§ 1051. Application for registration; verification

(a) Application for use of trademark

(1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.

(2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.

(3) The statement shall be verified by the applicant and specify that—

(A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;

(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate;

(C) the mark is in use in commerce; and

(D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall—

(i) state exceptions to the claim of exclusive use; and

(ii) shall specify, to the extent of the verifier’s knowledge—

(I) any concurrent use by others;

(II) the goods on or in connection with which and the areas in which each concurrent use exists;

(III) the periods of each use; and

(IV) the goods and area for which the applicant desires registration.

(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.

(b) Application for bona fide intention to use trademark

(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

(2) The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.

(3) The statement shall be verified by the applicant and specify—

(A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;

(B) the applicant’s bona fide intention to use the mark in commerce;

(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate; and

(D) that, to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.

Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.

(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.

(c) Amendment of application under subsection (b) to conform to requirements of subsection (a)

At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.

(d) Verified statement that trademark is used in commerce

(1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and 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. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.

(2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.

(3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.

(4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.

(e) Designation of resident for service of process and notices

If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

(July 5, 1946, ch. 540, title I, § 1, 60 Stat. 427; Pub. L. 87–772, § 1, Oct. 9, 1962, 76 Stat. 769; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 103, Nov. 16, 1988, 102 Stat. 3935; Pub. L. 105–330, title I, § 103, title II, § 201(a)(1), Oct. 30, 1998, 112 Stat. 3064, 3069; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(1), (2), Nov. 2, 2002, 116 Stat. 1906.)

Prior Provisions

Prior Provisions

Subsecs. (a) to (c) are from acts Feb. 20, 1905, ch. 592, §§ 1, 2, 33 Stat. 724; May 4, 1906, ch. 2081, § 1, 34 Stat. 168; Feb. 18, 1909, ch. 144, 35 Stat. 628; Apr. 11, 1930, ch. 132, § 4, 46 Stat. 155; June 10, 1938, ch. 332, § 1, 52 Stat. 638.

Subsec. (d) is from act Feb. 20, 1905, ch. 592, § 3, 33 Stat. 725.

Amendments

Amendments

2002—Subsec. (d)(1). Pub. L. 107–273, § 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, § 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, § 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, § 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, § 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, § 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, § 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, § 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, § 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, § 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 Amendment

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, § 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, § 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, § 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, § 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

Pub. L. 100–667, title I, § 136, Nov. 16, 1988, 102 Stat. 3948, 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

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 Amendment

Short Title of 2010 Amendment

Pub. L. 111–146, § 1, Mar. 17, 2010, 124 Stat. 66, provided that: “This Act [amending sections 1057, 1058, 1065, 1071, and 1141k of this title] may be cited as the ‘Trademark Technical and Conforming Amendment Act of 2010’.”

Short Title of 2006 Amendment

Pub. L. 109–312, § 1(a), Oct. 6, 2006, 120 Stat. 1730, provided that: “This Act [amending sections 1052, 1063, 1064, 1092, 1125, and 1127 of this title] may be cited as the ‘Trademark Dilution Revision Act of 2006’.”

Short Title of 2004 Amendment

Pub. L. 108–482, § 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, § 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, § 13401, Nov. 2, 2002, 116 Stat. 1913, provided that: “This subtitle [subtitle D (§§ 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, § 1000(a)(9) [title III, § 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, § 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, § 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, § 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, § 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

Pub. L. 100–667, title I, § 101, Nov. 16, 1988, 102 Stat. 3935, 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, § 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

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”.

Miscellaneous

Repeal of Inconsistent Provisions; Certain Provisions Not Affected

Act July 5, 1946, ch. 540, title XI, § 46(a), 60 Stat. 444, as amended by Pub. L. 106–43, § 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].”

Act July 5, 1946, ch. 540, title XI, § 48, 60 Stat. 446, 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

Savings Provision

Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 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

Separability

Act July 5, 1946, ch. 540, title XI, § 50, 60 Stat. 446, 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

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, §§ 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.

Miscellaneous

Pending Proceedings and Existing Registration and Rights Under Prior Acts

Act July 5, 1946, ch. 540, title XI, § 46(a), 60 Stat. 444, 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].”

Act July 5, 1946, ch. 540, title XI, §§ 46(b), 47, 60 Stat. 445, 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.”

Act July 5, 1946, ch. 540, title XI, § 49, 60 Stat. 446, 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.