§ 1059. Renewal of registration

Footnotes

1. 1 So in original. Probably should be “Director’s”.

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. § 1059

   July 5, 1946, ch. 540, title I, § 9, 60 Stat. 431

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title I, § 9, 60 Stat. 431

2. 1962

   Pub. L. 87–772 § 5 · 76 Stat. 769

   1. Amended · 15 U.S.C. § 1059

      Pub. L. 87–772 designated existing provisions as subsecs. (a) and (c)

   2. Added · 15 U.S.C. § 1059

      Pub. L. 87–772 added subsec. (b), and among other changes

   3. Substituted · 15 U.S.C. § 1059

      Pub. L. 87–772 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

   Source evidence

   Code amendment note
   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.

   Enacted provision · exact public law section
   Sec. 5. Section 9 is amended by striking the entire section and inserting in lieu thereof the following: “Sec. 9. (a) Each registration may be renewed for periods of twenty years from the end of the expiring period upon payment of the prescribed fee and the filing of a verified application therefor, setting forth those goods or services recited in the registration on or in connection with which the mark is still in use in commerce and having attached thereto a specimen or facsimile showing current use of the mark, or 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. Such application may be made at any time within six months before the expiration of the period for which the registration was issued or renewed, or it may be made within three months after such expiration on payment of the additional fee herein prescribed. “(b) If the Commissioner refuses to renew the registration, he shall notify the registrant of his refusal and the reasons therefor. “(c) An applicant for renewal not domiciled in the United States shall be subject to and comply with the provisions of section 1(d) hereof.”

3. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 111(1) · 102 Stat. 3935

   Substituted · 15 U.S.C. § 1059(a)

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

   Source evidence

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

   Enacted provision · exact public law section
   (1) in subsection (a) by striking out “twenty” and inserting in lieu thereof “ten”; and

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 111(2) · 102 Stat. 3935

   Substituted · 15 U.S.C. § 1059(c)

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

   Source evidence

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

   Enacted provision · exact public law section
   (2) in subsection (c) by striking out “1(d) hereof” and inserting in lieu thereof “1(e) of this Act”.

5. 1998

   Trademark Law Treaty Implementation Act

   Pub. L. 105–330 title I § 106 · 112 Stat. 3064

   Amended · 15 U.S.C. § 1059

   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

   Source evidence

   Code amendment note
   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.

   Enacted provision · exact public law section
   SEC. 106. RENEWAL OF REGISTRATION. Section 9 of the Trademark Act of 1946 (15 U.S.C. 1059) is amended to read as follows: “Sec. 9. “renewal of registration (a) Subject to the provisions of section 8, 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 Commissioner. 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) If the Commissioner refuses to renew the registration, the Commissioner shall notify the registrant of the Commissioner’s refusal and the reasons therefor. “(c) 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 Commissioner.”.

6. 1999

   District of Columbia Appropriations Act, 2000

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

   Substituted · 15 U.S.C. § 1059(a)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”.

   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.

7. 1999

   District of Columbia Appropriations Act, 2000

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

   1. Amended · 15 U.S.C. § 1059(b)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B), (C)], amended subsec. (b) identically

   2. Substituted · 15 U.S.C. § 1059(b)

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

   Source evidence

   Code amendment note
   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.

   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.

8. 1999

   District of Columbia Appropriations Act, 2000

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

   Substituted · 15 U.S.C. § 1059(c)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], substituted “Director” for “Commissioner”.

   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.

9. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 div. C title III § 13207(b)(4) · 116 Stat. 1758

   Amended · 15 U.S.C. § 1059(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.”

   Source evidence

   Code amendment note
   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.”

   Enacted provision · exact public law section
   (b) Additional Technical Amendments.— The Trademark Act of 1946 is further amended as follows: (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1) is amended in the first sentence by striking “specifying the date of the applicant’s first use” and all that follows through the end of the sentence and inserting “specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce.”. (2) Section 1(e) (15 U.S.C. 1051(e)) is amended to read as follows: “(e) If the applicant is not domiciled in the United States the applicant 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.”. (3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read as follows: “(f) 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.”. (4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read as follows: “(c) 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.”. (5) Subsections (a) and (b) of section 10 (15 U.S.C. 1060(a) and (b)) are amended to read as follows: “(a) (1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing. “(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted. “(3) Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution. “(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase. “(5) The United States Patent and Trademark Office shall maintain a record of information on assignments, in such form as may be prescribed by the Director. “(b) An assignee not domiciled in the United States 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 assignee 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 upon the Director.”. (6) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking the second comma after “numeral”. (7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by aligning the text with paragraph (7). (8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”. (9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code”. (10) Section 34(d)(11) is amended by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (11) Section 35(b) (15 U.S.C. 1117(b)) is amended— (A) by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”; and (B) by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (12) Section 44(e) (15 U.S.C. 1126(e)) is amended by striking “a certification” and inserting “a true copy, a photocopy, a certification,”.

7 of 12 references resolved to an enrolled provision · 5 partial