United States Code

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.

RULES OF PRACTICE IN TRADE-MARK CASES Application for registration in supplemental register, see § 100.87, set out in Appendix to this title.

§ 1092. Publication; not subject to opposition; cancellation.

Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent Office. Whenever any person believes that he is or will be damaged by the registration of a mark on this register he may at any time apply to the Commissioner to cancel such registration. The Commissioner shall refer such application to the examiner in charge of interferences, who shall give notice thereof to the registrant. If it is found after a hearing before the examiner that the registrant was not entitled to register the mark at the time of his application for registration thereof, or that the mark is not used by the registrant or has been abandoned, the registration shall be canceled by the Commissioner. (July 5, 1946, ch. 540, title II, § 24, 60 Stat. 436.)

DERIVATION

Act Mar. 19, 1920, ch. 104, § 2, 41 Stat. 534.

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.

§ 1093. Registration certificates for marks on principal and supplemental registers to be different. The certificates of registration for marks registered on the supplemental register shall be conspicuously different from certificates issued for marks registered on the principal register. (July 5, 1946, ch. 540, title II, § 25, 60 Stat. 436.)

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.

§ 1094. Provisions of chapter applicable to registrations on supplemental register.

The provisions of this chapter shall govern so far as applicable applications for registration and regis

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trations on the supplemental register as well as those on the principal register, but applications for and registrations on the supplemental register shall not be subject to or receive the advantages of sections 1052 (e), (f), 1057 (b), 1062 (a), 1063-1068, 1072, 1115 and 1124 of this title. (July 5, 1946, ch. 540, title II, § 26, 60 Stat. 436.)

DERIVATION

Act Mar. 19, 1920, ch. 104, § 6, 41 Stat. 535.
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.

§ 1095. Registration on principal register not precluded.

Registration of a mark on the supplemental register, or under the Act of March 19, 1920, shall not preclude registration by the registrant on the principal register established by this chapter. (July 5, 1946, ch. 540, title II, § 27, 60 Stat. 436.)

REFERENCES IN TEXT

Act of March 19, 1920, referred to in the text, was formerly classified to sections 121-128 of this title and was repealed by section 46 (a) of act July 5, 1946, effective one year from July 5, 1946, insofar as inconsistent with this chapter.

EFFECTIVE DATE

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

§ 1096. Registration on supplemental register not used to stop importations.

Registration on the supplemental register or under the Act of March 19, 1920, shall not be filed in the Department of the Treasury or be used to stop importations. (July 5, 1946, ch. 540, title II, § 28,

60 Stat. 436.)

REFERENCES IN TEXT

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.

SUBCHAPTER III-GENERAL PROVISIONS

§ 1111. Notice of registration; display with mark; recovery of profits and damages in infringement suit. Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered under the Act of March 3, 1881, or the Act of February

20, 1905, or on the principal register established by this chapter, shall give notice that his mark is registered by displaying with the mark as used the words "Registered in U. S. Patent Office" or "Reg. U. S. Pat. Off." or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing so to mark goods bearing the registered mark, or by a registrant under the Act of March 19, 1920, or by the registrant of a mark on the supplemental register provided by this chapter no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration. (July 5, 1946, ch. 540, title III,

§ 29, 60 Stat. 436.)

DERIVATION

Acts Feb. 20, 1905, ch. 592, § 28, 33 Stat. 730; Mar. 19, 1920, ch. 104, §§ 5, 6, 41 Stat. 534, 535.

REFERENCES IN TEXT

Acts March 3, 1881, Feb. 20, 1905, and March 19, 1920, referred to in text were prior trade-mark registration acts which were repealed by section 46 (a) of act July 5, 1946, effective one year from July 5, 1946, insofar as inconsistent with this chapter. Said acts of 1905 and 1920 were sections 81-109 and 121-128 of this title, respectively.

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

Registration as constructive notice of claim to ownership, see section 1072 of this title.

RULES OF PRACTICE IN TRADE-MARK CASES Classification of goods and services, see § 100.161, set out in Appendix to this title.

§ 1112. Classification of goods and services; registration in plurality of classes.

The Commissioner shall establish a classification of goods and services, for convenience of Patent Office administration, but not to limit or extend the applicant's rights. The applicant may register his mark in one application for any or all of the goods or services included in one class, upon or in connection with which he is actually using the mark. The Commissioner may issue a single certificate for one mark registered in a plurality of classes upon payment of a fee equaling the sum of the fees for each registration in each class. (July 5, 1946, ch. 540, title IV, § 30, 60 Stat. 436.)

DERIVATION

Act May 4, 1906, ch. 2081, § 2, 34 Stat. 169.

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.

RULES OF PRACTICE IN TRADE-MARK CASES Application for registration of mark covering plurality of goods in one class, see § 100.162, set out in Appendix to this title.

Classification of goods and services, see § 100.161, set out in Appendix to this title.

§ 1113. Fees and charges.

The following fees shall be paid to the Patent Office under this chapter:

On filing each original application for registration of a mark in each class on either the principal or the supplemental register, $25; on filing each application for renewal in each class, $25; and on filing each application for renewal in each class after expiration of the registration, an additional fee of $5; on filing notice of claim of benefits of this chapter for a mark to be published under section 1062 (c) of this title, $10; on filing notice of opposition or application for cancelation, $25; on appeal from an examiner in charge of the registration of marks to the Commissioner, $25; on appeal from an examiner in charge of interferences to the Commissioner, $25; for issuance of a new certificate of registration following change of ownership of a mark or correction of a registrant's mistake, $10; for certificate of correction of registrant's mistake, $10; for manuscript copies, for every one hundred words or fraction thereof, 10 cents; for comparing other copies, 5 cents for every one hundred words or fraction thereof; for certifying in any case, additional, $1; for each additional registration or application which may be included under a single certificate, 50 cents additional; for filing disclaimer, amendment, surrender, or cancelation after registration, $10.

For abstracts of title: For the search, one hour or less, and certificate, $3; each additional hour or fraction thereof, $1.50; for each brief from the digest of assignments of two hundred words or less, $1.

For certificate that trade-mark has not been registered-search and certificate (for deposit in foreign countries only), $3.

For title reports required for office use, $1.

For a single printed copy of statement and drawing, 10 cents; if certified, for the grant, additional, $1; for the certificate, $1; if renewed, for copy of certificate of renewal, additional, $1.

For photographic copies of records and drawings, the reasonable cost of making them.

For recording every assignment or other paper not exceeding six pages, $3; for each additional two pages or less, $1; for each additional registration or application included, or involved in one writing where more than one is so included or involved, additional, 50 cents.

The Commissioner shall refund fees paid by mistake or in excess. (July 5, 1946, ch. 540, title V, § 31, 60 Stat. 437.)

DERIVATION

Acts Feb. 20, 1905, ch. 592, §§ 14, 15, 33 Stat. 728; Mar. 19, 1920, ch. 104, § 8, 41 Stat. 535; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155.

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.

RULES OF PRACTICE IN TRADE-MARK CASES Schedule of fees and charges in trade-mark cases, see § 100.21, set out in Appendix to this title.

§ 1114. Remedies; infringement; innocent infringement by printers and publishers.

(1) Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services; or (b) reproduce, counterfeit, copy, or colorably imitate any such mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale in commerce of such goods or services, shall be liable to a civil action by the registrant for any or all of the remedies hereinafter provided in this chapter, except that under clause (b) of subdivision (1) of this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive purchasers.

(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed shall be limited as follows: (a) Where an infringer is engaged solely in the business of printing the mark for others and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing; (b) where the infringement complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the remedies of the owner of the right infringed as against the published' or distributor of such newspaper, magazine, or other similar periodical shall be confined to an injunction against the presentation of such advertising matter in future issues of such 1 So in original.

newspapers, magazines, or other similar periodical: Provided, That these limitations shall apply only to innocent infringers; (c) injunction relief shall not be available to the owner of the right infringed in respect of an issue of a newspaper, magazine, or other similar periodical containing infringing matter when restraining the dissemination of such infringing matter in any particular issue of such periodical would delay the delivery of such issue after the regular time therefor, and such delay would be due to the method by which publication and distribution of such periodical is customarily conducted in accordance with sound business practice, and not to any method or device adopted for the evasion of this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter. (July 5, 1946, ch. 540, title VI,

§ 32, 60 Stat. 437.)

DERIVATION

Acts Feb. 20, 1905, ch. 592, § 16, 33 Stat. 728; Mar. 19, 1920, ch. 104, § 4, 41 Stat. 534.

EFFECTIVE DATE

CROSS REFERENCES

Defenses to action for infringement, see section 1115 (b) (1-5) of this title.

§1115. Same; certificate of registration on principal register as evidence of exclusive right to use mark; defenses.

(a) Any certificate of registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of registrant's exclusive right to use the registered mark in commerce on the goods or services specified in the certificate subject to any conditions or limitations stated therein, but shall not preclude an opposing party from proving any legal or equitable defense or defect which might have been asserted if such mark had not been registered.

(b) If the right to use the registered mark has become incontestable under section 1065 of this title, the certificate shall be conclusive evidence of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate subject to any conditions or limitations stated therein except when one of the following defenses or defects is established:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently;

(2) That the mark has been abandoned by the registrant; or

(3) That 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

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a trade or service mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to the publication of the registered mark under subsection (a) or (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved.

(6) That the mark whose use is charged as an infringement was registered and used prior to the publication under subsection (a) or (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only where the said mark has been published pursuant to subsection (c) of section 1062 of this title and shall apply only for the area in which the mark was used prior to the date of publication of the registrant's mark under subsection (a) or (c) of section 1062 of this title.

(7) That the mark has been or is being used to violate the antitrust laws of the United States. (July 5, 1946, ch. 540, Title VI, § 33, 60 Stat. 438.)

DERIVATION

Act Feb. 20, 1905, ch. 592, §§ 16, 21, 33 Stat. 728, 729.

REFERENCES IN TEXT

Acts March 3, 1881, and February 20, 1905, referred to in the text of subsec. (a), were prior trade-mark registration acts which were repealed effective one year from July 5, 1946, insofar as inconsistent with this chapter, by section Said act Feb. 20, 1905, was 46 (a) of act July 5, 1946. sections 81-109 of this title. Antitrust laws, referred to in the text of subsec. (b) (7), are classified to chapter 1 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.

CROSS REFERENCES

Abandonment of mark, definition of, see section 1127 of this title.

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

§ 1116. Same; injunctions; enforcement; notice to Commissioner.

The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of

equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent Office. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction granted upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose jurisdiction the defendant may be found.

The said courts shall have jurisdiction to enforce said injunction, as provided in this chapter, as fully as if the injunction had been granted by the district court in which it is sought to be enforced. The clerk of the court or judge granting the injunction shall, when required to do so by the court before which application to enforce said injunction is made, transfer without delay to said court a certified copy of all papers on file in his office upon which said injunction was granted.

It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding arising under the provisions of this chapter to give notice thereof in writing to the Commissioner setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall give like notice thereof to the Commissioner, and within one month after the decision is rendered, appeal taken or a decree issued the clerk of the court shall give notice thereof to the Commissioner, and it shall be the duty of the Commissioner on receipt of such notice forthwith to endorse the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the contents of said file wrapper. (July 5, 1946, ch. 540, title VI, § 34, 60 Stat. 439.)

DERIVATION

Act Feb. 20, 1905, ch. 592, §§ 19, 20, 33 Stat. 729; Mar. 3, 1911, ch. 231, § 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49 Stat. 1921.

EFFECTIVE DATE

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 offcers, 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

Contempt proceedings, see sections 401, 402, 3285, 3691 and 3771 of Title 18, Crimes and Criminal Procedure. Innocent infringement by publishers, injunction not to issue in certain cases, see section 1114 (2) (c) of this title.

FEDERAL RULES OF CIVIL PROCEDURE

Injunctions, see rule 65, following section 2072 of Title 28, Judiciary and Judicial Procedure. Judgment, see rule 54.

FEDERAL RULES OF CRIMINAL PROCEDURE Criminal contempt, see rule 42, following section 3771 of Title 18, Crimes and Criminal Procedure.

§ 1117. Same; recovery for violation of rights; profits, damages and costs.

When a violation of any right of the registrant of a mark registered in the Patent Office shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1113 (1) (b) 1 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. (July 5, 1946, ch. 540, title VI, § 35, 60 Stat. 439.)

DERIVATION

Feb. 20, 1905, ch. 592, §§ 16, 19, 33 Stat. 728, 729; Mar. 19, 1920, ch. 104, § 4, 41 Stat. 534.

EFFECTIVE DATE

Chapter to be in force and take effect one year from July 5, 1946, see note 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, trans

1 So in original.

ferred 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

Damages not recoverable on failure to give notice of registration, see section 1111 of this title.

FEDERAL RULES OF CIVIL PROCEDURE

Costs, provision for unaffected by rule 54 of Rules of Civil Procedure, see note by Advisory Committee under rule 54, following section 2072 of Title 28, Judiciary and Judicial Procedure.

Judgment, see rule 54.

§ 1118. Same; destruction of infringing articles.

In any action arising under this chapter, in which a violation of any right of the registrant of a mark registered in the Patent Office shall have been established, the court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed. (July 5, 1946, ch. 540, title VI, § 36, 60 Stat. 440.)

DERIVATION

Act Feb. 20, 1905, ch. 592, § 20, 33 Stat. 729; Mar. 3, 1911, ch. 231, § 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49 Stat. 1921.

EFFECTIVE DATE

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

TRANSFER OF FUNCTIONS

FEDERAL RULES OF CRIMINAL PROCEDURE Application of section under rule 42, see note by Advisory Committee under said rule 42, following section 3771 of Title 18, Crimes and Criminal Procedure.

§ 1119. Same; power of court over registration.

In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Commissioner, who shall make appropriate entry upon the records of the Patent Office, and shall be controlled thereby. (July 5, 1946, ch. 540, title VI, § 37, 60 Stat. 440.)

DERIVATION

Feb. 20, 1905, ch. 592, § 22, 33 Stat. 729.

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