§ 1091. Supplemental register

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. § 1091

   July 5, 1946, ch. 540, title II, § 23, 60 Stat. 435

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title II, § 23, 60 Stat. 435

2. 1962

   Pub. L. 87–772 § 13 · 76 Stat. 769

   Struck · 15 U.S.C. § 1091

   Pub. L. 87–772 struck out “has begun the lawful use of his mark in foreign commerce and that he” before “requires domestic registration” in last par

   Source evidence

   Code amendment note
   Pub. L. 87–772 struck out “has begun the lawful use of his mark in foreign commerce and that he” before “requires domestic registration” in last par.

   Enacted provision · exact public law section
   Sec. 13. Section 23 is amended by striking from the last paragraph 60 Stat. 435. 15 USC 1091. thereof the words “has begun the lawful use of his mark in foreign commerce and that he”.

3. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 121(6) · 102 Stat. 3935

   Struck · 15 U.S.C. § 1091

   Pub. L. 100–667, § 121(6), struck out undesignated concluding par. which read as follows: “Upon a proper showing by the applicant that he requires domestic registration as a basis for foreign protection of his mark, the Commissioner may waive the requirement of a full year’s use and may grant registration forthwith.”

   Source evidence

   Code amendment note
   Pub. L. 100–667, § 121(6), struck out undesignated concluding par. which read as follows: “Upon a proper showing by the applicant that he requires domestic registration as a basis for foreign protection of his mark, the Commissioner may waive the requirement of a full year’s use and may grant registration forthwith.”

   Enacted provision · exact public law section
   (6) by striking out the last paragraph.

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 121(1) · 102 Stat. 3935

   1. Amended · 15 U.S.C. § 1091(a)

      Pub. L. 100–667, § 121(1), (4), designated first par. as subsec. (a), made technical amendment to reference in the original act to subsections (a), (b), (c), and (d) of section 1052 of this title resulting in no change in text

   2. Substituted · 15 U.S.C. § 1091(a)

      Pub. L. 100–667, § 121(1), (4), substituted “are in lawful use in commerce by the owner thereof, on” for “have been in lawful use in commerce by the proprietor thereof, upon”

   3. Struck · 15 U.S.C. § 1091(a)

      Pub. L. 100–667, § 121(1), (4), struck out “for the year preceding the filing of the application” after “any goods and services”

   4. Inserted · 15 U.S.C. § 1091(a)

      Pub. L. 100–667, § 121(1), (4), inserted “subsections (a) and (e) of” before “section 1051”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 100–667, § 121(1), (4), designated first par. as subsec. (a), made technical amendment to reference in the original act to subsections (a), (b), (c), and (d) of section 1052 of this title resulting in no change in text, substituted “are in lawful use in commerce by the owner thereof, on” for “have been in lawful use in commerce by the proprietor thereof, upon”, struck out “for the year preceding the filing of the application” after “any goods and services”, and inserted “subsections (a) and (e) of” before “section 1051”.

   Enacted provision · exact public law section
   (1) by inserting “(a)” before “In addition” in the first paragraph;

5. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 121(2) · 102 Stat. 3935

   1. Amended · 15 U.S.C. § 1091(b)

      Pub. L. 100–667, § 121(2), (5), designated second par. as subsec. (b)

   2. Substituted · 15 U.S.C. § 1091(b)

      Pub. L. 100–667, § 121(2), (5), substituted “prescribed fee” for “fee herein provided”

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 100–667, § 121(2), (5), designated second par. as subsec. (b) and substituted “prescribed fee” for “fee herein provided”.

   Enacted provision · exact public law section
   (2) by inserting “(b)” before “Upon the” in the second paragraph;

6. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 121(3) · 102 Stat. 3935

   Amended · 15 U.S.C. § 1091(c)

   Pub. L. 100–667, § 121(3), designated third par. as subsec. (c)

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 100–667, § 121(3), designated third par. as subsec. (c).

   Enacted provision · exact public law section
   (3) by inserting “(c)” before “For the purposes” in the third paragraph;

7. 1993

   North American Free Trade Agreement Implementation Act

   Pub. L. 103–182 title III § 333(b) · 107 Stat. 2057

   1. Substituted · 15 U.S.C. § 1091(a)

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

   2. Inserted · 15 U.S.C. § 1091(a)

      Pub. L. 103–182 inserted at end “Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 103–182 substituted “(d), and (e)(3)” for “and (d)” and inserted at end “Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.”

   Enacted provision · exact public law section
   (b) Supplemental Register.— Section 23(a) of the Trademark Act of 1946 (15 U.S.C. 1091(a)) is amended— (1) by striking out “and (d)” and inserting “(d), and (e)(3)”; and (2) by adding at the end the following new sentence: “Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this Act, that is declared to be unregistrable under section 2(e)(3), if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before the date of the enactment of the North American Free Trade Agreement Implementation Act.”.

8. 1998

   Pub. L. 105–330 title II § 201(a)(5) · 112 Stat. 3064

   Substituted · 15 U.S.C. § 1091(c)

   Pub. L. 105–330 substituted “, device, any matter that as a whole is not functional,” for “or device”

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 105–330 substituted “, device, any matter that as a whole is not functional,” for “or device”.

   Enacted provision · exact public law section
   (5) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking “or device” and inserting “, device, any matter that as a whole is not functional,”.

9. 1999

   Trademark Amendments Act of 1999

   Pub. L. 106–43 § 6(b) · 113 Stat. 218

   Substituted · 15 U.S.C. § 1091(a)

   Pub. L. 106–43 substituted “trademarks” for “trade-marks”

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 106–43 substituted “trademarks” for “trade-marks”.

   Enacted provision · exact public law section
   (b) Additional Clerical Amendments.— The text and title 15 USC 1051 note, 1053, 1054, 1091, 1124, 1126, 1127. of the Trademark Act of 1946 are amended by striking “trademarks” each place it appears and inserting “trademarks”.

10. 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. § 1091(a)

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

    Source evidence

    Code amendment note
    Subsec. (a). Pub. L. 106–113 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.

11. 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. § 1091(b)

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

    Source evidence

    Code amendment note
    Subsec. (b). Pub. L. 106–113 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.

12. 2002

    Intellectual Property and High Technology Technical Amendments Act of 2002

    Pub. L. 107–273 div. C title III § 13207(b)(6) · 116 Stat. 1758

    Struck · 15 U.S.C. § 1091(c)

    Pub. L. 107–273 struck out second comma after “numeral”

    Source evidence

    Code amendment note
    Subsec. (c). Pub. L. 107–273 struck out second comma after “numeral”.

    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,”.

14 of 17 references resolved to an enrolled provision · 3 partial