§ 1064. Cancellation of 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. § 1064

   July 5, 1946, ch. 540, title I, § 14, 60 Stat. 433

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title I, § 14, 60 Stat. 433

2. 1962

   Pub. L. 87–772 § 9 · 76 Stat. 769

   1. Inserted · 15 U.S.C. § 1064

      Pub. L. 87–772 inserted provisions which require a verified petition to cancel a registration

   2. Redesignated · 15 U.S.C. § 1064

      Pub. L. 87–772 redesignated par. (d) as (e)

   3. Added · 15 U.S.C. § 1064

      Pub. L. 87–772 added par. (d) which is composed of provisions formerly part of par. (c), and in said par. (c)

   4. Substituted · 15 U.S.C. § 1064

      Pub. L. 87–772 substituted “registrant” for “assignee”

   5. Struck · 15 U.S.C. § 1064

      Pub. L. 87–772 struck out “on which the patent has expired” before “or has been abandoned”, and “has been assigned and” before “is being used by”

   Source evidence

   Code amendment note
   Pub. L. 87–772 inserted provisions which require a verified petition to cancel a registration, redesignated par. (d) as (e), added par. (d) which is composed of provisions formerly part of par. (c), and in said par. (c), substituted “registrant” for “assignee”, and struck out “on which the patent has expired” before “or has been abandoned”, and “has been assigned and” before “is being used by”.

   Enacted provision · exact public law section
   Sec. 9. Section 14 is amended by striking said section in its entirety Registration cancellation, petition. and inserting in lieu thereof the following: “Sec. 14. A verified petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed by any person who believes that he is or will he damaged by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 21 Stat. 502. 33 Stat. 724. 15 USC 81 note. 1905— “(a) within five years from the date of the registration of the mark under this Act; or “(b) within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905; or “(c) at any time if the registered mark becomes the common descriptive name of an article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsections (a), (b), or (c) of section 2 of this Act for a registration hereunder, or contrary to similar 15 USC 1054, 1052. prohibitory provisions of said prior Acts for a registration thereunder, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used; or “(d) at any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 12 of this Act; or “(e) at any time in the case of a certification mark on the ground that the registrant (1) does not control, or is not able legitimately to exercise control over, the use of such mark, or (2) engages in the production or marketing of any goods or services to which the certification mark is applied, or (3) permits the use of the certification mark for purposes other than to certify, or (4) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies: “Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in subsections (c) and (e) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required.”

3. 1982

   Pub. L. 97–247 § 9(b) · 96 Stat. 317

   Struck · 15 U.S.C. § 1064

   Pub. L. 97–247 struck out “verified” before “petition to cancel” in provision preceding par. (a)

   Source evidence

   Code amendment note
   Pub. L. 97–247 struck out “verified” before “petition to cancel” in provision preceding par. (a).

   Enacted provision · exact public law section
   (b) Section 14 of the Trademark Act of 1946, as amended (15 U.S.C. 1064), is amended by deleting the word “verified”.

4. 1984

   Pub. L. 98–620 title I § 102 · 98 Stat. 3335

   Inserted · 15 U.S.C. § 1064(c)

   Pub. L. 98–620 inserted provision that a registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service, and that the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used

   Source evidence

   Code amendment note
   Par. (c). Pub. L. 98–620 inserted provision that a registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service, and that the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used.

   Enacted provision · exact public law section
   Sec. 102. amendment to the trademark act Section 14(c) of the Trademark Act of 1946, commonly known as the Lanham Trademark Act (15 U.S.C. 1064(c)) is amended by adding before the semicolon at the end of such section a period and the following: “A registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used”.

5. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 115(1) · 102 Stat. 3935

   1. Inserted · 15 U.S.C. § 1064

      Pub. L. 100–667, § 115(1), (7), in introductory provisions, inserted “as follows”

   2. Substituted · 15 U.S.C. § 1064

      Pub. L. 100–667, § 115(1), (7), in introductory provisions, substituted “1905:” for “1905—”

   3. Substituted · 15 U.S.C. § 1064

      Pub. L. 100–667, § 115(1), (7), in introductory provisions, substituted “paragraphs (3) and (5)” for “subsections (c) and (e)”

   Source evidence

   Code amendment note
   Pub. L. 100–667, § 115(1), (7), in introductory provisions, inserted “as follows” and substituted “1905:” for “1905—”, and in concluding proviso substituted “paragraphs (3) and (5)” for “subsections (c) and (e)”.

   Enacted provision · exact public law section
   (1) in the matter preceding subsection (a)— (A) by inserting “as follows” after “be filed”; and (B) by striking out “1905–” and inserting in lieu thereof “1905:”;

6. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 115(2) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1064(1)

      Pub. L. 100–667, § 115(2), substituted “(1) Within” for “(a) within”

   2. Substituted · 15 U.S.C. § 1064(1)

      Pub. L. 100–667, § 115(2), substituted “chapter.” for “chapter; or”

   Source evidence

   Code amendment note
   Par. (1). Pub. L. 100–667, § 115(2), substituted “(1) Within” for “(a) within” and “chapter.” for “chapter; or”.

   Enacted provision · exact public law section
   (2) in subsection (a)— (A) by striking out “(a) within” and inserting in lieu thereof “(1) Within”; and (B) by striking out “; or” and inserting in lieu thereof a period;

7. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 115(3) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1064(2)

      Pub. L. 100–667, § 115(3), substituted “(2) Within” for “(b) within”

   2. Substituted · 15 U.S.C. § 1064(2)

      Pub. L. 100–667, § 115(3), substituted “1905.” for “1905; or”

   Source evidence

   Code amendment note
   Par. (2). Pub. L. 100–667, § 115(3), substituted “(2) Within” for “(b) within”, and “1905.” for “1905; or”.

   Enacted provision · exact public law section
   (3) in subsection (b)— (A) by striking out “(b) within” and inserting in lieu thereof “(2) Within”; and (B) by striking out “; or” and inserting in lieu thereof a period;

8. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 115(4) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1064(3)

      Pub. L. 100–667, § 115(4), substituted “(3)” for “(c)”

   2. Amended · 15 U.S.C. § 1064(3)

      Pub. L. 100–667, § 115(4), amended text generally. Prior to amendment, text read as follows: “at any time if the registered mark becomes the common descriptive name of an article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsections (a), (b), or (c) of section 1052 of this title for a registration hereunder, or contrary to similar prohibitory provisions of said prior Acts for a registration thereunder, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used. A registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used; or”

   Source evidence

   Code amendment note
   Par. (3). Pub. L. 100–667, § 115(4), substituted “(3)” for “(c)” and amended text generally. Prior to amendment, text read as follows: “at any time if the registered mark becomes the common descriptive name of an article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsections (a), (b), or (c) of section 1052 of this title for a registration hereunder, or contrary to similar prohibitory provisions of said prior Acts for a registration thereunder, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used. A registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used; or”.

   Enacted provision · exact public law section
   (4) by amending subsection (c) to read as follows: “(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.”;

9. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 115(5) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1064(4)

      Pub. L. 100–667, § 115(5), substituted “(4) At” for “(d) at”

   2. Substituted · 15 U.S.C. § 1064(4)

      Pub. L. 100–667, § 115(5), substituted “title.” for “title; or”

   Source evidence

   Code amendment note
   Par. (4). Pub. L. 100–667, § 115(5), substituted “(4) At” for “(d) at”, and “title.” for “title; or”.

   Enacted provision · exact public law section
   (5) in subsection (d)— (A) by striking out “(d) at” and inserting in lieu thereof “(4) At” and (B) by striking cut “; or” and inserting in lieu thereof a period;

10. 1988

    Trademark Law Revision Act of 1988

    Pub. L. 100–667 § 115(6) · 102 Stat. 3935

    1. Substituted · 15 U.S.C. § 1064(5)

       Pub. L. 100–667, § 115(6), substituted “(5) At” for “(e) at”

    2. Redesignated · 15 U.S.C. § 1064(5)

       Pub. L. 100–667, § 115(6), redesignated former pars. (1) to (4) as subpars. (A) to (D), respectively

    Source evidence

    Code amendment note
    Par. (5). Pub. L. 100–667, § 115(6), substituted “(5) At” for “(e) at” and redesignated former pars. (1) to (4) as subpars. (A) to (D), respectively.

    Enacted provision · exact public law section
    (6) in subsection (e)— (A) by striking out “(e) at” and inserting in lieu thereof “(5) At” and (B) by striking out “(1)”, “(2)”, “(3)”, and “(4)” and inserting in lieu thereof “(A)”, “(B)”, “(C)”, and “(D)”, respectively, and

11. 1998

    Pub. L. 105–330 § 301 · 112 Stat. 3064

    Inserted · 15 U.S.C. § 1064

    Pub. L. 105–330, § 301, inserted at end “Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.”

    Source evidence

    Code amendment note
    Pub. L. 105–330, § 301, inserted at end “Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.”

    Enacted provision · exact public law section
    SEC. 301. USE OF CERTIFICATION MARKS FOR ADVERTISING OR PROMOTIONAL PURPOSES. Section 14 of the Act entitled “An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes”, approved July 5, 1946 (15 U.S.C. 1064) (commonly referred to as the Trademark Act of 1946) is amended by adding at the end the following: “Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.”.

12. 1998

    Pub. L. 105–330 § 201(a)(4) · 112 Stat. 3064

    Inserted · 15 U.S.C. § 1064(3)

    Pub. L. 105–330, § 201(a)(4), inserted “or is functional,” before “or has been abandoned”

    Source evidence

    Code amendment note
    Par. (3). Pub. L. 105–330, § 201(a)(4), inserted “or is functional,” before “or has been abandoned”.

    Enacted provision · exact public law section
    (4) Section 14(3) (15 U.S.C. 1064(3)) is amended by inserting “or is functional,” before “or has been abandoned”.

13. 1999

    Trademark Amendments Act of 1999

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

    Inserted · 15 U.S.C. § 1064

    Pub. L. 106–43 inserted “, including as a result of dilution under section 1125(c) of this title,” after “damaged” in introductory provisions

    Source evidence

    Code amendment note
    Pub. L. 106–43 inserted “, including as a result of dilution under section 1125(c) of this title,” after “damaged” in introductory provisions.

    Enacted provision · exact public law section
    (c) Petitions To Cancel Registrations.— Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended in the matter preceding paragraph (1) by inserting “, including as a result of dilution under section 43(c),” after “damaged”.

14. 2006

    Trademark Dilution Revision Act of 2006

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

    Substituted · 15 U.S.C. § 1064

    Pub. L. 109–312 substituted “, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title,” for “, including as a result of dilution under section 1125(c) of this title,” in introductory provisions

    Source evidence

    Code amendment note
    Pub. L. 109–312 substituted “, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title,” for “, including as a result of dilution under section 1125(c) of this title,” in introductory provisions.

    Enacted provision · exact public law section
    (c) Cancellation.— Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1) by striking “, including as a result of dilution under section 43(c),” and inserting “, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 43(c),”.

15. 2020

    Department of Homeland Security Appropriations Act, 2021

    Pub. L. 116–260 § 225(b)(3) · 134 Stat. 1182

    Inserted · 15 U.S.C. § 1064

    Pub. L. 116–260, § 225(b)(3), in concluding proviso, inserted “Nothing in paragraph (6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title shall not be cancelled pursuant to paragraph (6) if the registrant demonstrates that any nonuse is due to special circumstances that excuse such nonuse.” after “identical certification mark is applied.”

    Source evidence

    Code amendment note
    Pub. L. 116–260, § 225(b)(3), in concluding proviso, inserted “Nothing in paragraph (6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title shall not be cancelled pursuant to paragraph (6) if the registrant demonstrates that any nonuse is due to special circumstances that excuse such nonuse.” after “identical certification mark is applied.”

    Enacted provision · exact public law section
    Sec. 225. Without regard to the limitation as to time and condition of section 503(d) of this Act, after June 30, up to $10,000,000 may be reprogrammed to or from the Military Pay and Allowances funding category within “Coast Guard—Operations and Support” in accordance with subsection (a) of section 503 of this Act.

    Effective date note
    Pub. L. 116–260, div. Q, title II, § 225(g), Dec. 27, 2020, 134 Stat. 2208, provided that: “The amendments made by this section [enacting sections 1066a and 1066b of this title and amending this section and sections 1065, 1070, 1071, and 1094 of this title] shall take effect upon the expiration of the 1-year period beginning on the date of enactment of this Act [Dec. 27, 2020], and shall apply to any mark registered before, on, or after that effective date.”

16. 2020

    Department of Homeland Security Appropriations Act, 2021

    Pub. L. 116–260 § 225(b)(1) · 134 Stat. 1182

    Added · 15 U.S.C. § 1064(6)

    Pub. L. 116–260, § 225(b)(1), (2), added par. (6)

    Source evidence

    Code amendment note
    Par. (6). Pub. L. 116–260, § 225(b)(1), (2), added par. (6).

    Enacted provision · exact public law section
    Sec. 225. Without regard to the limitation as to time and condition of section 503(d) of this Act, after June 30, up to $10,000,000 may be reprogrammed to or from the Military Pay and Allowances funding category within “Coast Guard—Operations and Support” in accordance with subsection (a) of section 503 of this Act.

    Effective date note
    Pub. L. 116–260, div. Q, title II, § 225(g), Dec. 27, 2020, 134 Stat. 2208, provided that: “The amendments made by this section [enacting sections 1066a and 1066b of this title and amending this section and sections 1065, 1070, 1071, and 1094 of this title] shall take effect upon the expiration of the 1-year period beginning on the date of enactment of this Act [Dec. 27, 2020], and shall apply to any mark registered before, on, or after that effective date.”

26 of 27 references resolved to an enrolled provision · 1 partial