Notes on 15 U.S.C. § 1052 : US Code - Notes

Search Notes on 15 U.S.C. § 1052 : US Code - Notes

(July 5, 1946, ch. 540, title I, Sec. 2, 60 Stat. 428; Pub. L. 87-
772, Sec. 2, 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. 104,
Nov. 16, 1988, 102 Stat. 3937; Pub. L. 103-182, title III, Sec.
333(a), Dec. 8, 1993, 107 Stat. 2114; Pub. L. 103-465, title V,
Sec. 522, Dec. 8, 1994, 108 Stat. 4982; Pub. L. 105-330, title II,
Sec. 201(a)(2), (12), Oct. 30, 1998, 112 Stat. 3069, 3070; Pub. L.
106-43, Sec. 2(a), Aug. 5, 1999, 113 Stat. 218; 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.)
REFERENCES IN TEXT
Acts March 3, 1881, and February 20, 1905, referred to in subsec.
(d), 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1905, ch. 592, 33 Stat. 724, which were repealed insofar as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
Acts Feb. 20, 1905, ch. 592, Sec. 5, 33 Stat. 725; Mar. 2, 1907,
ch. 2573, Sec. 1, 34 Stat. 1251; Feb. 18, 1911, ch. 113, 36 Stat.
918; Jan. 8, 1913, ch. 7, 37 Stat. 649; Mar. 19, 1920, ch. 104,
Sec. 9, 41 Stat. 535; June 7, 1924, ch. 341, 43 Stat. 647.
AMENDMENTS
1999 - Pub. L. 106-43 inserted concluding provisions.
Subsecs. (d), (f). Pub. L. 106-113 substituted "Director" for
"Commissioner" wherever appearing.
1998 - Pub. L. 105-330, Sec. 201(a)(12), substituted "trademark"
for "trade-mark" in introductory provisions.
Subsec. (e). Pub. L. 105-330, Sec. 201(a)(2)(A), struck out "or"
before "(4)" and inserted ", or (5) comprises any matter that, as a
whole, is functional" before period at end.
Subsec. (f). Pub. L. 105-330, Sec. 201(a)(2)(B), substituted
"subsections (a), (b), (c), (d), (e)(3), and (e)(5)" for
"paragraphs (a), (b), (c), (d), and (e)(3)".
1994 - Subsec. (a). Pub. L. 103-465 amended subsec. (a)
generally. Prior to amendment, subsec. (a) read as follows:
"Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt, or disrepute."
1993 - Subsec. (e). Pub. L. 103-182, Sec. 333(a)(1), amended
subsec. (e) generally. Prior to amendment, subsec. (e) read as
follows: "Consists of a mark which, (1) when used on or in
connection with the goods of the applicant is merely descriptive or
deceptively misdescriptive of them, or (2) when used on or in
connection with the goods of the applicant is primarily
geographically descriptive or deceptively misdescriptive of them,
except as indications of regional origin may be registrable under
section 1054 of this title, or (3) is primarily merely a surname."
Subsec. (f). Pub. L. 103-182, Sec. 333(a)(2), substituted "(d),
and (e)(3)" for "and (d)" and inserted at end "Nothing in this
section shall prevent the registration of a mark which, when used
on or in connection with the goods of the applicant, is primarily
geographically deceptively misdescriptive of them, and which became
distinctive of the applicant's goods in commerce before December 8,
1993."
1988 - Subsec. (d). Pub. L. 100-667, Sec. 104(1), amended subsec.
(d) generally. Prior to amendment, subsec. (d) read as follows:
"Consists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office or a mark or trade
name previously used in the United States by another and not
abandoned, as to be likely, when applied to the goods of the
applicant, to cause confusion, or to cause mistake, or to deceive:
Provided, That when the Commissioner determines that confusion,
mistake, or deception is not likely to result from the continued
use by more than one person of the same or similar marks under
conditions and limitations as to the mode or place of use of the
marks or the goods in connection with which such marks are used,
concurrent registrations may be issued to such persons when they
have become entitled to use such marks as a result of their
concurrent lawful use in commerce prior to (i) the earliest of the
filing dates of the applications pending or of any registration
issued under this chapter; or (ii) July 5, 1947, in the case of
registrations previously issued under the Act of March 3, 1881, or
February 20, 1905, and continuing in full force and effect on that
date; or (iii) July 5, 1947, in the case of applications filed
under the Act of February 20, 1905, and registered after July 5,
1947. Concurrent registrations may also be issued by the
Commissioner when a court of competent jurisdiction has finally
determined that more than one person is entitled to use the same or
similar marks in commerce. In issuing concurrent registrations, the
Commissioner shall prescribe conditions and limitations as to the
mode or place of use of the mark or the goods in connection with
which such mark is registered to the respective persons."
Subsec. (e). Pub. L. 100-667, Sec. 104(2), substituted "used on
or in connection with" for "applied to" in two places.
Subsec. (f). Pub. L. 100-667, Sec. 104(3), substituted "used on
or in connection with" for "applied to" and "five years before the
date on which the claim of distinctiveness is made" for "five years
next preceding the date of the filing of the application for its
registration"
1975 - Subsec. (d). Pub. L. 93-596 substituted "Patent and
Trademark Office" for "Patent Office".
1962 - Subsec. (d). Pub. L. 87-772, among other changes,
substituted provisions authorizing the issuance of concurrent
registrations to persons when they have become entitled to use such
marks as a result of their concurrent lawful use in commerce prior
to the earliest of the filing dates of the applications pending or
of any registration issued under this chapter, or July 5, 1947, in
the case of registrations previously issued under the act of Mar.
3, 1881, or Feb. 20, 1905, and continuing in full force and effect
on that date, or July 5, 1947, in the case of applications under
the act of Feb. 20, 1905, and registered after July 5, 1947, for
provisions which restricted issuance of concurrent registrations to
persons entitled to use such mark as a result of their concurrent
lawful use thereof in commerce prior to any of the filing dates of
the applications involved, and provisions directing that issuance
of the mark be upon such conditions and limitations as to the mode
or place of use of the marks or the goods in connection with which
such marks are used, for provisions which required issuance under
conditions and limitations as to the mode or place of use of the
goods in connection with which such registrations may be granted,
and eliminated provisions which limited confusion, mistake, or
deception to purchasers, required written notice of applications
for concurrent registrations and of hearings thereon, and
publication in the Official Gazette upon a decision to grant such a
registration and permitted a court to order such a registration
under section 4915 of the Revised Statutes.
EFFECTIVE DATE OF 1999 AMENDMENTS
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.
Pub. L. 106-43, Sec. 2(e), Aug. 5, 1999, 113 Stat. 218, provided
that: "The amendments made by this section [amending this section
and sections 1063, 1064, and 1092 of this title] shall take effect
on the date of enactment of this Act [Aug. 5, 1999] and shall apply
only to any application for registration filed on or after January
16, 1996."
EFFECTIVE DATE OF 1998 AMENDMENT
Amendment by 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 1994 AMENDMENT
Section 523 of title V of Pub. L. 103-465 provided that: "The
amendments made by this subtitle [subtitle B (Secs. 521-523) of
title V of Pub. L. 103-465, amending this section and section 1127
of this title] take effect one year after the date on which the WTO
Agreement enters into force with respect to the United States [Jan.
1, 1995]."
EFFECTIVE DATE OF 1993 AMENDMENT
Section 335 of title III of Pub. L. 103-182 provided that:
"(a) In General. - Subject to subsections (b) and (c), the
amendments made by this subtitle [subtitle C (Secs. 331-335) of
title III of Pub. L. 103-182, enacting section 104A of Title 17,
Copyrights, amending this section, section 1091 of this title, and
section 104 of Title 35, Patents, and amending provisions set out
as a note under section 109 of Title 17] take effect on the date
the Agreement [North American Free Trade Agreement] enters into
force with respect to the United States [Jan. 1, 1994].
"(b) Section 331. - The amendments made by section 331 [amending
section 104 of Title 35] shall apply to all patent applications
that are filed on or after the date of the enactment of this Act
[Dec. 8, 1993]: Provided, That an applicant for a patent, or a
patentee, may not establish a date of invention by reference to
knowledge or use thereof, or other activity with respect thereto,
in a NAFTA country, except as provided in sections 119 and 365 of
title 35, United States Code, that is earlier than the date of the
enactment of this Act.
"(c) Section 333. - The amendments made by section 333 [amending
this section and section 1091 of this title] shall apply only to
trademark applications filed on or after the date of the enactment
of this Act."
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 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.
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 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.
URUGUAY ROUND AGREEMENTS: ENTRY INTO FORCE
The Uruguay Round Agreements, including the World Trade
Organization Agreement and agreements annexed to that Agreement, as
referred to in section 3511(d) of Title 19, Customs Duties, entered
into force with respect to the United States on Jan. 1, 1995. See
note set out under section 3511 of Title 19.
MARKS REGISTERED UNDER TEN-YEAR PROVISO OF TRADE-MARK ACT OF 1905
Marks registered under the "ten-year proviso" of section 5 of the
act of Feb. 20, 1905, as amended, deemed to have become distinctive
of the registrant's goods in commerce under par. (f) of this
section, see section 46(b) of act July 5, 1946, set out in note
under section 1051 of this title.