of act March 19, 1920, referred to in text, was section 121 (b) of this title. Said act was repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section 46 (a) of act July 5, 1946. EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note under section 1051 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 under section 1051 of this title.

TRANSFER OF FUNCTIONS

The functions of all other officers of the Department of Commerce and the functions of all agencies and employees of such Department were, with a few exceptions, transferred to the Secretary of Commerce, with power vested in him to authorize their performance or the performance of any of his functions by any of such officers, agencies,