15 U.S.C. § 1058

Duration, affidavits and fees

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(a) Time periods for required affidavitsEach registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title.(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.(b) Requirements for affidavitThe affidavit referred to in subsection (a) shall—(1)(A) state that the mark is in use in commerce;(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and(D) be accompanied by the fee prescribed by the Director; or(2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and(C) be accompanied by the fee prescribed by the Director.(c) Deficient affidavit

If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.

(d) Notice of requirement

Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under section 1062(c) of this title.

(e) Notification of acceptance or refusal

The Director shall notify any owner who files any affidavit required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.

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

If the owner is not domiciled in the United States, the owner 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 last designated address, or if the owner 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, § 8, 60 Stat. 431; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–247, § 8, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 110, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105–330, title I, § 105, Oct. 30, 1998, 112 Stat. 3066; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B), (C)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 107–273, div. C, title III, § 13207(b)(3), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 111–146, § 3(d)(1), Mar. 17, 2010, 124 Stat. 67.)Editorial NotesPrior Provisions

Act Feb. 20, 1905, ch. 592, § 12, 33 Stat. 727.

Amendments

2010—Pub. L. 111–146 amended section generally. Prior to amendment, section related to duration of registrations, affidavits of continuing use, grace period for submissions and correction of deficiencies, certain notice requirements related to affidavits, and designation of resident for service of process and notices.

2002—Subsec. (f). Pub. L. 107–273 amended subsec. (f) generally. Prior to amendment, text read as follows: “If the registrant is not domiciled in the United States, the registrant shall designate by a written document filed in the Patent and Trademark Office the name and address of some 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, such notice or process may be served upon the Director.”

1999—Subsecs. (a) to (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner” wherever appearing.

Subsec. (e). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B), (C)], amended subsec. (e) identically, substituting “Director” for “Commissioner”.

Subsec. (f). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”.

1998—Pub. L. 105–330 amended section catchline and text generally. Prior to amendment, text consisted of subsecs. (a) to (c) relating to affidavits of continuing use, registrations published under other provisions of law, and notification of acceptance or refusal of affidavits.

1988—Subsec. (a). Pub. L. 100–667 substituted “ten” for “twenty” and “setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce and attaching to the affidavit a specimen or facsimile showing current use of the mark, or showing that any” for “showing that said mark is in use in commerce or showing that its”.

1982—Subsecs. (a), (b). Pub. L. 97–247 struck out “still” after “showing that said mark is”, and inserted “in commerce” after “use”.

1975—Subsecs. (a), (b). Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

Statutory Notes and Related SubsidiariesEffective 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

Amendment by Pub. L. 105–330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of Pub. L. 105–330, set out as a note under section 1051 of this title.

Pub. L. 105–330, title I, § 109(a), Oct. 30, 1998, 112 Stat. 3069, provided that: “The provisions of section 8 of the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to a registration for trademark issued or renewed for a 20-year term, if the expiration date of the registration is 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 under section 1051 of this title].”

For provisions relating to applicability of amendment by Pub. L. 105–330 to applications for registration of trademarks, see section 109(b) of Pub. L. 105–330, set out as a note under section 1051 of this title.

Pub. L. 105–330, title I, § 109(c), Oct. 30, 1998, 112 Stat. 3069, provided that: “The provisions of section 8 of the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to the filing of an affidavit if the sixth or tenth anniversary of the registration, or the sixth anniversary of publication of the registration under section 12(c) of the Trademark Act of 1946 [15 U.S.C. 1062(c)], for which the affidavit is filed is 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 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.

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, and saving clause, see notes set out under section 1051 of this title.

References to Trademark Act of 1946

Pub. L. 105–330, title I, § 102, Oct. 30, 1998, 112 Stat. 3064, provided that: “For purposes of this title [see Short Title of 1998 Amendment note set out under section 1051 of this title], the Act entitled ‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes’, approved July 5, 1946 (15 U.S.C. 1051 et seq.), shall be referred to as the ‘Trademark Act of 1946’.”

Pending Applications

Act July 5, 1946, ch. 540, title XI, § 51, as added Nov. 16, 1988, Pub. L. 100–667, title I, § 135, 102 Stat. 3948, provided that: “All certificates of registration based upon applications for registration pending in the Patent and Trademark Office on the effective date of the Trademark Law Revision Act of 1988 [see Effective Date of 1988 Amendment note set out under section 1051 of this title] shall remain in force for a period of 10 years.”

Executive DocumentsTransfer 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.

Notes of Decisions

Cited in 173 cases (25 in the last 5 years), 1958–2026 · leading case: Patsy's Italian Restaurant, Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y 2007).

Sort: Relevance Newest Treatment

Patsy's Italian Restaurant, Inc. v. Banas, 508 F. Supp. 2d 194 (E.D.N.Y 2007). · cites it 4× “1,975,110 and 2,213,574 are cancelled pursuant to Section 8 of the Trademark Act, 15 U.S.C. § 1058 , and (4) suspends the proceedings pending final resolution of the instant civil actions.”

Cuban Cigar Brands N. v. v. Upmann Int'l, Inc., 457 F. Supp. 1090 (S.D.N.Y. 1978). · cites it 3× “In 1962, Suarez filed a combined affidavit under Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 , 1065. Suarez has no records of his business either with Upmann or alone, and consequently, there is lack of or insufficient evidence upon which accurately to determine the…”

Fisons Horticulture, Inc., in No. 93-7224 v. Vigoro Indus., Inc., in No. 93-7287, 30 F.3d 466 (3rd Cir. 1994). · cites it 2× “The first two requirements, validity and legal protectability, are proven where, as here, a mark was federally registered and has become “incontestible” under the Lanham Act, 15 U.S.C. §§ 1058 and 1065. 7 Ford Motor Co.”

E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., & Roger Myers D/B/A F. Remy & Cie, 756 F.2d 1525 (11th Cir. 1985). · cites it 2× “15 U.S.C. § 1058 (a) (1982). 3 . Buchanan v.”

Beauty Time, Inc. Beauty Makers, Inc. & R. Richard Riso v. Vu Skin Sys., Inc. Bjv Dpm Skin Sys., Inc. & Marion M. Vujevich, 118 F.3d 140 (3rd Cir. 1997). · cites it 3× “This appeal primarily presents a novel question in this Circuit concerning the constructive notice provisions of the Lanham Act, 15 U.S.C. § 1058 , the application of a statute of limitations borrowed from the state of Pennsylvania, and the tolling principles of that state.”

United States Jaycees v. Philadelphia Jaycees, 490 F. Supp. 688 (E.D. Pa. 1980). · cites it 6× “Affidavits have been filed and accepted pursuant to 15 U.S.C. §§ 1058 and 1065 with respect to registration numbers 746,757, 810,264, 813,205, and 813,475.”

Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023). · cites it 4× “See 15 U.S.C. §§ 1058 , 1065. In the Section 15 portion of the declaration, relating to Great Concepts’ effort to obtain incontestable status for its al- ready-registered mark, Mr.”

In Re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). “In addition, at the end of the sixth year after the date of registration and at the end of each successive ten-year period after the date of registration, the owner must file a Section 8 Declaration of Continued Use, "an affidavit setting forth those goods or services recited in…”

Union Carbide Corp. v. Ever-Ready Inc., a Corp., & Mark Gilbert, an Individual, 531 F.2d 366 (7th Cir. 1976). “Affidavits have been filed pursuant to 15 U.S.C. §§ 1058 (for continued validity) and 1065 (for incontestability).”

Renaissance Greeting Cards, Inc. v. Dollar Tree Stores, Inc., 405 F. Supp. 2d 680 (E.D. Va. 2005). · cites it 2× “15 U.S.C. § 1058 (a). In addition, counsel for RGC corresponded with three other parties using or intending to use the RENAISSANCE mark in a conflicting manner, which resulted in the cessation of the conflicting use.”

Empresa Cubana Exportadora De Alimentos Y Productos Varios v. United States Dep't of Treasury, 638 F.3d 794 (D.C. Cir. 2011). · cites it 2× “See 15 U.S.C. §§ 1058 (b), 1059(a). The only purpose of a renewal is to remove an abandoned trademark from the register.”

James Burrough Ltd. & Kobrand Corp. v. Sign of the Beefeater, Inc., & Montgomery Ward & Co., Inc., 540 F.2d 266 (7th Cir. 1976). “Affidavits under §§ 8, 15 of the Lanham Act, 15 U.S.C. §§ 1058 , 1065 are in the file of this registration.”

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