§ 1052. Trademarks registrable on principal register; concurrent registration

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1946

   Pub. L. 79–540 · 60 Stat. 427

   Enacted · 15 U.S.C. § 1052

   July 5, 1946, ch. 540, title I, § 2, 60 Stat. 428

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title I, § 2, 60 Stat. 428

2. 1962

   Pub. L. 87–772 § 2 · 76 Stat. 769

   Substituted · 15 U.S.C. § 1052(d)

   Pub. L. 87–772, among other changes, substituted provisions authorizing the issuance of concurrent registrations to persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any registration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under the act of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in the case of applications under the act of Feb. 20, 1905, and registered after July 5, 1947, for provisions which restricted issuance of concurrent registrations to persons entitled to use such mark as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved, and provisions directing that issuance of the mark be upon such conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, for provisions which required issuance under conditions and limitations as to the mode or place of use of the goods in connection with which such registrations may be granted, and eliminated provisions which limited confusion, mistake, or deception to purchasers, required written notice of applications for concurrent registrations and of hearings thereon, and publication in the Official Gazette upon a decision to grant such a registration and permitted a court to order such a registration under section 4915 of the Revised Statutes

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 87–772, among other changes, substituted provisions authorizing the issuance of concurrent registrations to persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any registration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under the act of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in the case of applications under the act of Feb. 20, 1905, and registered after July 5, 1947, for provisions which restricted issuance of concurrent registrations to persons entitled to use such mark as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved, and provisions directing that issuance of the mark be upon such conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, for provisions which required issuance under conditions and limitations as to the mode or place of use of the goods in connection with which such registrations may be granted, and eliminated provisions which limited confusion, mistake, or deception to purchasers, required written notice of applications for concurrent registrations and of hearings thereon, and publication in the Official Gazette upon a decision to grant such a registration and permitted a court to order such a registration under section 4915 of the Revised Statutes.

   Enacted provision · exact public law section
   Sec. 2. Subsection (d) of section 2 is amended by striking the Concurrent registration. 15 USC 1052. language beginning with the word “confusion”, first appearance, and ending with the word “herewith” at the end of said subsection and inserting in lieu thereof the following: “confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under This Act; or (ii) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full 21 Stat. 502. 33 Stat. 724. 15 USC 81 note. force and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall describe conditions and limitations as to the mode or place of use of (he mark or the goods in connection with which such mark is registered to the respective persons.”

3. 1975

   Pub. L. 93–596 § 1 · 88 Stat. 1949

   Substituted · 15 U.S.C. § 1052(d)

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

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

   Enacted provision · exact public law section
   Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 104(1) · 102 Stat. 3935

   Amended · 15 U.S.C. § 1052(d)

   Pub. L. 100–667, § 104(1), amended subsec. (d) generally. Prior to amendment, subsec. (d) read as follows: “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; or (ii) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods in connection with which such mark is registered to the respective persons.”

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 100–667, § 104(1), amended subsec. (d) generally. Prior to amendment, subsec. (d) read as follows: “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; or (ii) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods in connection with which such mark is registered to the respective persons.”

   Enacted provision · exact public law section
   (1) by amending subsection (d) to read as follows: “(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this Act; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947, Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe condi-tions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.”;

5. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 104(2) · 102 Stat. 3935

   Substituted · 15 U.S.C. § 1052(e)

   Pub. L. 100–667, § 104(2), substituted “used on or in connection with” for “applied to” in two places

   Source evidence

   Code amendment note
   Subsec. (e). Pub. L. 100–667, § 104(2), substituted “used on or in connection with” for “applied to” in two places.

   Enacted provision · exact public law section
   (2) in subsection (e) by striking out “applied to” each place it appears and inserting in lieu thereof “used on or in connection with”; and

6. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 104(3) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1052(f)

      Pub. L. 100–667, § 104(3), substituted “used on or in connection with” for “applied to”

   2. Substituted · 15 U.S.C. § 1052(f)

      Pub. L. 100–667, § 104(3), substituted “five years before the date on which the claim of distinctiveness is made” for “five years next preceding the date of the filing of the application for its registration”

   Source evidence

   Code amendment note
   Subsec. (f). Pub. L. 100–667, § 104(3), substituted “used on or in connection with” for “applied to” and “five years before the date on which the claim of distinctiveness is made” for “five years next preceding the date of the filing of the application for its registration”

   Enacted provision · exact public law section
   (3) in subsection (f)— (A) by striking out “applied to” and inserting in lieu thereof “used on or in connection with”; and (B) by striking out “five years” and all that follows through the end of the subsection and inserting in lieu thereof “five years before the date on which the claim of distinctiveness is made.”.

7. 1993

   North American Free Trade Agreement Implementation Act

   Pub. L. 103–182 § 333(a)(1) · 107 Stat. 2057

   Amended · 15 U.S.C. § 1052(e)

   Pub. L. 103–182, § 333(a)(1), amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, or (3) is primarily merely a surname.”

   Source evidence

   Code amendment note
   Subsec. (e). Pub. L. 103–182, § 333(a)(1), amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, or (3) is primarily merely a surname.”

   Enacted provision · exact public law section
   (1) by amending subsection (e) to read as follows: “(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, or (4) is primarily merely a surname.”; and

8. 1993

   North American Free Trade Agreement Implementation Act

   Pub. L. 103–182 § 333(a)(2) · 107 Stat. 2057

   1. Substituted · 15 U.S.C. § 1052(f)

      Pub. L. 103–182, § 333(a)(2), substituted “(d), and (e)(3)” for “and (d)”

   2. Inserted · 15 U.S.C. § 1052(f)

      Pub. L. 103–182, § 333(a)(2), inserted at end “Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.”

   Source evidence

   Code amendment note
   Subsec. (f). Pub. L. 103–182, § 333(a)(2), substituted “(d), and (e)(3)” for “and (d)” and inserted at end “Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.”

   Enacted provision · exact public law section
   (2) in subsection (f)— (A) by striking out “and (d)” and inserting “(d), and (e)(3)”; and (B) by adding at the end the following new sentence: “Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act.”.

9. 1994

   Pub. L. 103–465 title V § 522 · 108 Stat. 4809

   Amended · 15 U.S.C. § 1052(a)

   Pub. L. 103–465 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as follows: “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 103–465 amended subsec. (a) generally. Prior to amendment, subsec. (a) read as follows: “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

   Enacted provision · exact public law section
   SEC. 522. NONREGISTRABILITY OF MISLEADING GEOGRAPHIC INDICATIONS FOR WINES AND SPIRITS. Subsection (a) of section 2 of the Trademark Act of 1946 (15 U.S.C. 1052(a)) is amended to read as follows: “(a) Consists of or comprises immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.”.

10. 1998

    Pub. L. 105–330 § 201(a)(12) · 112 Stat. 3064

    Substituted · 15 U.S.C. § 1052

    Pub. L. 105–330, § 201(a)(12), substituted “trademark” for “trade-mark” in introductory provisions

    Source evidence

    Code amendment note
    Pub. L. 105–330, § 201(a)(12), substituted “trademark” for “trade-mark” in introductory provisions.

    Enacted provision · exact public law section
    (12) The Act is amended by striking “trade-mark” each 15 USC 1052, 1124 place it appears in the text and the title and inserting “trademark”.

11. 1998

    Pub. L. 105–330 § 201(a)(2)(A) · 112 Stat. 3064

    Struck and inserted · 15 U.S.C. § 1052(e)

    Pub. L. 105–330, § 201(a)(2)(A), struck out “or” before “(4)” and inserted “, or (5) comprises any matter that, as a whole, is functional” before period at end

    Source evidence

    Code amendment note
    Subsec. (e). Pub. L. 105–330, § 201(a)(2)(A), struck out “or” before “(4)” and inserted “, or (5) comprises any matter that, as a whole, is functional” before period at end.

    Enacted provision · exact public law section
    (A) in subsection (e)— (i) in paragraph (3) by striking “or” after “them,”; and (ii) by inserting before the period at the end the following: “, or (5) comprises any matter that, as a whole, is functional”; and

12. 1998

    Pub. L. 105–330 § 201(a)(2)(B) · 112 Stat. 3064

    Substituted · 15 U.S.C. § 1052(f)

    Pub. L. 105–330, § 201(a)(2)(B), substituted “subsections (a), (b), (c), (d), (e)(3), and (e)(5)” for “paragraphs (a), (b), (c), (d), and (e)(3)”

    Source evidence

    Code amendment note
    Subsec. (f). Pub. L. 105–330, § 201(a)(2)(B), substituted “subsections (a), (b), (c), (d), (e)(3), and (e)(5)” for “paragraphs (a), (b), (c), (d), and (e)(3)”.

    Enacted provision · exact public law section
    (B) in subsection (f), by striking “paragraphs (a), (b), (c), (d), and (e)(3)” and inserting “subsections (a), (b), (c), (d), (e)(3), and (e)(5)”.

13. 1999

    Trademark Amendments Act of 1999

    Pub. L. 106–43 § 2(a) · 113 Stat. 218

    Inserted · 15 U.S.C. § 1052

    Pub. L. 106–43 inserted concluding provisions

    Source evidence

    Code amendment note
    Pub. L. 106–43 inserted concluding provisions.

    Enacted provision · exact public law section
    (a) Registrable Marks.— Section 2 of the Act entitled “An Act to provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes” (in this Act referred to as the “Trademark Act of 1946”) (15 U.S.C. 1052) is amended by adding at the end the following flush sentences: “A mark which when used would cause dilution under section 43(c) may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which when used would cause dilution under section 43(c) may be canceled pursuant to a proceeding brought under either section 14 or section 24.”.

    Effective date note
    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. Pub. L. 106–43, § 2(e), Aug. 5, 1999, 113 Stat. 218, provided that: “The amendments made by this section [amending this section and sections 1063, 1064, and 1092 of this title] shall take effect on the date of enactment of this Act [Aug. 5, 1999] and shall apply only to any application for registration filed on or after January 16, 1996.”

14. 1999

    District of Columbia Appropriations Act, 2000

    Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4732)(b)(1)(B) · 113 Stat. 1501

    Substituted · 15 U.S.C. § 1052(d); 15 U.S.C. § 1052(f)

    Pub. L. 106–113 substituted “Director” for “Commissioner” wherever appearing

    Source evidence

    Code amendment note
    Subsecs. (d), (f). Pub. L. 106–113 substituted “Director” for “Commissioner” wherever appearing.

    Effective date note
    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. Pub. L. 106–43, § 2(e), Aug. 5, 1999, 113 Stat. 218, provided that: “The amendments made by this section [amending this section and sections 1063, 1064, and 1092 of this title] shall take effect on the date of enactment of this Act [Aug. 5, 1999] and shall apply only to any application for registration filed on or after January 16, 1996.”

15. 2006

    Trademark Dilution Revision Act of 2006

    Pub. L. 109–312 § 3(a) · 120 Stat. 1730

    Substituted · 15 U.S.C. § 1052

    Pub. L. 109–312, which directed substitution of “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.” for last two sentences in subsec. (f) of this section, was executed by making the substitution for “A mark which when used would cause dilution under section 1125(c) of this title may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which when used would cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.” in concluding provisions of section to reflect the probable intent of Congress

    Source evidence

    Code amendment note
    Pub. L. 109–312, which directed substitution of “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.” for last two sentences in subsec. (f) of this section, was executed by making the substitution for “A mark which when used would cause dilution under section 1125(c) of this title may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which when used would cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.” in concluding provisions of section to reflect the probable intent of Congress.

    Enacted provision · exact public law section
    (a) Marks Registrable on the Principal Register.— Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended— (1) by striking the last two sentences; and (2) by adding at the end the following: “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.”.

15 of 17 references resolved to an enrolled provision · 2 partial