15 U.S.C. § 1092

Publication; not subject to opposition; cancellation

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Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office.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, unless the Director reconsiders the decision of the Board, and modifies or sets aside, such decision. 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.(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; Pub. L. 116–260, div. Q, title II, § 228(a)(3), Dec. 27, 2020, 134 Stat. 2210.)Editorial NotesPrior Provisions

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

Amendments

2020—Pub. L. 116–260 inserted “, unless the Director reconsiders the decision of the Board, and modifies or sets aside, such decision” after “shall be canceled by the Director” in concluding provisions.

2006—Pub. L. 109–312 amended 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. 106–113 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 “register” in second sentence.

1988—Pub. L. 100–667 struck 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. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

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

1958—Pub. L. 85–609 substituted 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.

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 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

For effective date and applicability of amendment by Pub. L. 85–609, see section 3 of Pub. 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.

Construction of 2020 Amendment

For construction of amendment made by Pub. L. 116–260 regarding Director’s authority before Dec. 27, 2020, and authority with respect to particular decisions, see section 228(b) of div. Q of Pub. L. 116–260, set out as a note under section 1068 of this title.

Reorganization Plan No. 5 of 1950

Amendment by Pub. L. 85–609 as subject to Reorganization Plan No. 5 of 1950, see note set out under section 1067 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 16 cases (1 in the last 5 years), 1958–2021 · leading case: Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965 (Fed. Cir. 2018).

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Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965 (Fed. Cir. 2018). “" 15 U.S.C. § 1092 . But see id. (explaining further that a mark seeking registration on the supplemental register is still subject to cancellation proceedings).”

Eldon Indus., Inc. v. Rubbermaid, Inc., 735 F. Supp. 786 (N.D. Ill. 1990). · cites it 2× “See Lanham Act § 24, 15 U.S.C. § 1092 . Since § 1114, by its very language, applies only to registered marks, the cancellation of registration would eliminate the basis for any statutory claim of trademark infringement under § 1114.”

Piano Factory Grp., Inc. v. Schiedmayer Celesta Gmbh, 11 F.4th 1363 (Fed. Cir. 2021). “At oral argument, Sweet 16 contended that, as of 2019, 15 U.S.C. § 1092 insulated from the Director’s review TTAB decisions canceling trademark registrations on the supplemental register.”

In re Clorox Co., 578 F.2d 305 (C.C.P.A. 1978). · cites it 2× “Appellant has a cancellation proceeding available under 15 U.S.C. § 1092 , if registrant was not entitled to registration because the mark is a common descriptive term and thus incapable of indicating origin of the goods, or because the mark is not used by the registrant or has…”

Cummins Engine Co., Inc. v. Cont'l Motors Corp., 359 F.2d 892 (C.C.P.A. 1966). · cites it 2× “employing the term “TURBODIE-SEL”] from consideration under Seetion 24 of the Trademark Act of 1946 [ 15 U.S.C. § 1092 ], We find it unnecessary to decide that issue since we assume arguendo the correct date to be December 22, 1955, yet find in the remaining 32 prior exhibits in…”

Fuller Prods. Co. v. The Fuller Brush Co., 299 F.2d 772 (7th Cir. 1962). “r cancellation from the Supplemental Register of the defendant’s mark “Fuller” for vitamin food supplement; that is, has the plaintiff demonstrated that the defendant was not entitled to register the mark “Fuller” for vitamin food supplement at the time that the application for…”

D. M. & Antique Imp. Corp. v. Royal Saxe Corp., 311 F. Supp. 1261 (S.D.N.Y. 1970). “§ 1064 (“Cancellation of Registrations”) and 15 U.S.C. § 1092 (“Cancellation of marks on the Supplemental Register”)] both entitle “any person” to file a cancellation petition when he “believes that he is or will be damaged by the registration of a mark * * *.”

Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184 (C.C.P.A. 1964). · cites it 2× “] Relying on Section 24 ( 15 U.S.C. § 1092 10 ) of the Trademark Act of 1946, the majority of the board then concluded that since it has been found after a hearing before the board that appellant-respondent was not entitled to register its mark in issue at the time of its…”

Helpful Hound, L. L.C. v. New Orleans Bldg. Corp., 333 F. Supp. 3d 593 (E.D. La. 2018). “32 See 15 U.S.C. §§ 1092 (2), 1119. Plaintiffs allege that Helpful Hound falsely represented that "St.”

Bellbrook Dairies, Inc. (Edlo, Inc., Assignee, Substituted) v. Bowman Dairy Co., 273 F.2d 620 (C.C.P.A. 1960). · cites it 3× “Appellant seeks cancellation pursuant to Section 24 of the Lanham Act, 15 U.S.C.A. § 1092 , and predicates his right to secure cancellation upon his prior use 2 of “Slim” for vitamin enriched fluid non-fat milk.”

Irving-Cloud Publ'g Co. v. Chilton Co., 463 F. Supp. 476 (E.D. Pa. 1978). · cites it 2× “Patent Office to cancel the trademark, pursuant to 15 U.S.C. § 1092 . 7 During the pendency of the cancellation proceedings Chilton filed an application with the U.”

Prod. Source Int'l, LLC v. Nahshin, 112 F. Supp. 3d 383 (E.D. Va. 2015). “” 15 U.S.C. § 1092 . A mark which “so resembles .”

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