Notes on 15 U.S.C. § 1051 : US Code - Notes

Search Notes on 15 U.S.C. § 1051 : US Code - Notes

(July 5, 1946, ch. 540, title I, Sec. 1, 60 Stat. 427; Pub. L. 87-
772, Sec. 1, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93-596, Sec. 1,
Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100-667, title I, Sec. 103,
Nov. 16, 1988, 102 Stat. 3935; Pub. L. 105-330, title I, Sec. 103,
title II, Sec. 201(a)(1), Oct. 30, 1998, 112 Stat. 3064, 3069; 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)(1), (2), Nov. 2, 2002, 116 Stat. 1906.)
PRIOR PROVISIONS
Subsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, Secs.
1, 2, 33 Stat. 724; May 4, 1906, ch. 2081, Sec. 1, 34 Stat. 168;
Feb. 18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, Sec.
4, 46 Stat. 155; June 10, 1938, ch. 332, Sec. 1, 52 Stat. 638.
Subsec. (d) is from act Feb. 20, 1905, ch. 592, Sec. 3, 33 Stat.
725.
AMENDMENTS
2002 - Subsec. (d)(1). Pub. L. 107-273, Sec. 13207(b)(1), in
first sentence, substituted "specifying the date of the applicant's
first use of the mark in commerce and those goods or services
specified in the notice of allowance on or in connection with which
the mark is used in commerce." for "specifying the date of the
applicant's first use of the mark in commerce and,, those goods or
services specified in the notice of allowance on or in connection
with which the mark is used in commerce."
Subsec. (e). Pub. L. 107-273, Sec. 13207(b)(2), amended subsec.
(e) generally. Prior to amendment, subsec. (e) required applicant
not domiciled in United States to designate name and address of
some person resident in the United States on whom may be served
notices or process in proceedings affecting the mark and provided
that notices or process be served by leaving with such person or
mailing to him a copy, or upon Director if designated person cannot
be found.
1999 - Subsecs. (a), (b), (d), (e). Pub. L. 106-113 substituted
"Director" for "Commissioner" wherever appearing.
1998 - Subsec. (a). Pub. L. 105-330, Sec. 103(a), amended subsec.
(a) generally. Prior to amendment, subsec. (a) related to
application by owner of a trademark used in commerce to register
the trademark by filing in the Patent and Trademark Office a
written application in prescribed form and verified by applicant,
by paying prescribed fee, and by complying with prescribed rules or
regulations.
Subsec. (b). Pub. L. 105-330, Sec. 103(b), amended subsec. (b)
generally. Prior to amendment, subsec. (b) related to application,
by person with bona fide intention, under circumstances showing
good faith, to use a trademark in commerce, to register trademark
by filing in the Patent and Trademark Office a written application
in prescribed form and verified by applicant, by paying prescribed
fee, and by complying with prescribed rules or regulations.
Subsec. (d)(1). Pub. L. 105-330, Sec. 201(a)(1)(A), inserted
"and," after "specifying the date of the applicant's first use of
the mark in commerce".
Pub. L. 105-330, Sec. 201(a)(1)(B), which directed the striking
out of "and, the mode or manner in which the mark is used on or in
connection with such goods or services", was executed by striking
out ", and the mode or manner in which the mark is used on or in
connection with such goods or services" after "notice of allowance
on or in connection with which the mark is used in commerce", to
reflect the probable intent of Congress.
Subsec. (d)(4). Pub. L. 105-330, Sec. 103(c), amended par. (4)
generally. Prior to amendment, par. (4) read as follows: "The
failure to timely file a verified statement of use under this
subsection shall result in abandonment of the application."
1988 - Subsec. (a). Pub. L. 100-667, Sec. 103(1) to (7), inserted
"(a)" preceding introductory provisions and substituted "may apply
to register his or her" for "may register his", redesignated former
subsecs. (a) to (c) as pars. (1) to (3), respectively, redesignated
former pars. (1) to (3) as subpars. (A) to (C), respectively, in
par. (1)(A), substituted "used on or in connection with" for
"applied to" and "goods on or in connection" for "goods in
connection", in par. (1)(C), struck out "actually" after "the mark
as", and in par. (2), substituted "prescribed" for "filing".
Subsecs. (b), (c). Pub. L. 100-667, Sec. 103(3), (9), added
subsecs. (b) and (c) and redesignated former subsecs. (b) and (c)
as pars. (2) and (3), respectively, of subsec. (a).
Subsecs. (d), (e). Pub. L. 100-667, Sec. 103(8), (9), added
subsec. (d) and redesignated former subsec. (d) as (e).
1975 - Subsecs. (a), (b), (d). Pub. L. 93-596 substituted "Patent
and Trademark Office" for "Patent Office".
1962 - Subsec. (a)(1). Pub. L. 87-772 substituted "as to be
likely, when applied to the goods of such other person, to cause
confusion, or to cause mistake, or to deceive" for "as might be
calculated to deceive", and struck out "or services" after "use by
others, the goods".
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
Pub. L. 105-330, title I, Sec. 109(b), Oct. 30, 1998, 112 Stat.
3069, provided that: "This title [see Short Title of 1998 Amendment
note below] and the amendments made by this title shall apply to
any application for registration of a trademark pending on, or
filed 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 below]."
Pub. L. 105-330, title I, Sec. 110, Oct. 30, 1998, 112 Stat.
3069, provided that: "This title [see Short Title of 1998 Amendment
note below] and the amendments made by this title shall take effect
-
"(1) on the date that is 1 year after the date of the enactment
of this Act [Oct. 30, 1998], or
"(2) upon the entry into force of the Trademark Law Treaty with
respect to the United States [Aug. 12, 2000],
whichever occurs first."
Pub. L. 105-330, title II, Sec. 201(b), Oct. 30, 1998, 112 Stat.
3070, provided that: "The amendments made by this section [amending
this section and sections 1052, 1057, 1064, 1091, 1094, 1113 to
1115, 1121, and 1124 of this title] shall take effect on the date
of enactment of this Act [Oct. 30, 1998], and shall apply 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."
EFFECTIVE DATE OF 1988 AMENDMENT
Section 136 of title I of Pub. L. 100-667 provided that: "This
title and the amendments made by this title [see Short Title of
1988 Amendment note below] shall become effective on the date which
is one year after the date of enactment of this Act [Nov. 16,
1988]."
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.
EFFECTIVE DATE
Section 46(a) of act July 5, 1946, provided that this chapter
shall be in force and take effect one year from July 5, 1946.
SHORT TITLE OF 2004 AMENDMENT
Pub. L. 108-482, Sec. 1, Dec. 23, 2004, 118 Stat. 3912, provided
that: "This Act [amending section 1117 of this title, section 504
of Title 17, Copyrights, sections 2318 and 3559 of Title 18, Crimes
and Criminal Procedure, and sections 85 and 112 of Title 28,
Judiciary and Judicial Procedure, and enacting provisions set out
as notes under this section, section 1117 of this title, sections
2311 and 2318 of Title 18, and listed in a table relating to
sentencing guidelines set out as a note under section 994 of Title
28] may be cited as the 'Intellectual Property Protection and
Courts Amendments Act of 2004'."
Pub. L. 108-482, title II, Sec. 201, Dec. 23, 2004, 118 Stat.
3916, provided that: "This title [amending section 1117 of this
title, section 504 of Title 17, Copyrights, and section 3559 of
Title 18, Crimes and Criminal Procedure, and enacting provisions
set out as notes under section 1117 of this title and listed in a
table relating to sentencing guidelines set out as a note under
section 994 of Title 28, Judiciary and Judicial Procedure] may be
cited as the 'Fraudulent Online Identity Sanctions Act'."
SHORT TITLE OF 2002 AMENDMENT
Pub. L. 107-273, div. C, title III, Sec. 13401, Nov. 2, 2002, 116
Stat. 1913, provided that: "This subtitle [subtitle D (Secs. 13401-
13403) of title III of div. C of Pub. L. 107-273, enacting
subchapter IV of this chapter and provisions set out as a note
under section 1141 of this title] may be cited as the 'Madrid
Protocol Implementation Act'."
SHORT TITLE OF 1999 AMENDMENTS
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title III, Sec.
3001(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-545, provided that:
"This title [enacting section 1129 of this title, amending sections
1114, 1116, 1117, 1125, and 1127 of this title, section 470a of
Title 16, Conservation, and section 1338 of Title 28, Judiciary and
Judicial Procedure, and enacting provisions set out as notes under
this section and sections 1117 and 1125 of this title] may be cited
as the 'Anticybersquatting Consumer Protection Act'."
Pub. L. 106-43, Sec. 1, Aug. 5, 1999, 113 Stat. 218, provided
that: "This Act [amending sections 1052 to 1054, 1060, 1063, 1064,
1091, 1092, 1114, 1116 to 1118, 1122, and 1124 to 1127 of this
title, enacting provisions set out as a note under section 1052 of
this title, and amending provisions set out as a note under this
section] may be cited as the 'Trademarks Amendments Act of 1999'."
SHORT TITLE OF 1998 AMENDMENT
Pub. L. 105-330, title I, Sec. 101, Oct. 30, 1998, 112 Stat.
3064, provided that: "This title [amending this section and
sections 1058 to 1060, 1062, and 1126 of this title and enacting
provisions set out as notes under this section and sections 1058
and 1059 of this title] may be cited as the 'Trademark Law Treaty
Implementation Act'."
SHORT TITLE OF 1996 AMENDMENT
Pub. L. 104-98, Sec. 1, Jan. 16, 1996, 109 Stat. 985, provided
that: "This Act [amending sections 1125 and 1127 of this title and
enacting provisions set out as a note under section 1125 of this
title] may be cited as the 'Federal Trademark Dilution Act of
1995'."
SHORT TITLE OF 1992 AMENDMENT
Pub. L. 102-542, Sec. 1, Oct. 27, 1992, 106 Stat. 3567, provided
that: "This Act [enacting section 1122 of this title, amending
sections 1114, 1125, and 1127 of this title, and enacting
provisions set out as a note under section 1114 of this title] may
be cited as the 'Trademark Remedy Clarification Act'."
SHORT TITLE OF 1988 AMENDMENT
Section 101 of title I of Pub. L. 100-667 provided that: "This
title [amending this section and sections 1052 to 1060, 1062 to
1066, 1068, 1069, 1071, 1091, 1092, 1094, 1095, 1111, 1112, 1114 to
1118, 1121, and 1125 to 1127 of this title, redesignating section
1121a of this title as section 1121(b) of this title, and enacting
provisions set out as notes under sections 1051 and 1058 of this
title] may be cited as the 'Trademark Law Revision Act of 1988'."
SHORT TITLE OF 1984 AMENDMENT
Pub. L. 98-620, title I, Sec. 101, Nov. 8, 1984, 98 Stat. 3335,
provided that: "This title [amending sections 1064 and 1127 of this
title and enacting provisions set out as a note under section 1064
of this title] may be cited as the 'Trademark Clarification Act of
1984'."
SHORT TITLE
Act July 5, 1946, ch. 540, 60 Stat. 427, which is classified to
this chapter, is popularly known as the "Lanham Act" and also as
the "Trademark Act of 1946".
REPEAL OF INCONSISTENT PROVISIONS; CERTAIN PROVISIONS NOT AFFECTED
Section 46(a) of act July 5, 1946, as amended by Pub. L. 106-43,
Sec. 6(b), Aug. 5, 1999, 113 Stat. 220, provided in part that all
acts and parts of acts inconsistent with this chapter are repealed
effective one year from July 5, 1946, but that "nothing contained
in this Act [this chapter] shall be construed as limiting,
restricting, modifying, or repealing any statute in force on the
effective date of this Act [July 5, 1947] which does not relate to
trademarks, or as restricting or increasing the authority of any
Federal department or regulatory agency except as may be
specifically provided in this Act [this chapter]."
Section 48 of act July 5, 1946, provided that: "Section 4 of the
Act of January 5, 1905 (U.S.C., title 36, sec. 4), as amended,
entitled 'An Act to incorporate the National Red Cross' [see 18
U.S.C. 706], and section 7 of the Act of June 15, 1916 (U.S.C.,
title 36, sec. 27), entitled 'An Act to incorporate the Boy Scouts
of America, and for other purposes' [see 36 U.S.C. 30905], and the
Act of June 20, 1936 (U.S.C., title 22, sec. 248), entitled 'An Act
to prohibit the commercial use of the coat of arms of the Swiss
Confederation' [see 18 U.S.C. 708], are not repealed or affected by
this Act."
SAVINGS PROVISION
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title III, Sec. 3008],
Nov. 29, 1999, 113 Stat. 1536, 1501A-551, provided that: "Nothing
in this title [see Short Title of 1999 Amendments note above] shall
affect any defense available to a defendant under the Trademark Act
of 1946 [15 U.S.C. 1051 et seq.] (including any defense under
section 43(c)(4) of such Act [15 U.S.C. 1125(c)(4)] or relating to
fair use) or a person's right of free speech or expression under
the first amendment of the United States Constitution."
SEPARABILITY
Section 50 of act July 5, 1946, provided that: "If any provision
of this Act [this chapter] or the application of such provision to
any person or circumstance is held invalid, the remainder of the
Act shall not be affected thereby."
TRANSFER OF FUNCTIONS
For transfer of functions of other officers, employees, and
agencies of Department of Commerce to Secretary of Commerce, with
certain exceptions, 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.
PENDING PROCEEDINGS AND EXISTING REGISTRATION AND RIGHTS UNDER
PRIOR ACTS
Section 46(a) of act July 5, 1946, provided in part that this
chapter, except as otherwise specifically provided therein, shall
not affect any suit, proceeding or appeal pending on the effective
date of this chapter and that the repeal of all inconsistent acts
"shall not affect the validity of registrations granted or applied
for under any of said Acts prior to the effective date of this Act
[July 5, 1947], or rights or remedies thereunder except as provided
in sections 8, 12, 14, 15, and 47 of this Act [sections 1058, 1062,
1064, and 1065 of this title and note under this section]."
Sections 46(b) and 47 of act July 5, 1946, provided:
"(b) Registrations now existing under the Act of March 3, 1881,
or the Act of February 20, 1905 [sections 81 to 109 of this title],
shall continue in full force and effect for the unexpired terms
thereof and may be renewed under the provisions of section 9 of
this Act [section 1059 of this title]. Such registrations and the
renewals thereof shall be subject to and shall be entitled to the
benefits of the provisions of this Act [this chapter] to the same
extent and with the same force and effect as though registered on
the principal register established by this Act [this chapter]
except as limited in sections 8, 12, 14, and 15 of this Act
[sections 1058, 1062, 1064, 1065, of this title]. Marks registered
under the 'ten-year proviso' of section 5 of the Act of February
20, 1905, as amended [former section 85 of this title], shall be
deemed to have become distinctive of the registrant's goods in
commerce under paragraph (f) of section 2 of this Act [section 1052
of this title] and may be renewed under section 9 hereof [section
1059 of this title] as marks coming within said paragraph.
"Registrations now existing under the Act of March 19, 1920
[former sections 121 to 128 of this title], shall expire six months
after the effective date of this Act [July 5, 1947], or twenty
years from the dates of their registrations, whichever date is
later. Such registrations shall be subject to and entitled to the
benefits of the provisions of this Act [this chapter] relating to
marks registered on the supplemental register established by this
Act [this chapter], and may not be renewed unless renewal is
required to support foreign registrations. In that event renewal
may be effected on the supplemental register under the provisions
of section 9 of this Act [section 1059 of this title].
"Marks registered under previous Acts may, if eligible, also be
registered under this Act [this chapter].
"Sec. 47. (a) All applications for registration pending in the
Patent Office at the effective date of this Act [July 5, 1947] may
be amended, if practicable, to bring them under the provisions of
this Act [this chapter]. The prosecution of such applications so
amended and the grant of registrations thereon shall be proceeded
with in accordance with the provisions of this Act [this chapter].
If such amendments are not made, the prosecution of said
applications shall be proceeded with and registrations thereon
granted in accordance with the Acts under which said applications
were filed, and said Acts are hereby continued in force to this
extent and for this purpose only, notwithstanding the foregoing
general repeal thereof.
"(b) In any case in which an appeal is pending before the United
States Court of Customs and Patent Appeals or any United States
Circuit Court of Appeals or the United States Court of Appeals for
the District of Columbia or the United States Supreme Court at the
effective date of this Act [July 5, 1947], the court, if it be of
the opinion that the provisions of this Act [this chapter] are
applicable to the subject matter of the appeal, may apply such
provision or may remand the case to the Commissioner [now Director]
or to the district court for the taking of additional evidence or a
new trial or for reconsideration of the decision on the record as
made, as the appellate court may deem proper."
Section 49 of said act July 5, 1946, provided: "Nothing herein
[in this chapter] shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith prior to the
effective date of this Act [July 5, 1947]."
EMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING TRADEMARK CASES
Relief as to filing date of trademark application or registration
and excusal of delayed fees or actions affected by postal situation
beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970,
see note set out under section 111 of Title 35, Patents.
(!1) So in original. The word "shall" probably should not appear.