Notes on 15 U.S.C. § 1064 : US Code - Notes

Search Notes on 15 U.S.C. § 1064 : US Code - Notes

(July 5, 1946, ch. 540, title I, Sec. 14, 60 Stat. 433; Pub. L. 87-
772, Sec. 9, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97-247, Sec.
9(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98-620, title I, Sec.
102, Nov. 8, 1984, 98 Stat. 3335; Pub. L. 100-667, title I, Sec.
115, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105-330, title II, Sec.
201(a)(4), title III, Sec. 301, Oct. 30, 1998, 112 Stat. 3070; Pub.
L. 106-43, Sec. 2(c), Aug. 5, 1999, 113 Stat. 218.)
REFERENCES IN TEXT
Acts March 3, 1881 and February 20, 1905, referred to in opening
par. and pars. (2) and (4), 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repealed insofar as inconsistent with this chapter by act July 5,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
Act Feb. 20, 1905, ch. 592, Sec. 13, 33 Stat. 728.
AMENDMENTS
1999 - Pub. L. 106-43 inserted ", including as a result of
dilution under section 1125(c) of this title," after "damaged" in
introductory provisions.
1998 - Pub. L. 105-330, Sec. 301, inserted at end "Nothing in
paragraph (5) shall be deemed to prohibit the registrant from using
its certification mark in advertising or promoting recognition of
the certification program or of the goods or services meeting the
certification standards of the registrant. Such uses of the
certification mark shall not be grounds for cancellation under
paragraph (5), so long as the registrant does not itself produce,
manufacture, or sell any of the certified goods or services to
which its identical certification mark is applied."
Par. (3). Pub. L. 105-330, Sec. 201(a)(4), inserted "or is
functional," before "or has been abandoned".
1988 - Pub. L. 100-667, Sec. 115(1), (7), in introductory
provisions, inserted "as follows" and substituted "1905:" for "1905
- ", and in concluding proviso substituted "paragraphs (3) and (5)"
for "subsections (c) and (e)".
Par. (1). Pub. L. 100-667, Sec. 115(2), substituted "(1) Within"
for "(a) within" and "chapter." for "chapter; or".
Par. (2). Pub. L. 100-667, Sec. 115(3), substituted "(2) Within"
for "(b) within", and "1905." for "1905; or".
Par. (3). Pub. L. 100-667, Sec. 115(4), substituted "(3)" for
"(c)" and amended text generally. Prior to amendment, text read as
follows: "at any time if the registered mark becomes the common
descriptive name of an article or substance, 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
hereunder, or contrary to similar prohibitory provisions of said
prior Acts for a registration thereunder, or if the registered mark
is being used by, or with the permission of, the registrant so as
to misrepresent the source of the goods or services in connection
with which the mark is used. A registered mark shall not be deemed
to be the common descriptive name of goods or services solely
because such mark is also used as a name of or to identify a unique
product or service. The primary significance of the registered mark
to the relevant public rather than purchaser motivation shall be
the test for determining whether the registered mark has become the
common descriptive name of goods or services in connection with
which it has been used; or".
Par. (4). Pub. L. 100-667, Sec. 115(5), substituted "(4) At" for
"(d) at", and "title." for "title; or".
Par. (5). Pub. L. 100-667, Sec. 115(6), substituted "(5) At" for
"(e) at" and redesignated former pars. (1) to (4) as subpars. (A)
to (D), respectively.
1984 - Par. (c). Pub. L. 98-620 inserted provision that a
registered mark shall not be deemed to be the common descriptive
name of goods or services solely because such mark is also used as
a name of or to identify a unique product or service, and that the
primary significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for determining
whether the registered mark has become the common descriptive name
of goods or services in connection with which it has been used.
1982 - Pub. L. 97-247 struck out "verified" before "petition to
cancel" in provision preceding par. (a).
1962 - Pub. L. 87-772 inserted provisions which require a
verified petition to cancel a registration, redesignated par. (d)
as (e), added par. (d) which is composed of provisions formerly
part of par. (c), and in said par. (c), substituted "registrant"
for "assignee", and struck out "on which the patent has expired"
before "or has been abandoned", and "has been assigned and" before
"is being used by".
EFFECTIVE DATE OF 1999 AMENDMENT
Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and
applicable only to any application for registration filed on or
after Jan. 16, 1996, see section 2(e) of Pub. L. 106-43, set out as
a note under section 1052 of this title.
EFFECTIVE DATE OF 1998 AMENDMENT
Amendment by section 201(a)(4) of 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 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 1982 AMENDMENT
Amendment by Pub. L. 97-247 effective six months after Aug. 27,
1982, see section 17(c) of Pub. L. 97-247, set out as a note under
section 294 of Title 35, Patents.
FINALITY OF JUDGMENTS PRIOR TO NOVEMBER 8, 1984
Section 104 of title I of Pub. L. 98-620 provided that: "Nothing
in this title [amending this section and section 1127 of this title
and enacting provisions set out as a note under section 1051 of
this title] shall be construed to provide a basis for reopening of
any final judgment entered prior to the date of enactment of this
title [Nov. 8, 1984]."
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 Federal Trade Commission, with
certain exceptions, to Chairman of such Commission, see Reorg. Plan
No. 8 of 1950, Sec. 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat.
1264, set out under section 41 of this title.
RESTRICTION ON USE OF FUNDS TO CANCEL REGISTRATION OF TRADEMARKS
For provisions restricting the use of funds authorized to be
appropriated to carry out section 41 et seq. of this title for
fiscal year 1980, 1981, or 1982, for the purpose of taking any
action under this section with respect to the cancellation of the
registration of any mark on the ground that such mark has become
the common descriptive name of an article or substance, see section
18 of Pub. L. 96-252, set out as a note under section 57c of this
title.