section 1125(c) of this titlesection 1063 of this titlesection 1125(c) of this titlesection 1064 of this titlesection 1092 of this titleA mark which would be likely to cause dilution by blurring or dilution by tarnishment under , may be refused registration only pursuant to a proceeding brought under . A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under , may be canceled pursuant to a proceeding brought under either or .
Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. 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 .July 5, 1946, ch. 54060 Stat. 428Pub. L. 87–772, § 276 Stat. 769Pub. L. 93–596, § 188 Stat. 1949Pub. L. 100–667, title I, § 104102 Stat. 3937Pub. L. 103–182, title III, § 333(a)107 Stat. 2114Pub. L. 103–465, title V, § 522108 Stat. 4982Pub. L. 105–330, title II, § 201(a)(2)112 Stat. 3069Pub. L. 106–43, § 2(a)113 Stat. 218Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)]113 Stat. 1536Pub. L. 109–312, § 3(a)120 Stat. 1732(, title I, § 2, ; , , ; , , ; , , ; , , ; , , ; , (12), , , 3070; , , ; , , , 1501A–583; , , .)
Editorial Notes
References in Text
Mar. 3, 1881, ch. 13821 Stat. 502Feb. 20, 1905, ch. 59233 Stat. 724act July 5, 1946, ch. 540, § 46(a)60 Stat. 444Acts , and , referred to in subsec. (d), are acts , , and , , which were repealed insofar as inconsistent with this chapter by , . Act , was classified to sections 81 to 109 of this title.
Constitutionality
For information regarding the constitutionality of certain provisions of this section, see the Table of Laws Held Unconstitutional in Whole or in Part by the Supreme Court on the Constitution Annotated website, constitution.congress.gov.
Prior Provisions
Feb. 20, 1905, ch. 592, § 533 Stat. 725Mar. 2, 1907, ch. 2573, § 134 Stat. 1251Feb. 18, 1911, ch. 11336 Stat. 918Jan. 8, 1913, ch. 737 Stat. 649Mar. 19, 1920, ch. 104, § 941 Stat. 535June 7, 1924, ch. 34143 Stat. 647Acts , ; , ; , ; , ; , ; , .
Amendments
Pub. L. 109–312section 1125(c) of this titlesection 1063 of this titlesection 1125(c) of this titlesection 1064 of this titlesection 1092 of this titlesection 1125(c) of this titlesection 1063 of this titlesection 1125(c) of this titlesection 1064 of this titlesection 1092 of this title2006—, which directed substitution of “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under , may be refused registration only pursuant to a proceeding brought under . A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under , may be canceled pursuant to a proceeding brought under either or .” 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 may be refused registration only pursuant to a proceeding brought under . A registration for a mark which when used would cause dilution under may be canceled pursuant to a proceeding brought under either or .” in concluding provisions of section to reflect the probable intent of Congress.
Pub. L. 106–431999— inserted concluding provisions.
Pub. L. 106–113Subsecs. (d), (f). substituted “Director” for “Commissioner” wherever appearing.
Pub. L. 105–330, § 201(a)(12)1998—, substituted “trademark” for “trade-mark” in introductory provisions.
Pub. L. 105–330, § 201(a)(2)(A)Subsec. (e). , struck out “or” before “(4)” and inserted “, or (5) comprises any matter that, as a whole, is functional” before period at end.
Pub. L. 105–330, § 201(a)(2)(B)Subsec. (f). , substituted “subsections (a), (b), (c), (d), (e)(3), and (e)(5)” for “paragraphs (a), (b), (c), (d), and (e)(3)”.
Pub. L. 103–4651994—Subsec. (a). 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.”
Pub. L. 103–182, § 333(a)(1)section 1054 of this title1993—Subsec. (e). , 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 , or (3) is primarily merely a surname.”
Pub. L. 103–182, § 333(a)(2)Subsec. (f). , 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 .”
Pub. L. 100–667, § 104(1)Provided1988—Subsec. (d). , 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: , 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) , in the case of registrations previously issued under the Act of , or , and continuing in full force and effect on that date; or (iii) , in the case of applications filed under the Act of , and registered after . 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.”
Pub. L. 100–667, § 104(2)Subsec. (e). , substituted “used on or in connection with” for “applied to” in two places.
Pub. L. 100–667, § 104(3)Subsec. (f). , 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”
Pub. L. 93–5961975—Subsec. (d). substituted “Patent and Trademark Office” for “Patent Office”.
Pub. L. 87–7721962—Subsec. (d). , 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 , in the case of registrations previously issued under the act of , or , and continuing in full force and effect on that date, or , in the case of applications under the act of , and registered after , 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.
Statutory Notes and Related Subsidiaries
Effective Date of 1999 Amendments
Pub. L. 106–113Pub. L. 106–113section 1 of Title 35Amendment by effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of , set out as a note under , Patents.
Pub. L. 106–43, § 2(e)113 Stat. 218
Effective Date of 1998 Amendment
Pub. L. 105–330section 201(b) of Pub. L. 105–330section 1051 of this titleAmendment by effective , and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see , set out as a note under .
Effective Date of 1994 Amendment
Pub. L. 103–465, title V, § 523108 Stat. 4982
Effective Date of 1993 Amendment
Pub. L. 103–182, title III, § 335107 Stat. 2116Pub. L. 103–182section 331 of Pub. L. 103–182section 333 of Pub. L. 103–182Pub. L. 116–113, title VI, § 601134 Stat. 78, , , which provided that the amendments made: (1) by sections 332, 334, and 335 of took effect on the date NAFTA entered into force with respect to the United States (); (2) by applied to patent applications filed on or after ; and (3) by applied only to trademark applications filed on or after , was repealed by , , , effective on the date the USMCA entered into force ().
Effective Date of 1988 Amendment
Pub. L. 100–667section 136 of Pub. L. 100–667section 1051 of this titleAmendment by effective one year after , see , set out as a note under .
Effective Date of 1975 Amendment
Pub. L. 93–596section 4 of Pub. L. 93–596section 1111 of this titleAmendment by effective , see , set out as a note under .
Repeal and Effect on Existing Rights
section 1051 of this titleRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under .
Marks Registered Under Ten-Year Proviso of Trade-Mark Act of 1905
section 5 of the act of Feb. 20, 1905section 1051 of this titleMarks registered under the “ten-year proviso” of , as amended, deemed to have become distinctive of the registrant’s goods in commerce under par. (f) of this section, see section 46(b) of act , set out in note under .
Executive Documents
Transfer of Functions
64 Stat. 1263For transfer of functions of other officers, employees, and agencies of Department of Commerce to Secretary of Commerce, with certain exceptions, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. , 15 F.R. 3174, , set out in the Appendix to Title 5, Government Organization and Employees.
Uruguay Round Agreements: Entry Into Force
section 3511(d) of Title 19section 3511 of Title 19The Uruguay Round Agreements, including the World Trade Organization Agreement and agreements annexed to that Agreement, as referred to in , Customs Duties, entered into force with respect to the United States on . See note set out under .