15 U.S.C. § 1059

Renewal of registration

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(a) Period of renewal; time for renewal

Subject to the provisions of section 1058 of this title, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.

(b) Notification of refusal of renewal

If the Director refuses to renew the registration, the Director shall notify the registrant of the Commissioner’s 11 So in original. Probably should be “Director’s”. refusal and the reasons therefor.

If the registrant is not domiciled in the United States the registrant 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, § 9, 60 Stat. 431; Pub. L. 87–772, § 5, Oct. 9, 1962, 76 Stat. 770; Pub. L. 100–667, title I, § 111, Nov. 16, 1988, 102 Stat. 3939; Pub. L. 105–330, title I, § 106, Oct. 30, 1998, 112 Stat. 3067; 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)(4), Nov. 2, 2002, 116 Stat. 1907.)Editorial NotesPrior Provisions

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

Amendments

2002—Subsec. (c). Pub. L. 107–273 amended subsec. (c) 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—Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”.

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

Subsec. (c). 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 period of renewal and time for renewal, notification of refusal of renewal, and applicants for renewal not domiciled in the United States.

1988—Subsec. (a). Pub. L. 100–667, § 111(1), substituted “ten” for “twenty”.

Subsec. (c). Pub. L. 100–667, § 111(2), substituted “1051(e)” for “1051(d)”.

1962—Pub. L. 87–772 designated existing provisions as subsecs. (a) and (c), added subsec. (b), and among other changes, amended subsec. (a) by substituting provisions requiring a verified application specifying the goods or services recited in the registration on or in connection with which the mark is still in use in commerce and having attached a specimen showing current use of the mark, or showing that any nonuse is due to special circumstances which excuse the nonuse and that it’s not due to an intention to abandon the mark, for provisions requiring an affidavit by the registrant stating that the mark is still in use in commerce.

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.

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(d), Oct. 30, 1998, 112 Stat. 3069, provided that: “The amendment made by section 106 [amending this section] shall apply to the filing of an application for renewal of a registration if the expiration date of the registration for which the renewal application 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.

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.

Renewal Under Prior Acts

Renewal of registrations under prior acts, see section 46(b) of act July 5, 1946, set out as a note under section 1051 of this title.

Extension of Time for Renewal by Foreign Registrant

Act July 17, 1946, ch. 587, 60 Stat. 568, provided for extension of time for renewal by a foreign registrant and expired by its own terms July 17, 1949.

Notes of Decisions

Cited in 30 cases (3 in the last 5 years), 1956–2026 · leading case: Empresa Cubana Exportadora De Alimentos Y Productos Varios v. United States Dep't of Treasury, 638 F.3d 794 (D.C. Cir. 2011).

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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. § 1059 (requiring payment of fee to renew trademark).”

Miguel Torres v. Cantine Torresella S.R.L., Assignee of S. Margherita S.P.A., 808 F.2d 46 (Fed. Cir. 1986). · cites it 2× “15 U.S.C. § 1059 (1982). In the renewal application, Torres averred that the mark as registered in registration No.”

Heckler & Koch, Inc. v. German Sport Guns GmbH, 71 F. Supp. 3d 866 (S.D. Ind. 2014). · cites it 2× “§ 1059 , prescribes the procedure for renewal of registrations after 10-year intervals: “[EJaeh registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing…”

Processed Plastic Co., Counterdefendant-Appellant v. Warner Commc'ns, Inc., & Warner Bros., Inc., Counterplaintiff-Appellee, 675 F.2d 852 (7th Cir. 1982). “and for trademark infringement under 15 U.S.C. § 1059 et seq. as well as under common law trademark infringement, false designation of origin and related state and common law theories of action.”

United States Jaycees v. San Francisco Jr. Cham. of Com., 354 F. Supp. 61 (N.D. Cal. 1972). · cites it 2× “” Furthermore, pursuant to 15 U.S.C. § 1059 (a) 5 National has filed a timely *70 application for renewal as to one of the recently expired collective marks which incorporated the designation “The United States Junior Chamber of Commerce.”

Exxon Corp., Humble Oil & Refining Corp., Humble Gas Transmission Co. & Humble, Inc. v. Humble Expl. Co., Inc., 695 F.2d 96 (5th Cir. 1983). “§ 1058 , and the renewal of registration section, see 15 U.S.C. § 1059 . Those sections speak of a showing that any “nonuse is due to special circumstances which excuse such nonuse and it is not due to any intention to abandon the mark.”

Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F.R.D. 151 (S.D.N.Y. 2003). “One means of so rebutting the presumption is to make a showing of excusable non-use similar to that permitted under Section 9(a) of the Lanham Act, 15 U.S.C. § 1059 (a). Jose M. Arechabala Rodrigo v.”

Bull S.A. v. Douglas B. Comer, Comm'r of Patents & Trademarks, 55 F.3d 678 (D.C. Cir. 1995). · cites it 2× “§ 1058 , and may “be renewed for periods of [twenty] years from the end of the expiring period,” 15 U.S.C. § 1059 (a). 1 Applications for renewal are accepted up to six months before or three months after “the expiration of the period for which the registration was issued or…”

Chips 'N Twigs, Inc. v. Chip-Chip, Ltd., 414 F. Supp. 1003 (E.D. Pa. 1976). “572 was assigned to Chips and was renewed for 20 years under section 9 of the Act, 15 U.S.C. § 1059 , on March 13, 1965. 5. On July 20, 1944, B.”

In Re Holland Am. Wafer Co., 737 F.2d 1015 (Fed. Cir. 1984). · cites it 2× “Patent and Trademark Office (PTO) on August 10, 1981, approximately a month before the period provided for renewal in Section 9 of the Lanham Act ( 15 U.S.C. § 1059 (a)) 1 . The papers, though premature for renewal, were transmitted to the office which handles amendments,…”

Empresa Cubana Exportadora De Alimentos Y Productos Varios v. United States Dep't of Treasury, 516 F. Supp. 2d 43 (D.D.C. 2007). “See 15 U.S.C. § 1059 (a) (“each registration may be renewed for periods of 10 years”).”

G.H. Mumm & Cie (Societe Vinicole De Champagne Successeurs of New York, Inc.) v. Desnoes & Geddes, Ltd., Cross-Appellant, 917 F.2d 1292 (Fed. Cir. 1990). “Inequitable Conduct Before the Patent and Trademark Office Desnoes asserts that Mumm engaged in inequitable conduct involving fraud and unclean hands before the Patent and Trademark Office when, during the ’907 registration renewal in 1982, Mumm submitted partially completed…”

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