15 U.S.C. § 1063

Opposition to registration

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(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.(b) Unless registration is successfully opposed—(1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or(2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.(July 5, 1946, ch. 540, title I, § 13, 60 Stat. 433; Pub. L. 87–772, § 8, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93–600, § 1, Jan. 2, 1975, 88 Stat. 1955; Pub. L. 97–247, § 9(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 114, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 106–43, § 2(b), 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(b), Oct. 6, 2006, 120 Stat. 1732.)Editorial NotesPrior Provisions

Acts Feb. 20, 1905, ch. 592, §§ 6, 7, 33 Stat. 726; Mar. 2, 1907, ch. 2573, § 2, 34 Stat. 1252.

Amendments

2006—Subsec. (a). Pub. L. 109–312 substituted “the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment” for “as a result of dilution”.

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

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

1988—Pub. L. 100–667 designated existing provisions as subsec. (a), substituted “prescribed fee” for “required fee”, and added subsec. (b).

1982—Pub. L. 97–247 substituted “an” for “a verified” after “required fee, file”, inserted “when requested prior to the expiration of an extension” after “Commissioner for good cause” and struck out provision that an unverified opposition could be filed by a duly authorized attorney, but such opposition would be null and void unless verified by the opposer within a reasonable time after such filing is fixed by the Commissioner.

1975—Pub. L. 93–600 substituted provisions relating to extensions of time for filing opposition upon written request prior to the expiration of the thirty-day period for an additional thirty days, and further extensions for good cause, for provisions relating to extensions of the time for filing opposition for good cause shown.

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

1962—Pub. L. 87–772 inserted “An opposition may be amended under such conditions as may be prescribed by the Commissioner”, and struck out “notice of” after “file a verified” and “time for filing”.

Statutory Notes and Related SubsidiariesEffective Date of 1999 Amendments

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.

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 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 Amendments

Pub. L. 93–600, § 4, Jan. 2, 1975, 88 Stat. 1955, provided that: “This Act [amending this section and sections 1071 and 1117 of this title] shall become effective upon enactment [Jan. 2, 1975], but shall not affect any suit, proceeding, or appeal then pending.”

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

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 125 cases (17 in the last 5 years), 1951–2026 · leading case: Cae, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660 (7th Cir. 2001).

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Cae, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660 (7th Cir. 2001). · cites it 3× “filed a notice of opposition to Clean Air’s application pursuant to 15 U.S.C. § 1063 (a). It asserted that: (1) Clean Air’s CAE mark is confusingly and deceptively similar to CAE, Inc.”

Rosenruist-Gestao E Servicos LDA v. Virgin Enter. Ltd., 511 F.3d 437 (4th Cir. 2007). · cites it 6× “See 15 U.S.C.A. § 1063 (a) (West Supp.2007). VEL has a substantial presence in the United States through a vast array of businesses such as Virgin Atlantic Airways, Virgin Records, Virgin Mobile, Virgin Wines, and Virgin Digital.”

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). · cites it 2× “§ 13, 15 U. S. C. § 1063 . Registration of a mark provides constructive notice throughout the United States of the registrant's claim to ownership.”

B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). · cites it 2× “116(b), and if that burden cannot be met, the opposed mark must be registered, see 15 U. S. C. §1063 (b). The primary way in which TTAB proceedings differ from ordinary civil litigation is that “proceedings before the Board are conducted in writing, and the Board’s actions in a…”

Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007). · cites it 2× “[See 15 U.S.C. §§ 1063 (a), 1064, 1067(a). Cf.”

Enter. Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333 (Fed. Cir. 2003). · cites it 7× “Under the Trademark Amendments Act of 1999 § 2(b), 15 U.S.C. § 1063 (a), and the Federal Trademark Dilution Act of 1995 § 3, 15 U.”

William B. Ritchie v. Orenthal James Simpson, 170 F.3d 1092 (Fed. Cir. 1999). · cites it 4× “Pursuant to 15 U.S.C. § 1063 (1994), William B. Ritchie filed oppositions to registration of the three marks, asserting that they are not registrable on either of two statutory grounds: first, that the marks are immoral or scandalous matter and should be denied registration…”

Jean Alexander Cosmetics, Inc. v. L'OreaL Usa, Inc. Redkin 5th Avenue, N.Y.C, 458 F.3d 244 (3rd Cir. 2006). “See 15 U.S.C. § 1063 . Jean Alexander timely filed a notice of opposition to the registration of the modernized Shades EQ mark, arguing that it would likely be confused with the EQ System mark.”

Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988). · cites it 2× “See 15 U.S.C. § 1063 (1982). Tropicana’s Notice of Opposition asserted that the TROPICOLA mark too closely resembled Tropicana's own registered marks, TROPICANA, TROPIC-ANA, and TROPI, used on its non-carbonated fruit juice products, creating a likelihood of confusion, mistake,…”

Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010). “Once the PTO issues a "notice of allowance” of the ITU application pursuant to 15 U.S.C. § 1063 (b), the applicant has six months, absent extension, to begin using the mark in commerce.”

Major League Baseball Props., Inc. v. Opening Day Prods., Inc., 385 F. Supp. 2d 256 (S.D.N.Y. 2005). · cites it 2× “In the opposition proceeding, under 15 U.S.C. § 1063 , plaintiffs have the option to file an opposition or intervene in the registration of a trademark.”

Int'l Travelers Cheque Co. v. Bankamerica Corp. & Bank of Am. Nat'l Trust & Sav. Ass'n, 660 F.2d 215 (7th Cir. 1981). · cites it 2× “The Lanham Act, 15 U.S.C. § 1063 , provides that opposition to a registration be filed in the Patent and Trademark Office, located in the District of Columbia.”

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