§ 1126. International conventions

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. § 1126

   July 5, 1946, ch. 540, title IX, § 44, 60 Stat. 441

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title IX, § 44, 60 Stat. 441

2. 1961

   Pub. L. 87–333 § 2 · 75 Stat. 748

   Inserted · 15 U.S.C. § 1126(d)

   Pub. L. 87–333 inserted par. at end authorizing the right provided by this section to be based upon a subsequent application in the same foreign country, instead of the first application, provided that any foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 87–333 inserted par. at end authorizing the right provided by this section to be based upon a subsequent application in the same foreign country, instead of the first application, provided that any foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority.

   Enacted provision · exact public law section
   Sec. 2. Section 44(d) of the Act approved July 5, 1946, Public Law 489, Seventy-ninth Congress, chapter 540 (60 Stat. 427; 15 U.S.C. 60 Stat. 441. 1126(d)), is amended by adding the following paragraph thereto: “In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.”

3. 1962

   Pub. L. 87–772 § 20 · 76 Stat. 769

   1. Inserted · 15 U.S.C. § 1126(b)

      Pub. L. 87–772 inserted “or extends reciprocal rights to nationals of the United States by law,”

   2. Substituted · 15 U.S.C. § 1126(b)

      Pub. L. 87–772 substituted provisions requiring the person’s country of origin to be a party to any convention or treaty, for provisions which required such persons to be nationals of, domiciled in, or have a bona fide and effective business or commercial establishment in a foreign country which was a party to the International Convention for the Protection of Industrial Property, or the General Inter-American Convention for Trade Mark and Commercial Protection, or any other convention or treaty relating to trademarks, trade, or commercial names

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 87–772 inserted “or extends reciprocal rights to nationals of the United States by law,” and substituted provisions requiring the person’s country of origin to be a party to any convention or treaty, for provisions which required such persons to be nationals of, domiciled in, or have a bona fide and effective business or commercial establishment in a foreign country which was a party to the International Convention for the Protection of Industrial Property, or the General Inter-American Convention for Trade Mark and Commercial Protection, or any other convention or treaty relating to trademarks, trade, or commercial names.

   Enacted provision · exact public law section
   Sec. 20. Subsection (b) of section 44 is amended by striking said subsection in its entirety and inserting in lieu thereof the following: “(b) Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.” Subsection (e) of section 44 is amended by inserting after the word “a” in the second sentence the words “certification or a”; and by striking from said second sentence the words “application for or”.

4. 1962

   Pub. L. 87–772 § 20 · 76 Stat. 769

   1. Inserted · 15 U.S.C. § 1126(e)

      Pub. L. 87–772 inserted “certification or a” after “accompanied by a”

   2. Struck · 15 U.S.C. § 1126(e)

      Pub. L. 87–772 struck out “application for or” before “registration”

   Source evidence

   Code amendment note
   Subsec. (e). Pub. L. 87–772 inserted “certification or a” after “accompanied by a” and struck out “application for or” before “registration”.

   Enacted provision · exact public law section
   Sec. 20. Subsection (b) of section 44 is amended by striking said subsection in its entirety and inserting in lieu thereof the following: “(b) Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.” Subsection (e) of section 44 is amended by inserting after the word “a” in the second sentence the words “certification or a”; and by striking from said second sentence the words “application for or”.

5. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 133(2) · 102 Stat. 3935

   Substituted · 15 U.S.C. § 1126(a)

   Pub. L. 100–667, § 133(2), substituted “required in this chapter” for “herein prescribed”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 100–667, § 133(2), substituted “required in this chapter” for “herein prescribed”.

   Enacted provision · exact public law section
   (2) in subsection (a) by striking out “herein prescribed” and inserting in lieu thereof “required in this Act”;

6. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 133(1) · 102 Stat. 3935

   Changed · 15 U.S.C. § 1126(c)

   Pub. L. 100–667, § 133(1), made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 100–667, § 133(1), made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text.

   Enacted provision · exact public law section
   (1) in subsections (c), (d), (f), (g), and (h) by striking out “paragraph (b)” each place it appears and inserting in lieu thereof “subsection (b)”;

7. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 133(1) · 102 Stat. 3935

   1. Substituted · 15 U.S.C. § 1126(d)

      Pub. L. 100–667, § 133(1), (3), (4), (5), in introductory provisions, made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text, and substituted “section 1051, 1053, 1054, or 1091 of this title, or subsection (e) of this section” for “sections 1051, 1052, 1053, 1054, or 1091 of this title”, in par. (2)

   2. Substituted · 15 U.S.C. § 1126(d)

      Pub. L. 100–667, § 133(1), (3), (4), (5), in introductory provisions, made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text, and substituted “including a statement that the applicant has a bona fide intention to use the mark in commerce” for “but use in commerce need not be alleged”, and in par. (3)

   3. Substituted · 15 U.S.C. § 1126(d)

      Pub. L. 100–667, § 133(1), (3), (4), (5), in introductory provisions, made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text, and substituted “foreign” for “foreing”

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 100–667, § 133(1), (3), (4), (5), in introductory provisions, made technical amendment in two places to references in the original act to subsection (b) of this section, resulting in no change in text, and substituted “section 1051, 1053, 1054, or 1091 of this title, or subsection (e) of this section” for “sections 1051, 1052, 1053, 1054, or 1091 of this title”, in par. (2), substituted “including a statement that the applicant has a bona fide intention to use the mark in commerce” for “but use in commerce need not be alleged”, and in par. (3), substituted “foreign” for “foreing”.

   Enacted provision · exact public law section
   (1) in subsections (c), (d), (f), (g), and (h) by striking out “paragraph (b)” each place it appears and inserting in lieu thereof “subsection (b)”;

8. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 133(6) · 102 Stat. 3935

   Inserted · 15 U.S.C. § 1126(e)

   Pub. L. 100–667, § 133(6), inserted at end “The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.”

   Source evidence

   Code amendment note
   Subsec. (e). Pub. L. 100–667, § 133(6), inserted at end “The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.”

   Enacted provision · exact public law section
   (6) in subsection (e) by adding at the end thereof the following: “The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.”;

9. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 133(1) · 102 Stat. 3935

   Changed · 15 U.S.C. § 1126(f)

   Pub. L. 100–667, § 133(1), (7), made technical amendment to references in the original act to subsections (c), (d), and (e) of this section and to subsection (b) of this section, resulting in no change in text

   Source evidence

   Code amendment note
   Subsec. (f). Pub. L. 100–667, § 133(1), (7), made technical amendment to references in the original act to subsections (c), (d), and (e) of this section and to subsection (b) of this section, resulting in no change in text.

   Enacted provision · exact public law section
   (1) in subsections (c), (d), (f), (g), and (h) by striking out “paragraph (b)” each place it appears and inserting in lieu thereof “subsection (b)”;

10. 1988

    Trademark Law Revision Act of 1988

    Pub. L. 100–667 § 133(1) · 102 Stat. 3935

    Changed · 15 U.S.C. § 1126(g)(i)

    Pub. L. 100–667, § 133(1), (8), made technical amendment to references in the original act to subsection (b) of this section, resulting in no change in text

    Source evidence

    Code amendment note
    Subsecs. (g) to (i). Pub. L. 100–667, § 133(1), (8), made technical amendment to references in the original act to subsection (b) of this section, resulting in no change in text.

    Enacted provision · exact public law section
    (1) in subsections (c), (d), (f), (g), and (h) by striking out “paragraph (b)” each place it appears and inserting in lieu thereof “subsection (b)”;

11. 1998

    Trademark Law Treaty Implementation Act

    Pub. L. 105–330 § 108(1)(A) · 112 Stat. 3064

    Substituted · 15 U.S.C. § 1126(d)

    Pub. L. 105–330, § 108(1)(A), in introductory provisions, substituted “or 1091 of this title or under subsection (e) of this section” for “1091 of this title, or subsection (e) of this section”

    Source evidence

    Code amendment note
    Subsec. (d). Pub. L. 105–330, § 108(1)(A), in introductory provisions, substituted “or 1091 of this title or under subsection (e) of this section” for “1091 of this title, or subsection (e) of this section”.

    Enacted provision · exact public law section
    (A) by striking “23, or 44(e) of this Act” and inserting “or 23 of this Act or under subsection (e) of this section”; and

12. 1998

    Trademark Law Treaty Implementation Act

    Pub. L. 105–330 § 108(1)(B) · 112 Stat. 3064

    Changed · 15 U.S.C. § 1126(d)(3); 15 U.S.C. § 1126(d)(4)

    Pub. L. 105–330, § 108(1)(B), made technical amendment to reference in original act which appears in text as reference to this subsection

    Source evidence

    Code amendment note
    Subsec. (d)(3), (4). Pub. L. 105–330, § 108(1)(B), made technical amendment to reference in original act which appears in text as reference to this subsection.

    Enacted provision · exact public law section
    (B) in paragraphs (3) and (4) by striking “this subsection (d)” and inserting “this subsection”; and

13. 1998

    Trademark Law Treaty Implementation Act

    Pub. L. 105–330 § 108(2) · 112 Stat. 3064

    Substituted · 15 U.S.C. § 1126(e)

    Pub. L. 105–330, § 108(2), substituted “Such applicant shall submit, within such time period as may be prescribed by the Commissioner, a certification or a certified copy of the registration in the country of origin of the applicant” for “The application therefor shall be accompanied by a certification or a certified copy of the registration in the country of origin of the applicant”

    Source evidence

    Code amendment note
    Subsec. (e). Pub. L. 105–330, § 108(2), substituted “Such applicant shall submit, within such time period as may be prescribed by the Commissioner, a certification or a certified copy of the registration in the country of origin of the applicant” for “The application therefor shall be accompanied by a certification or a certified copy of the registration in the country of origin of the applicant”.

    Enacted provision · exact public law section
    SEC. 108. INTERNATIONAL CONVENTIONS; COPY OF FOREIGN REGISTRATION. Section 44 of the Trademark Act of 1946 (15 U.S.C. 1126) is amended— (1) in subsection (d)— (A) by striking “23, or 44(e) of this Act” and inserting “or 23 of this Act or under subsection (e) of this section”; and (B) in paragraphs (3) and (4) by striking “this subsection (d)” and inserting “this subsection”; and (2) in subsection (e), by striking the second sentence and inserting the following: “Such applicant shall submit, within such time period as may be prescribed by the Commissioner, a certification or a certified copy of the registration in the country of origin of the applicant.”.

14. 1999

    Trademark Amendments Act of 1999

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

    Substituted · 15 U.S.C. § 1126(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”.

15. 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. § 1126(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.

16. 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. § 1126(e)

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

    Source evidence

    Code amendment note
    Subsec. (e). 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.

17. 2002

    Intellectual Property and High Technology Technical Amendments Act of 2002

    Pub. L. 107–273 div. C title III § 13207(b)(12) · 116 Stat. 1758

    Substituted · 15 U.S.C. § 1126(e)

    Pub. L. 107–273 substituted “a true copy, a photocopy, a certification,” for “a certification”

    Source evidence

    Code amendment note
    Subsec. (e). Pub. L. 107–273 substituted “a true copy, a photocopy, a certification,” for “a certification”.

    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,”.

18 of 21 references resolved to an enrolled provision · 3 partial