15 USC § 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Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register—

(1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125 (c) of this title; or

(2) on grounds other than dilution by blurring or dilution by tarnishment,

such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration. The Director shall refer such application to the Trademark Trial and Appeal Board which shall give notice thereof to the registrant. If it is found after a hearing before the Board that the registrant is not entitled to registration, or that the mark has been abandoned, the registration shall be canceled by the Director. However, no final judgment shall be entered in favor of an applicant under section 1051 (b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057 (c) of this title.

Source

(July 5, 1946, ch. 540, title II, § 24,60 Stat. 436; Pub. L. 85–609, § 1(d),Aug. 8, 1958, 72 Stat. 540; Pub. L. 87–772, § 14,Oct. 9, 1962, 76 Stat. 773; Pub. L. 93–596, § 1,Jan. 2, 1975, 88 Stat. 1949; Pub. L. 100–667, title I, § 122,Nov. 16, 1988, 102 Stat. 3943; Pub. L. 106–43, § 2(d),Aug. 5, 1999, 113 Stat. 218; 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. 109–312, § 3(d),Oct. 6, 2006, 120 Stat. 1732.)

Prior Provisions

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

Amendments

2006—Pub. L. 109–312amended second sentence generally. Prior to amendment, second sentence read as follows: “Whenever any person believes that he is or will be damaged by the registration of a mark on this register, including as a result of dilution under section 1125 (c) of this title, he may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.” The words following “tarnishment,” in second sentence are shown as a flush provision notwithstanding directory language showing them as part of cl. (2), to reflect the probable intent of Congress.

1999—Pub. L. 106–113substituted “Director” for “Commissioner” wherever appearing.

Pub. L. 106–43inserted “, including as a result of dilution under section 1125 (c) of this title,” after “register” in second sentence.

1988—Pub. L. 100–667struck out “verified” after “filing of a”, substituted “is not entitled to registration,” for “was not entitled to register the mark at the time of his application for registration thereof,” struck out “is not used by the registrant or” after “that the mark”, and inserted provision that no final judgment be entered before mark is registered if applicant cannot prevail without establishing constructive use.

1975—Pub. L. 93–596substituted “Patent and Trademark Office” for “Patent Office”.

1962—Pub. L. 87–772provided for payment of the prescribed fee and the filing of a verified petition.

1958—Pub. L. 85–609substituted provisions requiring the Commissioner to refer applications to the Trademark Trial and Appeal Board for provisions which required referral to the examiner in charge of interferences.

Effective Date of 1999 Amendments

Amendment by Pub. L. 106–113effective 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.

Amendment by Pub. L. 106–43effective Aug. 5, 1999, and applicable only to any application for registration filed on or after Jan. 16, 1996, see section 2(e) ofPub. L. 106–43, set out as a note under section 1052 of this title.

Effective Date of 1988 Amendment

Amendment by Pub. L. 100–667effective one year after Nov. 16, 1988, see section 136 ofPub. L. 100–667, set out as a note under section 1051 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 93–596effective Jan. 2, 1975, see section 4 ofPub. L. 93–596, set out as a note under section 1111 of this title.

Effective Date of 1958 Amendment

For effective date and applicability of amendment by Pub. L. 85–609, see section 3 ofPub. L. 85–609, set out as a note under section 1067 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, with certain exceptions, to Secretary of Commerce, with power to delegate, 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.

Reorganization Plan No. 5 of 1950

Amendment by Pub. L. 85–609as subject to Reorganization Plan No. 5 of 1950, see note set out under section 1067 of this title.