15 U.S.C. § 1067

Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board

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(a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.(b) The Trademark Trial and Appeal Board shall include the Director, Deputy 11 So in original. Probably should be preceded by “the”. Director of the United States Patent and Trademark Office 22 So in original. Probably should be followed by a comma. the Commissioner for Patents, the Commissioner for Trademarks, and administrative trademark judges who are appointed by the Secretary of Commerce, in consultation with the Director.(c)Authority of the Secretary.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative trademark judge who, before August 12, 2008, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative trademark judge.(d)Defense to Challenge of Appointment.—It shall be a defense to a challenge to the appointment of an administrative trademark judge on the basis of the judge’s having been originally appointed by the Director that the administrative trademark judge so appointed was acting as a de facto officer.(July 5, 1946, ch. 540, title I, § 17, 60 Stat. 434; Pub. L. 85–609, § 1(a), Aug. 8, 1958, 72 Stat. 540; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96–455, § 1, Oct. 15, 1980, 94 Stat. 2024; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4716], Nov. 29, 1999, 113 Stat. 1536, 1501A–580; Pub. L. 107–273, div. C, title III, § 13203(a)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 110–313, § 1(b), Aug. 12, 2008, 122 Stat. 3014.)Editorial NotesPrior Provisions

Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726.

Amendments

2008—Subsec. (b). Pub. L. 110–313, § 1(b)(1), inserted “Deputy Director of the United States Patent and Trademark Office” after “Director,” and substituted “appointed by the Secretary of Commerce, in consultation with the Director” for “appointed by the Director”.

Subsecs. (c), (d). Pub. L. 110–313, § 1(b)(2), added subsecs. (c) and (d).

2002—Subsec. (b). Pub. L. 107–273, which directed amendment of subsec. (b) by inserting “the Deputy Commissioner,” after “Commissioner,”, could not be executed because “Commissioner,” does not appear in text.

1999—Pub. L. 106–113 amended section generally. Prior to amendment, section read as follows:

“In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.

“The Trademark Trial and Appeal Board shall include the Commissioner, the Deputy Commissioner, the Assistant Commissioners, and members appointed by the Commissioner. Employees of the Patent and Trademark Office and other persons, all of whom shall be competent in trademark law, shall be eligible for appointment as members. Each case shall be heard by at least three members of the Board, the members hearing such case to be designated by the Commissioner.”

1980—Pub. L. 96–455 inserted provisions requiring that the Trademark Trial and Appeal Board include the Deputy Commissioner and members appointed by the Commissioner and provisions that employees of the Patent and Trademark Office and other persons, all of whom shall be competent in trademark law, shall be eligible for appointment as members; and struck out provision that the Board include Patent and Trademark Office employees, designated by the Commissioner and whose qualifications have been approved by the Civil Service Commission as being adequate for appointment to the position of examiner in charge of interferences.

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

1958—Pub. L. 85–609 substituted “a Trademark Trial and Appeal Board” for “the examiner in charge of interferences” in first paragraph, and inserted second paragraph relating to the composition of the Board.

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 1980 Amendment; Board Membership as of October 15, 1980, Unaffected

Pub. L. 96–455, § 2, Oct. 15, 1980, 94 Stat. 2024, provided that: “This amendment [amending this section] shall become effective on the date of its enactment [Oct. 15, 1980]. Members of the Trademark Trial and Appeal Board on the date of enactment shall continue to be members under and in accordance with the provisions of section 17 of the Act of July 5, 1946, as amended [this section], in effect immediately preceding the date of enactment.”

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 of 1958 Amendment

Pub. L. 85–609, § 3, Aug. 8, 1958, 72 Stat. 541, provided that: “This Act [amending this section and sections 1070, 1071, 1092, and 1113 of this title] shall take effect on approval [Aug. 8, 1958]; it shall apply to ex parte appeals taken to the Commissioner prior to the date of approval which have not been heard but shall not apply to any such appeal which has been heard or decided in which event further proceedings may be had as though this Act had not been passed; it shall apply to inter partes cases instituted prior to the date of approval which have not been heard by an examiner of interferences, but shall not apply to any such case which has been heard or decided by an examiner of interferences in which event further proceedings may be had as though this Act had not passed.”

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.

Reorganization Plan No. 5 of 1950

Pub. L. 85–609, § 2, Aug. 8, 1958, 72 Stat. 540, provided that: “The provisions of this Act [amending this section and sections 1070, 1071, 1092, and 1113 of this title] shall be subject to Reorganization Plan No. 5 of 1950 (64 Stat. 1263).”

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 39 cases (11 in the last 5 years), 1961–2025 · leading case: B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015).

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B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). · cites it 2× “The Act authorizes the TTAB only to “deter- mine and decide the respective rights of [trademark] registration,” 15 U. S. C. §1067 (a), thereby withholding any authority from the TTAB to “determine the right to use” a trademark or to “decide broader questions of in- fringement or…”

Rosenruist-Gestao E Servicos LDA v. Virgin Enter. Ltd., 511 F.3d 437 (4th Cir. 2007). · cites it 4× “See 15 U.S.C.A. § 1067 (a) (West Supp.2007). [4] Procedure in inter partes matters diverges from that in district court at the trial stage, in that the taking of testimony does not occur in the presence of the TTAB.”

Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007). “” 15 U.S.C. § 1067 (a); see also 15 U.S.C. §§ 1063 (a), 1064.”

Cae, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660 (7th Cir. 2001). “” 15 U.S.C. § 1067 . Any party dissatisfied with the TTAB’s decision may appeal either to the United States Court of Appeals for the Federal Circuit or to a federal district court.”

V.V v. & Sons Edible Oils Ltd. v. Meenakshi Overseas, LLC, 946 F.3d 542 (9th Cir. 2019). “15 U.S.C. § 1067 (a) (TTAB “determine[s] and decide[s] the respective rights of [trademark] registration”).”

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× “11 15 U.S.C. § 1067 then specifies that an opposition to registration be heard by the Trademark Trial and Appeal Board, also located in the District of Columbia.”

El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161 (10th Cir. 2016). “See 15 U.S.C. § 1067 . So it is everyone agrees that the first sentence of the statute allows parties like El Encanto to compel nonparties like Mizkan to appear and testify at a deposition.”

Pro Ftbl Inc v. Harjo, Suzan, 415 F.3d 44 (D.C. Cir. 2005). “This triggers a proceeding before the TTAB, see 15 U.S.C. § 1067 , which takes evidence and determines whether to cancel the mark.”

Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988). “§ 1063 , and the TTAB is established “to determine and decide the respective rights of registration” in contested proceedings, 15 U.S.C. § 1067 . An applicant for registration or party to an opposition or cancellation proceeding disappointed with the decision of the TTAB may…”

In Re Kuriappan P. Alappat, Edward E. Averill & James G. Larsen, 33 F.3d 1526 (Fed. Cir. 1994). “Compare MPEP § 1201 (1993): If a board member becomes incapacitated after a hearing but before the decision, the Chairman of the Board, at his discretion, may without rehearing substitute a different board member for the incapacitated one, or offer the applicant an opportunity…”

Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685 (C.C.P.A. 1961). · cites it 3× “” Section 17 ( 15 U.S.C. § 1067 , 15 U.S.C.A. ¶ 1067, as amended Aug.”

Piano Factory Grp., Inc. v. Schiedmayer Celesta Gmbh, 11 F.4th 1363 (Fed. Cir. 2021). “While that authority must be exercised “as the rights of the par- ties under this chapter may be established in the proceed- ings,” the Director’s broad authority under sections 17 and 41 of the Lanham Act, 15 U.S.C. §§ 1067 and 1123, to take control of a TTAB case provides a…”

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