---
kind: "range"
citation: "15 U.S.C. §§ 1051–1072"
title: "15"
from: "1051"
to: "1072"
count: 24
release: "119-102"
url: "https://uscodex.org/usc/15/1051..1072"
---

# §1051. Application for registration; verification

- (a) **Application for use of trademark—**
  - (1) The owner of a [trademark](/usc/15/1127.md) used in commerce may request registration of its [trademark](/usc/15/1127.md) on the [principal register](/usc/15/1127.md) hereby established by paying the prescribed fee and filing in the Patent and [Trademark](/usc/15/1127.md) Office an [application](/usc/15/77ccc.md?p=8) and a verified statement, in such form as may be prescribed by the [Director](/usc/15/1127.md), and such number of specimens or facsimiles of the [mark](/usc/15/1127.md) as used as may be required by the [Director](/usc/15/1127.md).
  - (2) The [application](/usc/15/77ccc.md?p=8) shall include specification of the [applicant](/usc/15/1127.md)’s domicile and citizenship, the date of the [applicant](/usc/15/1127.md)’s first use of the [mark](/usc/15/1127.md), the date of the [applicant](/usc/15/1127.md)’s first use of the [mark](/usc/15/1127.md) in commerce, the goods in connection with which the [mark](/usc/15/1127.md) is used, and a drawing of the [mark](/usc/15/1127.md).
  - (3) The statement shall be verified by the [applicant](/usc/15/1127.md) and specify that—
    - (A) the [person](/usc/15/1127.md) making the verification believes that he or she, or the [juristic person](/usc/15/1127.md) in whose behalf he or she makes the verification, to be the owner of the [mark](/usc/15/1127.md) sought to be registered;
    - (B) to the best of the verifier’s knowledge and belief, the facts recited in the [application](/usc/15/77ccc.md?p=8) are accurate;
    - (C) the [mark](/usc/15/1127.md) is in [use in commerce](/usc/15/1127.md); and
    - (D) to the best of the verifier’s knowledge and belief, no other [person](/usc/15/1127.md) has the right to use such [mark](/usc/15/1127.md) in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other [person](/usc/15/1127.md), to cause confusion, or to cause mistake, or to deceive, except that, in the case of every [application](/usc/15/77ccc.md?p=8) claiming concurrent use, the [applicant](/usc/15/1127.md) shall—
      - (i) [state](/usc/15/15g.md?p=2) exceptions to the claim of exclusive use; and
      - (ii) shall[^1] specify, to the extent of the verifier’s knowledge—
        - (I) any concurrent use by others;
        - (II) the goods on or in connection with which and the areas in which each concurrent use exists;
        - (III) the periods of each use; and
        - (IV) the goods and area for which the [applicant](/usc/15/1127.md) desires registration.
  - (4) The [applicant](/usc/15/1127.md) shall comply with such rules or regulations as may be prescribed by the [Director](/usc/15/1127.md). The [Director](/usc/15/1127.md) shall promulgate rules prescribing the requirements for the [application](/usc/15/77ccc.md?p=8) and for obtaining a [filing date](/usc/15/78lll.md?p=7) herein.
- (b) **Application for bona fide intention to use trademark—**
  - (1) A [person](/usc/15/1127.md) who has a bona fide intention, under circumstances showing the good faith of such [person](/usc/15/1127.md), to use a [trademark](/usc/15/1127.md) in commerce may request registration of its [trademark](/usc/15/1127.md) on the [principal register](/usc/15/1127.md) hereby established by paying the prescribed fee and filing in the Patent and [Trademark](/usc/15/1127.md) Office an [application](/usc/15/77ccc.md?p=8) and a verified statement, in such form as may be prescribed by the [Director](/usc/15/1127.md).
  - (2) The [application](/usc/15/77ccc.md?p=8) shall include specification of the [applicant](/usc/15/1127.md)’s domicile and citizenship, the goods in connection with which the [applicant](/usc/15/1127.md) has a bona fide intention to use the [mark](/usc/15/1127.md), and a drawing of the [mark](/usc/15/1127.md).
  - (3) The statement shall be verified by the [applicant](/usc/15/1127.md) and specify—
    - (A) that the [person](/usc/15/1127.md) making the verification believes that he or she, or the [juristic person](/usc/15/1127.md) in whose behalf he or she makes the verification, to be entitled to use the [mark](/usc/15/1127.md) in commerce;
    - (B) the [applicant](/usc/15/1127.md)’s bona fide intention to use the [mark](/usc/15/1127.md) in commerce;
    - (C) that, to the best of the verifier’s knowledge and belief, the facts recited in the [application](/usc/15/77ccc.md?p=8) are accurate; and
    - (D) that, to the best of the verifier’s knowledge and belief, no other [person](/usc/15/1127.md) has the right to use such [mark](/usc/15/1127.md) in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other [person](/usc/15/1127.md), to cause confusion, or to cause mistake, or to deceive.

    Except for [applications](/usc/15/77ccc.md?p=8) filed pursuant to [section 1126 of this title](/usc/15/1126.md), no [mark](/usc/15/1127.md) shall be registered until the [applicant](/usc/15/1127.md) has met the requirements of subsections [(c)](#c) and [(d)](#d) of this section.

  - (4) The [applicant](/usc/15/1127.md) shall comply with such rules or regulations as may be prescribed by the [Director](/usc/15/1127.md). The [Director](/usc/15/1127.md) shall promulgate rules prescribing the requirements for the [application](/usc/15/77ccc.md?p=8) and for obtaining a [filing date](/usc/15/78lll.md?p=7) herein.
- (c) **Amendment of application under subsection (b) to conform to requirements of subsection (a)—** At any time during examination of an [application](/usc/15/77ccc.md?p=8) filed under [subsection (b)](#b), an [applicant](/usc/15/1127.md) who has made use of the [mark](/usc/15/1127.md) in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her [application](/usc/15/77ccc.md?p=8) to bring it into conformity with the requirements of [subsection (a)](#a).
- (d) **Verified statement that trademark is used in commerce—**
  - (1) Within six months after the date on which the notice of allowance with respect to a [mark](/usc/15/1127.md) is issued under [section 1063(b)(2) of this title](/usc/15/1063.md?p=b-2) to an [applicant](/usc/15/1127.md) under [subsection (b)](#b) of this section, the [applicant](/usc/15/1127.md) shall file in the Patent and [Trademark](/usc/15/1127.md) Office, together with such number of specimens or facsimiles of the [mark](/usc/15/1127.md) as used in commerce as may be required by the [Director](/usc/15/1127.md) and payment of the prescribed fee, a verified statement that the [mark](/usc/15/1127.md) is in [use in commerce](/usc/15/1127.md) and specifying the date of the [applicant](/usc/15/1127.md)’s first use of the [mark](/usc/15/1127.md) in commerce and those goods or services specified in the notice of allowance on or in connection with which the [mark](/usc/15/1127.md) is used in commerce. Subject to examination and acceptance of the statement of use, the [mark](/usc/15/1127.md) shall be registered in the Patent and [Trademark](/usc/15/1127.md) Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the [mark](/usc/15/1127.md) is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and [Trademark](/usc/15/1127.md) Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of [section 1052 of this title](/usc/15/1052.md). The notice of registration shall specify the goods or services for which the [mark](/usc/15/1127.md) is registered.
  - (2) The [Director](/usc/15/1127.md) shall extend, for one additional 6-month period, the time for filing the statement of use under [paragraph (1)](#d-1), upon written request of the [applicant](/usc/15/1127.md) before the expiration of the 6-month period provided in [paragraph (1)](#d-1). In addition to an extension under the preceding sentence, the [Director](/usc/15/1127.md) may, upon a showing of good cause by the [applicant](/usc/15/1127.md), further extend the time for filing the statement of use under [paragraph (1)](#d-1) for periods aggregating not more than 24 months, pursuant to written request of the [applicant](/usc/15/1127.md) made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the [applicant](/usc/15/1127.md) has a continued bona fide intention to use the [mark](/usc/15/1127.md) in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the [applicant](/usc/15/1127.md) has a continued bona fide intention to use the [mark](/usc/15/1127.md) in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The [Director](/usc/15/1127.md) shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
  - (3) The [Director](/usc/15/1127.md) shall notify any [applicant](/usc/15/1127.md) who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An [applicant](/usc/15/1127.md) may amend the statement of use.
  - (4) The failure to timely file a verified statement of use under [paragraph (1)](#d-1) or an extension request under [paragraph (2)](#d-2) shall result in abandonment of the [application](/usc/15/77ccc.md?p=8), unless it can be shown to the satisfaction of the [Director](/usc/15/1127.md) that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs [(1)](#d-1) and [(2)](#d-2) for filing a statement of use.
- (e) **Designation of resident for service of process and notices—** If the [applicant](/usc/15/1127.md) is not domiciled in the United States the [applicant](/usc/15/1127.md) may designate, by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office, the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md). Such notices or process may be served upon the [person](/usc/15/1127.md) so designated by leaving with that [person](/usc/15/1127.md) or mailing to that [person](/usc/15/1127.md) a copy thereof at the address specified in the last designation so filed. If the [person](/usc/15/1127.md) so designated cannot be found at the address given in the last designation, or if the [registrant](/usc/15/1127.md) does not designate by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md), such notices or process may be served on the [Director](/usc/15/1127.md).
- (f) **Third-party submission of evidence—** A third party may submit for consideration for inclusion in the record of an [application](/usc/15/77ccc.md?p=8) evidence relevant to a ground for refusal of registration. The third-party submission shall identify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal. Not later than 2 months after the date on which the submission is filed, the [Director](/usc/15/1127.md) shall determine whether the evidence should be included in the record of the [application](/usc/15/77ccc.md?p=8). The [Director](/usc/15/1127.md) shall establish by regulation appropriate procedures for the consideration of evidence submitted by a third party under this subsection and may prescribe a fee to accompany the submission. If the [Director](/usc/15/1127.md) determines that the third-party evidence should be included in the record of the [application](/usc/15/77ccc.md?p=8), only the evidence and the ground for refusal to which the evidence relates may be so included. Any determination by the [Director](/usc/15/1127.md) whether or not to include evidence in the record of an [application](/usc/15/77ccc.md?p=8) shall be final and non-reviewable, and a determination to include or to not include evidence in the record shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding.

# §1052. Trademarks registrable on principal register; concurrent registration


No [trademark](/usc/15/1127.md) by which the goods of the [applicant](/usc/15/1127.md) may be distinguished from the goods of others shall be refused registration on the [principal register](/usc/15/1127.md) on [account](/usc/15/1681a.md?p=r-4) of its nature unless it—

- (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with [persons](/usc/15/1127.md), living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the [applicant](/usc/15/1127.md) on or after one year after the date on which the WTO [Agreement](/usc/15/7a.md?p=2) (as defined in [section 3501(9) of title 19](/usc/19/3501.md?p=9)) enters into force with respect to the United States.
- (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any [State](/usc/15/15g.md?p=2) or municipality, or of any foreign nation, or any simulation thereof.
- (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
- (d) Consists of or comprises a [mark](/usc/15/1127.md) which so resembles a [mark](/usc/15/1127.md) registered in the Patent and [Trademark](/usc/15/1127.md) Office, or a [mark](/usc/15/1127.md) or [trade name](/usc/15/1127.md) previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the [applicant](/usc/15/1127.md), to cause confusion, or to cause mistake, or to deceive: Provided, That if the [Director](/usc/15/1127.md) determines that confusion, mistake, or deception is not likely to result from the continued use by more than one [person](/usc/15/1127.md) of the same or similar [marks](/usc/15/1127.md) under conditions and limitations as to the mode or place of use of the [marks](/usc/15/1127.md) or the goods on or in connection with which such [marks](/usc/15/1127.md) are used, concurrent registrations may be issued to such [persons](/usc/15/1127.md) when they have become entitled to use such [marks](/usc/15/1127.md) as a result of their concurrent lawful [use in commerce](/usc/15/1127.md) prior to (1) the earliest of the [filing dates](/usc/15/78lll.md?p=7) of the [applications](/usc/15/77ccc.md?p=8) pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the [Act of March 3, 1881](/usc/15/1127.md), or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of [applications](/usc/15/77ccc.md?p=8) filed under the [Act of February 20, 1905](/usc/15/1127.md), and registered after July 5, 1947. Use prior to the [filing date](/usc/15/78lll.md?p=7) of any pending [application](/usc/15/77ccc.md?p=8) or a registration shall not be required when the owner of such [application](/usc/15/77ccc.md?p=8) or registration consents to the grant of a concurrent registration to the [applicant](/usc/15/1127.md). Concurrent registrations may also be issued by the [Director](/usc/15/1127.md) when a court of competent jurisdiction has finally determined that more than one [person](/usc/15/1127.md) is entitled to use the same or similar [marks](/usc/15/1127.md) in commerce. In issuing concurrent registrations, the [Director](/usc/15/1127.md) shall prescribe conditions and limitations as to the mode or place of use of the [mark](/usc/15/1127.md) or the goods on or in connection with which such [mark](/usc/15/1127.md) is registered to the respective [persons](/usc/15/1127.md).
- (e) Consists of a [mark](/usc/15/1127.md) which (1) when used on or in connection with the goods of the [applicant](/usc/15/1127.md) is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the [applicant](/usc/15/1127.md) is primarily geographically descriptive of them, except as indications of regional origin may be registrable under [section 1054 of this title](/usc/15/1054.md), (3) when used on or in connection with the goods of the [applicant](/usc/15/1127.md) is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
- (f) Except as expressly excluded in subsections [(a)](#a), [(b)](#b), [(c)](#c), [(d)](#d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a [mark](/usc/15/1127.md) used by the [applicant](/usc/15/1127.md) which has become distinctive of the [applicant](/usc/15/1127.md)’s goods in commerce. The [Director](/usc/15/1127.md) may accept as prima facie evidence that the [mark](/usc/15/1127.md) has become distinctive, as used on or in connection with the [applicant](/usc/15/1127.md)’s goods in commerce, proof of substantially exclusive and continuous use thereof as a [mark](/usc/15/1127.md) by the [applicant](/usc/15/1127.md) 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](/usc/15/1127.md) which, when used on or in connection with the goods of the [applicant](/usc/15/1127.md), is primarily geographically deceptively misdescriptive of them, and which became distinctive of the [applicant](/usc/15/1127.md)’s goods in commerce before December 8, 1993.

  A [mark](/usc/15/1127.md) which would be likely to cause dilution by blurring or dilution by tarnishment under [section 1125(c) of this title](/usc/15/1125.md?p=c), may be refused registration only pursuant to a proceeding brought under [section 1063 of this title](/usc/15/1063.md). A registration for a [mark](/usc/15/1127.md) which would be likely to cause dilution by blurring or dilution by tarnishment under [section 1125(c) of this title](/usc/15/1125.md?p=c), may be canceled pursuant to a proceeding brought under either [section 1064 of this title](/usc/15/1064.md) or [section 1092 of this title](/usc/15/1092.md).


# §1053. Service marks registrable


Subject to the provisions relating to the registration of [trademarks](/usc/15/1127.md), so far as they are applicable, [service marks](/usc/15/1127.md) shall be registrable, in the same manner and with the same effect as are [trademarks](/usc/15/1127.md), and when registered they shall be entitled to the protection provided in this chapter in the case of [trademarks](/usc/15/1127.md). [Applications](/usc/15/77ccc.md?p=8) and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of [trademarks](/usc/15/1127.md).


# §1054. Collective marks and certification marks registrable


Subject to the provisions relating to the registration of [trademarks](/usc/15/1127.md), so far as they are applicable, collective and [certification marks](/usc/15/1127.md), including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are [trademarks](/usc/15/1127.md), by [persons](/usc/15/1127.md), and nations, [States](/usc/15/15g.md?p=2), municipalities, and the like, exercising legitimate control over the use of the [marks](/usc/15/1127.md) sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this chapter in the case of [trademarks](/usc/15/1127.md), except in the case of [certification marks](/usc/15/1127.md) when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such [mark](/usc/15/1127.md) is used. [Applications](/usc/15/77ccc.md?p=8) and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of [trademarks](/usc/15/1127.md).


# §1055. Use by related companies affecting validity and registration


Where a [registered mark](/usc/15/1127.md) or a [mark](/usc/15/1127.md) sought to be registered is or may be used legitimately by [related companies](/usc/15/1127.md), such use shall inure to the benefit of the [registrant](/usc/15/1127.md) or [applicant](/usc/15/1127.md) for registration, and such use shall not affect the validity of such [mark](/usc/15/1127.md) or of its registration, provided such [mark](/usc/15/1127.md) is not used in such manner as to deceive the public. If first use of a [mark](/usc/15/1127.md) by a [person](/usc/15/1127.md) is controlled by the [registrant](/usc/15/1127.md) or [applicant](/usc/15/1127.md) for registration of the [mark](/usc/15/1127.md) with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the [registrant](/usc/15/1127.md) or [applicant](/usc/15/1127.md), as the case may be.


# §1056. Disclaimer of unregistrable matter

- (a) **Compulsory and voluntary disclaimers—** The [Director](/usc/15/1127.md) may require the [applicant](/usc/15/1127.md) to disclaim an unregistrable component of a [mark](/usc/15/1127.md) otherwise registrable. An [applicant](/usc/15/1127.md) may voluntarily disclaim a component of a [mark](/usc/15/1127.md) sought to be registered.
- (b) **Prejudice of rights—** No disclaimer, including those made under subsection (e) of [section 1057 of this title](/usc/15/1057.md), shall prejudice or affect the [applicant](/usc/15/1127.md)’s or [registrant](/usc/15/1127.md)’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another [application](/usc/15/77ccc.md?p=8) if the disclaimed matter be or shall have become distinctive of his goods or services.

# §1057. Certificates of registration

- (a) **Issuance and form—** Certificates of registration of [marks](/usc/15/1127.md) registered upon the [principal register](/usc/15/1127.md) shall be issued in the name of the United States of America, under the seal of the United States Patent and [Trademark](/usc/15/1127.md) Office, and shall be signed by the [Director](/usc/15/1127.md) or have his signature placed thereon, and a record thereof shall be kept in the United States Patent and [Trademark](/usc/15/1127.md) Office. The registration shall reproduce the [mark](/usc/15/1127.md), and [state](/usc/15/15g.md?p=2) that the [mark](/usc/15/1127.md) is registered on the [principal register](/usc/15/1127.md) under this chapter, the date of the first use of the [mark](/usc/15/1127.md), the date of the first use of the [mark](/usc/15/1127.md) in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the [application](/usc/15/77ccc.md?p=8) for registration was received in the United States Patent and [Trademark](/usc/15/1127.md) Office, and any conditions and limitations that may be imposed in the registration.
- (b) **Certificate as prima facie evidence—** A certificate of registration of a [mark](/usc/15/1127.md) upon the [principal register](/usc/15/1127.md) provided by this chapter shall be prima facie evidence of the validity of the [registered mark](/usc/15/1127.md) and of the registration of the [mark](/usc/15/1127.md), of the owner’s ownership of the [mark](/usc/15/1127.md), and of the owner’s exclusive right to use the [registered mark](/usc/15/1127.md) in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
- (c) **Application to register mark considered constructive use—** Contingent on the registration of a [mark](/usc/15/1127.md) on the [principal register](/usc/15/1127.md) provided by this chapter, the filing of the [application](/usc/15/77ccc.md?p=8) to register such [mark](/usc/15/1127.md) shall constitute constructive use of the [mark](/usc/15/1127.md), conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other [person](/usc/15/1127.md) except for a [person](/usc/15/1127.md) whose [mark](/usc/15/1127.md) has not been abandoned and who, prior to such filing—
  - (1) has used the [mark](/usc/15/1127.md);
  - (2) has filed an [application](/usc/15/77ccc.md?p=8) to register the [mark](/usc/15/1127.md) which is pending or has resulted in registration of the [mark](/usc/15/1127.md); or
  - (3) has filed a foreign [application](/usc/15/77ccc.md?p=8) to register the [mark](/usc/15/1127.md) on the basis of which he or she has acquired a right of priority, and timely files an [application](/usc/15/77ccc.md?p=8) under [section 1126(d) of this title](/usc/15/1126.md?p=d) to register the [mark](/usc/15/1127.md) which is pending or has resulted in registration of the [mark](/usc/15/1127.md).
- (d) **Issuance to assignee—** A certificate of registration of a [mark](/usc/15/1127.md) may be issued to the assignee of the [applicant](/usc/15/1127.md), but the assignment must first be recorded in the United States Patent and [Trademark](/usc/15/1127.md) Office. In case of change of ownership the [Director](/usc/15/1127.md) shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said [mark](/usc/15/1127.md) in the name of such assignee, and for the unexpired part of the original period.
- (e) **Surrender, cancellation, or amendment by owner—** Upon [application](/usc/15/77ccc.md?p=8) of the owner the [Director](/usc/15/1127.md) may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the United States Patent and [Trademark](/usc/15/1127.md) Office. Upon [application](/usc/15/77ccc.md?p=8) of the owner and payment of the prescribed fee, the [Director](/usc/15/1127.md) for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the [mark](/usc/15/1127.md). Appropriate entry shall be made in the records of the United States Patent and [Trademark](/usc/15/1127.md) Office and upon the certificate of registration.
- (f) **Copies of United States Patent and Trademark Office records as evidence—** Copies of any records, books, papers, or drawings belonging to the United States Patent and [Trademark](/usc/15/1127.md) Office relating to [marks](/usc/15/1127.md), and copies of registrations, when authenticated by the seal of the United States Patent and [Trademark](/usc/15/1127.md) Office and certified by the [Director](/usc/15/1127.md), or in his name by an employee of the Office duly designated by the [Director](/usc/15/1127.md), shall be evidence in all cases wherein the originals would be evidence; and any [person](/usc/15/1127.md) making [application](/usc/15/77ccc.md?p=8) therefor and paying the prescribed fee shall have such copies.
- (g) **Correction of United States Patent and Trademark Office mistake—** Whenever a material mistake in a registration, incurred through the fault of the United States Patent and [Trademark](/usc/15/1127.md) Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mistake shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the [Director](/usc/15/1127.md) a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the United States Patent and [Trademark](/usc/15/1127.md) Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
- (h) **Correction of applicant’s mistake—** Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the [applicant](/usc/15/1127.md), the [Director](/usc/15/1127.md) is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registration as to require republication of the [mark](/usc/15/1127.md).

# §1058. Duration, affidavits and fees

- (a) **Time periods for required affidavits—** Each registration shall remain in force for 10 years, except that the registration of any [mark](/usc/15/1127.md) shall be canceled by the [Director](/usc/15/1127.md) unless the owner of the registration files in the United States Patent and [Trademark](/usc/15/1127.md) Office affidavits that meet the requirements of [subsection (b)](#b), within the following time periods:
  - (1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under [section 1062(c) of this title](/usc/15/1062.md?p=c).
  - (2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
  - (3) The owner may file the affidavit required under this section within the 6-month [grace period](/usc/15/1632.md?p=c-2-C) immediately following the expiration of the periods established in paragraphs [(1)](#a-1) and [(2)](#a-2), together with the fee described in [subsection (b)](#b) and the additional [grace period](/usc/15/1632.md?p=c-2-C) surcharge prescribed by the [Director](/usc/15/1127.md).
- (b) **Requirements for affidavit—** The affidavit referred to in [subsection (a)](#a) shall—
  - (1)
    - (A) [state](/usc/15/15g.md?p=2) that the [mark](/usc/15/1127.md) is in [use in commerce](/usc/15/1127.md);
    - (B) set forth the goods and services recited in the registration on or in connection with which the [mark](/usc/15/1127.md) is in [use in commerce](/usc/15/1127.md);
    - (C) be accompanied by such number of specimens or facsimiles showing current use of the [mark](/usc/15/1127.md) in commerce as may be required by the [Director](/usc/15/1127.md); and
    - (D) be accompanied by the fee prescribed by the [Director](/usc/15/1127.md); or
  - (2)
    - (A) set forth the goods and services recited in the registration on or in connection with which the [mark](/usc/15/1127.md) is not in [use in commerce](/usc/15/1127.md);
    - (B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the [mark](/usc/15/1127.md); and
    - (C) be accompanied by the fee prescribed by the [Director](/usc/15/1127.md).
- (c) **Deficient affidavit—** If any submission filed within the period set forth in [subsection (a)](#a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the [Director](/usc/15/1127.md).
- (d) **Notice of requirement—** Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under [section 1062(c) of this title](/usc/15/1062.md?p=c).
- (e) **Notification of acceptance or refusal—** The [Director](/usc/15/1127.md) shall notify any owner who files any affidavit required by this section of the [Director](/usc/15/1127.md)’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
- (f) **Designation of resident for service of process and notices—** If the owner is not domiciled in the United States, the owner may designate, by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office, the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md). Such notices or process may be served upon the [person](/usc/15/1127.md) so designated by leaving with that [person](/usc/15/1127.md) or mailing to that [person](/usc/15/1127.md) a copy thereof at the address specified in the last designation so filed. If the [person](/usc/15/1127.md) so designated cannot be found at the last designated address, or if the owner does not designate by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md), such notices or process may be served on the [Director](/usc/15/1127.md).

# §1059. Renewal of registration

- (a) **Period of renewal; time for renewal—** Subject to the provisions of [section 1058 of this title](/usc/15/1058.md), 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](/usc/15/77ccc.md?p=8), in such form as may be prescribed by the [Director](/usc/15/1127.md). Such [application](/usc/15/77ccc.md?p=8) 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](/usc/15/1632.md?p=c-2-C) of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. If any [application](/usc/15/77ccc.md?p=8) 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) **Notification of refusal of renewal—** If the [Director](/usc/15/1127.md) refuses to renew the registration, the [Director](/usc/15/1127.md) shall notify the [registrant](/usc/15/1127.md) of the Commissioner’s[^1] refusal and the reasons therefor.
- (c) **Designation of resident for service of process and notices—** If the [registrant](/usc/15/1127.md) is not domiciled in the United States the [registrant](/usc/15/1127.md) may designate, by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office, the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md). Such notices or process may be served upon the [person](/usc/15/1127.md) so designated by leaving with that [person](/usc/15/1127.md) or mailing to that [person](/usc/15/1127.md) a copy thereof at the address specified in the last designation so filed. If the [person](/usc/15/1127.md) so designated cannot be found at the address given in the last designation, or if the [registrant](/usc/15/1127.md) does not designate by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md), such notices or process may be served on the [Director](/usc/15/1127.md).

# §1060. Assignment

- (a)
  - (1) A [registered mark](/usc/15/1127.md) or a [mark](/usc/15/1127.md) for which an [application](/usc/15/77ccc.md?p=8) to register has been filed shall be assignable with the good will of the business in which the [mark](/usc/15/1127.md) is used, or with that part of the good will of the business connected with the use of and symbolized by the [mark](/usc/15/1127.md). Notwithstanding the preceding sentence, no [application](/usc/15/77ccc.md?p=8) to register a [mark](/usc/15/1127.md) under [section 1051(b) of this title](/usc/15/1051.md?p=b) shall be assignable prior to the filing of an amendment under [section 1051(c) of this title](/usc/15/1051.md?p=c) to bring the [application](/usc/15/77ccc.md?p=8) into conformity with [section 1051(a) of this title](/usc/15/1051.md?p=a) or the filing of the verified statement of use under [section 1051(d) of this title](/usc/15/1051.md?p=d), except for an assignment to a successor to the business of the [applicant](/usc/15/1127.md), or portion thereof, to which the [mark](/usc/15/1127.md) 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](/usc/15/1127.md) 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](/usc/15/1127.md) 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](/usc/15/1127.md) Office within 3 months after the date of the assignment or prior to the subsequent [purchase](/usc/15/78c–5.md?p=g).
  - (5) The United States Patent and [Trademark](/usc/15/1127.md) Office shall maintain a record of information on assignments, in such form as may be prescribed by the [Director](/usc/15/1127.md).
- (b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and [Trademark](/usc/15/1127.md) Office the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md). Such notices or process may be served upon the [person](/usc/15/1127.md) so designated by leaving with that [person](/usc/15/1127.md) or mailing to that [person](/usc/15/1127.md) a copy thereof at the address specified in the last designation so filed. If the [person](/usc/15/1127.md) 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](/usc/15/1127.md) Office the name and address of a [person](/usc/15/1127.md) resident in the United States on whom may be served notices or process in proceedings affecting the [mark](/usc/15/1127.md), such notices or process may be served upon the [Director](/usc/15/1127.md).

# §1061. Execution of acknowledgments and verifications


Acknowledgments and verifications required under this chapter may be made before any [person](/usc/15/1127.md) within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States or before any official authorized to administer oaths in the foreign country concerned whose [authority](/usc/15/3051.md?p=1) is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, and shall be valid if they comply with the laws of the [state](/usc/15/15g.md?p=2) or country where made.


# §1062. Publication

- (a) **Examination and publication—** Upon the filing of an [application](/usc/15/77ccc.md?p=8) for registration and payment of the prescribed fee, the [Director](/usc/15/1127.md) shall refer the [application](/usc/15/77ccc.md?p=8) to the examiner in charge of the registration of [marks](/usc/15/1127.md), who shall cause an examination to be made and, if on such examination it shall appear that the [applicant](/usc/15/1127.md) is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by [section 1051(d) of this title](/usc/15/1051.md?p=d), the [Director](/usc/15/1127.md) shall cause the [mark](/usc/15/1127.md) to be published in the Official Gazette of the Patent and [Trademark](/usc/15/1127.md) Office: Provided, That in the case of an [applicant](/usc/15/1127.md) claiming concurrent use, or in the case of an [application](/usc/15/77ccc.md?p=8) to be placed in an interference as provided for in [section 1066 of this title](/usc/15/1066.md) the [mark](/usc/15/1127.md), if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.
- (b) **Refusal of registration; amendment of application; abandonment; extensions of time to respond—**
  - (1) If the [applicant](/usc/15/1127.md) is found not entitled to registration, the examiner shall notify the [applicant](/usc/15/1127.md) thereof and of the reasons therefor. The [applicant](/usc/15/1127.md) may reply or amend the [application](/usc/15/77ccc.md?p=8), which shall then be reexamined. This procedure may be repeated until the examiner finally refuses registration of the [mark](/usc/15/1127.md) or the [application](/usc/15/77ccc.md?p=8) is abandoned as described in [paragraph (2)](#b-2).
  - (2) After notification under [paragraph (1)](#b-1), the [applicant](/usc/15/1127.md) shall have a period of 6 months in which to reply or amend the [application](/usc/15/77ccc.md?p=8), or such shorter time that is not less than 60 days, as prescribed by the [Director](/usc/15/1127.md) by regulation. If the [applicant](/usc/15/1127.md) fails to reply or amend or appeal within the relevant time period, including any extension under [paragraph (3)](#b-3), the [application](/usc/15/77ccc.md?p=8) shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the [Director](/usc/15/1127.md) that the delay in responding was unintentional, in which case the [application](/usc/15/77ccc.md?p=8) may be revived and such time may be extended. The [Director](/usc/15/1127.md) may prescribe a fee to accompany any request to revive.
  - (3) The [Director](/usc/15/1127.md) shall provide, by regulation, for extensions of time to respond to the examiner for any time period under [paragraph (2)](#b-2) that is less than 6 months. The [Director](/usc/15/1127.md) shall allow the [applicant](/usc/15/1127.md) to obtain extensions of time to reply or amend aggregating 6 months from the date of notification under [paragraph (1)](#b-1) when the [applicant](/usc/15/1127.md) so requests. However, the [Director](/usc/15/1127.md) may set by regulation the time for individual periods of extension, and prescribe a fee, by regulation, for any extension request. Any request for extension shall be filed on or before the date on which a reply or amendment is due under [paragraph (1)](#b-1).
- (c) **Republication of marks registered under prior acts—** A [registrant](/usc/15/1127.md) of a [mark](/usc/15/1127.md) registered under the provisions of the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md), may, at any time prior to the expiration of the registration thereof, upon the payment of the prescribed fee file with the [Director](/usc/15/1127.md) an affidavit setting forth those goods stated in the registration on which said [mark](/usc/15/1127.md) is in [use in commerce](/usc/15/1127.md) and that the [registrant](/usc/15/1127.md) claims the benefits of this chapter for said [mark](/usc/15/1127.md). The [Director](/usc/15/1127.md) shall publish notice thereof with a reproduction of said [mark](/usc/15/1127.md) in the Official Gazette, and notify the [registrant](/usc/15/1127.md) of such publication and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of [section 1058 of this title](/usc/15/1058.md). [Marks](/usc/15/1127.md) published under this subsection shall not be subject to the provisions of [section 1063 of this title](/usc/15/1063.md).

# §1063. Opposition to registration

- (a) Any [person](/usc/15/1127.md) who believes that he would be damaged by the registration of a [mark](/usc/15/1127.md) upon the [principal register](/usc/15/1127.md), including the registration of any [mark](/usc/15/1127.md) which would be likely to cause dilution by blurring or dilution by tarnishment under [section 1125(c) of this title](/usc/15/1125.md?p=c), may, upon payment of the prescribed fee, file an opposition in the Patent and [Trademark](/usc/15/1127.md) Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of [section 1062 of this title](/usc/15/1062.md) of the [mark](/usc/15/1127.md) sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the [Director](/usc/15/1127.md) for good cause when requested prior to the expiration of an extension. The [Director](/usc/15/1127.md) shall notify the [applicant](/usc/15/1127.md) of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the [Director](/usc/15/1127.md).
- (b) Unless registration is successfully opposed—
  - (1) a [mark](/usc/15/1127.md) entitled to registration on the [principal register](/usc/15/1127.md) based on an [application](/usc/15/77ccc.md?p=8) filed under [section 1051(a) of this title](/usc/15/1051.md?p=a) or pursuant to [section 1126 of this title](/usc/15/1126.md) shall be registered in the Patent and [Trademark](/usc/15/1127.md) Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and [Trademark](/usc/15/1127.md) Office; or
  - (2) a notice of allowance shall be issued to the [applicant](/usc/15/1127.md) if the [applicant](/usc/15/1127.md) applied for registration under [section 1051(b) of this title](/usc/15/1051.md?p=b).

# §1064. Cancellation of registration


A petition to cancel a registration of a [mark](/usc/15/1127.md), stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any [person](/usc/15/1127.md) who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under [section 1125(c) of this title](/usc/15/1125.md?p=c), by the registration of a [mark](/usc/15/1127.md) on the [principal register](/usc/15/1127.md) established by this chapter, or under the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md):

- (1) Within five years from the date of the registration of the [mark](/usc/15/1127.md) under this chapter.
- (2) Within five years from the date of publication under [section 1062(c) of this title](/usc/15/1062.md?p=c) of a [mark](/usc/15/1127.md) registered under the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md).
- (3) At any time if the [registered mark](/usc/15/1127.md) becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of [section 1054 of this title](/usc/15/1054.md) or of subsection (a), (b), or (c) of [section 1052 of this title](/usc/15/1052.md) for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the [registered mark](/usc/15/1127.md) is being used by, or with the permission of, the [registrant](/usc/15/1127.md) so as to misrepresent the source of the goods or services on or in connection with which the [mark](/usc/15/1127.md) is used. If the [registered mark](/usc/15/1127.md) 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](/usc/15/1127.md) shall not be deemed to be the generic name of goods or services solely because such [mark](/usc/15/1127.md) is also used as a name of or to identify a unique product or service. The primary significance of the [registered mark](/usc/15/1127.md) to the relevant public rather than purchaser motivation shall be the test for determining whether the [registered mark](/usc/15/1127.md) has become the generic name of goods or services on or in connection with which it has been used.
- (4) At any time if the [mark](/usc/15/1127.md) is registered under the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md), and has not been published under the provisions of subsection (c) of [section 1062 of this title](/usc/15/1062.md).
- (5) At any time in the case of a [certification mark](/usc/15/1127.md) on the ground that the [registrant](/usc/15/1127.md) (A) does not control, or is not able legitimately to exercise control over, the use of such [mark](/usc/15/1127.md), or (B) engages in the production or marketing of any goods or services to which the [certification mark](/usc/15/1127.md) is applied, or (C) permits the use of the [certification mark](/usc/15/1127.md) for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any [person](/usc/15/1127.md) who maintains the standards or conditions which such [mark](/usc/15/1127.md) certifies.
- (6) At any time after the 3-year period following the date of registration, if the [registered mark](/usc/15/1127.md) has never been used in commerce on or in connection with some or all of the goods or services recited in the registration:

# §1065. Incontestability of right to use mark under certain conditions


Except on a ground for which [application](/usc/15/77ccc.md?p=8) to cancel may be filed at any time under paragraphs (3), (5), and (6) of [section 1064 of this title](/usc/15/1064.md), and except to the extent, if any, to which the use of a [mark](/usc/15/1127.md) registered on the [principal register](/usc/15/1127.md) infringes a valid right acquired under the law of any [State](/usc/15/15g.md?p=2) or Territory by use of a [mark](/usc/15/1127.md) or [trade name](/usc/15/1127.md) continuing from a date prior to the date of registration under this chapter of such [registered mark](/usc/15/1127.md), the right of the owner to use such [registered mark](/usc/15/1127.md) in commerce for the goods or services on or in connection with which such [registered mark](/usc/15/1127.md) has been in continuous use for five consecutive years subsequent to the date of such registration and is still in [use in commerce](/usc/15/1127.md), shall be incontestable: Provided, That—

- (1) there has been no final decision adverse to the owner’s claim of ownership of such [mark](/usc/15/1127.md) for such goods or services, or to the owner’s right to register the same or to keep the same on the register; and
- (2) there is no proceeding involving said rights pending in the United States Patent and [Trademark](/usc/15/1127.md) Office or in a court and not finally disposed of; and
- (3) an affidavit is filed with the [Director](/usc/15/1127.md) within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such [mark](/usc/15/1127.md) has been in continuous use for such five consecutive years and is still in [use in commerce](/usc/15/1127.md), and other matters specified in paragraphs [(1)](#1) and [(2)](#2) hereof; and
- (4) no incontestable right shall be acquired in a [mark](/usc/15/1127.md) which is the generic name for the goods or services or a portion thereof, for which it is registered.

Subject to the conditions above specified in this section, the incontestable right with reference to a [mark](/usc/15/1127.md) registered under this chapter shall apply to a [mark](/usc/15/1127.md) registered under the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md), upon the filing of the required affidavit with the [Director](/usc/15/1127.md) within one year after the expiration of any period of five consecutive years after the date of publication of a [mark](/usc/15/1127.md) under the provisions of subsection (c) of [section 1062 of this title](/usc/15/1062.md).

The [Director](/usc/15/1127.md) shall notify any [registrant](/usc/15/1127.md) who files the above-prescribed affidavit of the filing thereof.


# §1066. Interference; declaration by Director


Upon petition showing extraordinary circumstances, the [Director](/usc/15/1127.md) may declare that an interference exists when [application](/usc/15/77ccc.md?p=8) is made for the registration of a [mark](/usc/15/1127.md) which so resembles a [mark](/usc/15/1127.md) previously registered by another, or for the registration of which another has previously made [application](/usc/15/77ccc.md?p=8), as to be likely when used on or in connection with the goods or services of the [applicant](/usc/15/1127.md) to cause confusion or mistake or to deceive. No interference shall be declared between an [application](/usc/15/77ccc.md?p=8) and the registration of a [mark](/usc/15/1127.md) the right to the use of which has become incontestable.


# §1066a. Ex parte expungement

- (a) **Petition—** Notwithstanding sections [1057(b)](/usc/15/1057.md?p=b) and [1072](/usc/15/1072.md) of this title, and subsections (a) and (b) of [section 1115 of this title](/usc/15/1115.md), any [person](/usc/15/1127.md) may file a petition to expunge a registration of a [mark](/usc/15/1127.md) on the basis that the [mark](/usc/15/1127.md) has never been used in commerce on or in connection with some or all of the goods or services recited in the registration.
- (b) **Contents of petition—** A petition filed under [subsection (a)](#a), together with any supporting documents, shall—
  - (1) identify the registration that is the subject of the petition;
  - (2) identify each good or service recited in the registration for which it is alleged that the [mark](/usc/15/1127.md) has never been used in commerce;
  - (3) include a verified statement that sets forth—
    - (A) the elements of the reasonable investigation the petitioner conducted to determine that the [mark](/usc/15/1127.md) has never been used in commerce on or in connection with the goods and services identified in the petition; and
    - (B) any additional facts that support the allegation that the [mark](/usc/15/1127.md) has never been used in commerce on or in connection with the identified goods and services;
  - (4) include any supporting evidence on which the petitioner relies; and
  - (5) be accompanied by the fee prescribed by the [Director](/usc/15/1127.md).
- (c) **Initial determination; institution—**
  - (1) **Prima facie case determination, institution, and notification—** The [Director](/usc/15/1127.md) shall, for each good or service identified under [subsection (b)(2)](#b-2), determine whether the petition sets forth a prima facie case of the [mark](/usc/15/1127.md) having never been used in commerce on or in connection with each such good or service, [institute](/usc/15/9401.md?p=7) an ex parte expungement proceeding for each good or service for which the [Director](/usc/15/1127.md) determines that a prima facie case has been set forth, and provide a notice to the [registrant](/usc/15/1127.md) and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.
  - (2) **Reasonable investigation guidance—** The [Director](/usc/15/1127.md) shall promulgate regulations regarding what constitutes a reasonable investigation under [subsection (b)(3)](#b-3) and the general types of evidence that could support a prima facie case that a [mark](/usc/15/1127.md) has never been used in commerce, but the [Director](/usc/15/1127.md) shall retain the discretion to determine whether a prima facie case is set out in a particular proceeding.
  - (3) **Determination by Director—** Any determination by the [Director](/usc/15/1127.md) whether or not to [institute](/usc/15/9401.md?p=7) a proceeding under this section shall be final and non-reviewable, and shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding, except as provided in [subsection (j)](#j).
- (d) **Ex parte expungement procedures—** The procedures for ex parte expungement shall be the same as the procedures for examination under [section 1062(b) of this title](/usc/15/1062.md?p=b), except that the [Director](/usc/15/1127.md) shall promulgate regulations establishing and governing a proceeding under this section, which may include regulations that—
  - (1) set response and extension times particular to this type of proceeding, which, notwithstanding [section 1062(b)(3) of this title](/usc/15/1062.md?p=b-3), need not be extendable to 6 months;
  - (2) set limits governing the timing and number of petitions filed for a particular registration or by a particular petitioner or real parties in interest; and
  - (3) define the relation of a proceeding under this section to other proceedings concerning the [mark](/usc/15/1127.md).
- (e) **Registrant’s evidence of use—** A [registrant](/usc/15/1127.md)’s documentary evidence of use shall be consistent with when a [mark](/usc/15/1127.md) shall be deemed to be in [use in commerce](/usc/15/1127.md) under the definition of “[use in commerce](/usc/15/1127.md)” in [section 1127 of this title](/usc/15/1127.md), but shall not be limited in form to that of specimens as provided in [section 1051(a) of this title](/usc/15/1051.md?p=a).
- (f) **Excusable nonuse—** During an ex parte expungement proceeding, for a [mark](/usc/15/1127.md) registered under [section 1126(e) of this title](/usc/15/1126.md?p=e) or an extension of protection under [section 1141f of this title](/usc/15/1141f.md), the [registrant](/usc/15/1127.md) may offer evidence showing that any nonuse is due to special circumstances that excuse such nonuse. In such a case, the examiner shall determine whether the facts and evidence demonstrate excusable nonuse and shall not find that the registration should be cancelled under [subsection (g)](#g) for any good or service for which excusable nonuse is demonstrated.
- (g) **Examiner’s decision; order to cancel—** For each good or service for which it is determined that a [mark](/usc/15/1127.md) has never been used in commerce, and for which the provisions of [subsection (f)](#f) do not apply, the examiner shall find that the registration should be cancelled for each such good or service. A [mark](/usc/15/1127.md) shall not be found to have never been used in commerce if there is evidence of [use in commerce](/usc/15/1127.md) by the [registrant](/usc/15/1127.md) that temporally would have supported registration at the time the [application](/usc/15/77ccc.md?p=8) was filed or the relevant allegation of use was made, or after registration, but before the petition to expunge was filed under [subsection (a)](#a), or an ex parte expungement proceeding was instituted by the [Director](/usc/15/1127.md) under [subsection (h)](#h). Unless overturned on review of the examiner’s decision, the [Director](/usc/15/1127.md) shall issue an [order](/usc/15/8702.md?p=14) cancelling the registration, in whole or in part, after the time for appeal has expired or any appeal proceeding has terminated.
- (h) **Ex parte expungement by the Director—**
  - (1) **In general—** The [Director](/usc/15/1127.md) may, on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5), [institute](/usc/15/9401.md?p=7) an ex parte expungement proceeding if the [Director](/usc/15/1127.md) discovers information that supports a prima facie case of a [mark](/usc/15/1127.md) having never been used in commerce on or in connection with any good or service covered by a registration. The [Director](/usc/15/1127.md) shall promptly notify the [registrant](/usc/15/1127.md) of such determination, at which time the ex parte expungement proceeding shall proceed according to the same procedures for ex parte expungement established pursuant to [subsection (d)](#d). If the [Director](/usc/15/1127.md) determines, based on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5), to [institute](/usc/15/9401.md?p=7) an expungement proceeding, the [Director](/usc/15/1127.md) shall transmit or make available the information that formed the basis for that determination as part of the institution notice sent to the [registrant](/usc/15/1127.md).
  - (2) **Rule of construction—** Nothing in this subsection shall be construed to limit any other [authority](/usc/15/3051.md?p=1) of the [Director](/usc/15/1127.md).
- (i) **Time for institution—**
  - (1) **When petition may be filed, ex parte expungement proceeding instituted—** A petition for ex parte expungement of a registration under [subsection (a)](#a) may be filed, or the [Director](/usc/15/1127.md) may [institute](/usc/15/9401.md?p=7) on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5) an ex parte expungement proceeding of a registration under [subsection (h)](#h), at any time following the expiration of 3 years after the date of registration and before the expiration of 10 years following the date of registration.
  - (2) **Exception—** Notwithstanding [paragraph (1)](#i-1), for a period of 3 years after December 27, 2020, a petition for expungement of a registration under [subsection (a)](#a) may be filed, or the [Director](/usc/15/1127.md) may [institute](/usc/15/9401.md?p=7) on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5) an ex parte expungement proceeding of a registration under [subsection (h)](#h), at any time following the expiration of 3 years after the date of registration.
- (j) **Limitation on later ex parte expungement proceedings—**
  - (1) **No co-pending proceedings—** With respect to a particular registration, while an ex parte expungement proceeding is pending, no later ex parte expungement proceeding may be instituted with respect to the same goods or services that are the subject of a pending ex parte expungement proceeding.
  - (2) **Estoppel—** With respect to a particular registration, for goods or services previously subject to an instituted expungement proceeding for which, in that proceeding, it was determined that the [registrant](/usc/15/1127.md) had used the [mark](/usc/15/1127.md) for particular goods or services, as relevant, and the registration was not cancelled as to those goods or services, no further ex parte expungement proceedings may be initiated as to those goods or services, regardless of the identity of the petitioner.
- (k) **Use in commerce requirement not altered—** Nothing in this section shall affect the requirement for [use in commerce](/usc/15/1127.md) of a [mark](/usc/15/1127.md) registered under section [1051(a)](/usc/15/1051.md?p=a) or [1091](/usc/15/1091.md) of this title.

# §1066b. Ex parte reexamination

- (a) **Petition for reexamination—** Any [person](/usc/15/1127.md) may file a petition to reexamine a registration of a [mark](/usc/15/1127.md) on the basis that the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or in connection with some or all of the goods or services recited in the registration on or before the [relevant date](#b).
- (b) **Relevant date—** In this section, the term “relevant date” means, with respect to an [application](/usc/15/77ccc.md?p=8) for the registration of a [mark](/usc/15/1127.md) with an initial filing basis of—
  - (1) [section 1051(a) of this title](/usc/15/1051.md?p=a) and not amended at any point to be filed pursuant to [section 1051(b) of this title](/usc/15/1051.md?p=b), the date on which the [application](/usc/15/77ccc.md?p=8) was initially filed; or
  - (2) [section 1051(b) of this title](/usc/15/1051.md?p=b) or amended at any point to be filed pursuant to [section 1051(b) of this title](/usc/15/1051.md?p=b), the date on which—
    - (A) an amendment to allege use under [section 1051(c) of this title](/usc/15/1051.md?p=c) was filed; or
    - (B) the period for filing a statement of use under [section 1051(d) of this title](/usc/15/1051.md?p=d) expired, including all approved extensions thereof.
- (c) **Requirements for the petition—** A petition filed under [subsection (a)](#a), together with any supporting documents, shall—
  - (1) identify the registration that is the subject of the petition;
  - (2) identify each good and service recited in the registration for which it is alleged that the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or in connection with on or before the [relevant date](#b);
  - (3) include a verified statement that sets forth—
    - (A) the elements of the reasonable investigation the petitioner conducted to determine that the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or in connection with the goods and services identified in the petition on or before the [relevant date](#b); and
    - (B) any additional facts that support the allegation that the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or before the [relevant date](#b) on or in connection with the identified goods and services;
  - (4) include supporting evidence on which the petitioner relies; and
  - (5) be accompanied by the fee prescribed by the [Director](/usc/15/1127.md).
- (d) **Initial determination; institution—**
  - (1) **Prima facie case determination, institution, and notification—** The [Director](/usc/15/1127.md) shall, for each good or service identified under [subsection (c)(2)](#c-2), determine whether the petition sets forth a prima facie case of the [mark](/usc/15/1127.md) having not been in [use in commerce](/usc/15/1127.md) on or in connection with each such good or service, [institute](/usc/15/9401.md?p=7) an ex parte reexamination proceeding for each good or service for which the [Director](/usc/15/1127.md) determines that the prima facie case has been set forth, and provide a notice to the [registrant](/usc/15/1127.md) and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.
  - (2) **Reasonable investigation guidance—** The [Director](/usc/15/1127.md) shall promulgate regulations regarding what constitutes a reasonable investigation under [subsection (c)(3)](#c-3) and the general types of evidence that could support a prima facie case that the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or in connection with a good or service on or before the [relevant date](#b), but the [Director](/usc/15/1127.md) shall retain discretion to determine whether a prima facie case is set out in a particular proceeding.
  - (3) **Determination by Director—** Any determination by the [Director](/usc/15/1127.md) whether or not to [institute](/usc/15/9401.md?p=7) a reexamination proceeding under this section shall be final and non-reviewable, and shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding, except as provided in [subsection (j)](#j).
- (e) **Reexamination procedures—** The procedures for reexamination shall be the same as the procedures established under [section 1062(b) of this title](/usc/15/1062.md?p=b) except that the [Director](/usc/15/1127.md) shall promulgate regulations establishing and governing a proceeding under this section, which may include regulations that—
  - (1) set response and extension times particular to this type of proceeding, which, notwithstanding [section 1062(b)(3) of this title](/usc/15/1062.md?p=b-3), need not be extendable to 6 months;
  - (2) set limits governing the timing and number of petitions filed for a particular registration or by a particular petitioner or real parties in interest; and
  - (3) define the relation of a reexamination proceeding under this section to other proceedings concerning the [mark](/usc/15/1127.md).
- (f) **Registrant’s evidence of use—** A [registrant](/usc/15/1127.md)’s documentary evidence of use shall be consistent with when a [mark](/usc/15/1127.md) shall be deemed to be in [use in commerce](/usc/15/1127.md) under the definition of “[use in commerce](/usc/15/1127.md)” in [section 1127 of this title](/usc/15/1127.md), but shall not be limited in form to that of specimens as provided in [section 1051(a) of this title](/usc/15/1051.md?p=a).
- (g) **Examiner’s decision; order to cancel—** For each good or service for which it is determined that the registration should not have issued because the [mark](/usc/15/1127.md) was not in [use in commerce](/usc/15/1127.md) on or before the [relevant date](#b), the examiner shall find that the registration should be cancelled for each such good or service. Unless overturned on review of the examiner’s decision, the [Director](/usc/15/1127.md) shall issue an [order](/usc/15/8702.md?p=14) cancelling the registration, in whole or in part, after the time for appeal has expired or any appeal proceeding has terminated.
- (h) **Reexamination by Director—**
  - (1) **In general—** The [Director](/usc/15/1127.md) may, on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5), [institute](/usc/15/9401.md?p=7) an ex parte reexamination proceeding if the [Director](/usc/15/1127.md) discovers information that supports a prima facie case of the [mark](/usc/15/1127.md) having not been used in commerce on or in connection with some or all of the goods or services covered by the registration on or before the [relevant date](#b). The [Director](/usc/15/1127.md) shall promptly notify the [registrant](/usc/15/1127.md) of such determination, at which time reexamination shall proceed according to the same procedures established pursuant to [subsection (e)](#e). If the [Director](/usc/15/1127.md) determines, based on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5), to [institute](/usc/15/9401.md?p=7) an ex parte reexamination proceeding, the [Director](/usc/15/1127.md) shall transmit or make available the information that formed the basis for that determination as part of the institution notice.
  - (2) **Rule of construction—** Nothing in this subsection shall be construed to limit any other [authority](/usc/15/3051.md?p=1) of the [Director](/usc/15/1127.md).
- (i) **Time for institution—** A petition for ex parte reexamination may be filed, or the [Director](/usc/15/1127.md) may [institute](/usc/15/9401.md?p=7) on the [Director](/usc/15/1127.md)’s own [initiative](/usc/15/9401.md?p=5) an ex parte reexamination proceeding, at any time not later than 5 years after the date of registration of a [mark](/usc/15/1127.md) registered based on [use in commerce](/usc/15/1127.md).
- (j) **Limitation on later ex parte reexamination proceedings—**
  - (1) **No co-pending proceedings—** With respect to a particular registration, while an ex parte reexamination proceeding is pending, no later ex parte reexamination proceeding may be instituted with respect to the same goods or services that are the subject of a pending ex parte reexamination proceeding.
  - (2) **Estoppel—** With respect to a particular registration, for any goods or services previously subject to an instituted ex parte reexamination proceeding for which, in that proceeding, it was determined that the [registrant](/usc/15/1127.md) had used the [mark](/usc/15/1127.md) for particular goods or services before the [relevant date](#b), and the registration was not cancelled as to those goods or services, no further ex parte reexamination proceedings may be initiated as to those goods or services, regardless of the identity of the petitioner.
- (k) **Supplemental register—** The provisions of [subsection (b)](#b) apply, as appropriate, to registrations under [section 1091 of this title](/usc/15/1091.md). Nothing in this section shall be construed to limit the timing of a cancellation action under [section 1092 of this title](/usc/15/1092.md).

# §1067. Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board

- (a) In every case of interference, opposition to registration, [application](/usc/15/77ccc.md?p=8) to register as a lawful concurrent user, or [application](/usc/15/77ccc.md?p=8) to cancel the registration of a [mark](/usc/15/1127.md), the [Director](/usc/15/1127.md) shall give notice to all parties and shall direct a [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1) to determine and decide the respective rights of registration.
- (b) The [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1) shall include the [Director](/usc/15/1127.md), Deputy[^1] [Director](/usc/15/1127.md) of the United States Patent and [Trademark](/usc/15/1127.md) Office[^2] the Commissioner for Patents, the Commissioner for [Trademarks](/usc/15/1127.md), and administrative [trademark](/usc/15/1127.md) judges who are appointed by the Secretary of Commerce, in consultation with the [Director](/usc/15/1127.md).
- (c) **Authority of the Secretary.—** The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative [trademark](/usc/15/1127.md) judge who, before August 12, 2008, held office pursuant to an appointment by the [Director](/usc/15/1127.md) to take effect on the date on which the [Director](/usc/15/1127.md) initially appointed the administrative [trademark](/usc/15/1127.md) judge.
- (d) **Defense to Challenge of Appointment.—** It shall be a defense to a challenge to the appointment of an administrative [trademark](/usc/15/1127.md) judge on the basis of the judge’s having been originally appointed by the [Director](/usc/15/1127.md) that the administrative [trademark](/usc/15/1127.md) judge so appointed was acting as a de facto officer.

# §1068. Action of Director in interference, opposition, and proceedings for concurrent use registration or for cancellation


In such proceedings the [Director](/usc/15/1127.md) may refuse to register the opposed [mark](/usc/15/1127.md), may cancel the registration, in whole or in part, may modify the [application](/usc/15/77ccc.md?p=8) or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a [registered mark](/usc/15/1127.md), may refuse to register any or all of several interfering [marks](/usc/15/1127.md), or may register the [mark](/usc/15/1127.md) or [marks](/usc/15/1127.md) for the [person](/usc/15/1127.md) or [persons](/usc/15/1127.md) entitled thereto, as the rights of the parties under this chapter may be established in the proceedings. The [authority](/usc/15/3051.md?p=1) of the [Director](/usc/15/1127.md) under this section includes the [authority](/usc/15/3051.md?p=1) to reconsider, and modify or set aside, a decision of the [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1): Provided, That in the case of the registration of any [mark](/usc/15/1127.md) based on concurrent use, the [Director](/usc/15/1127.md) shall determine and fix the conditions and limitations provided for in subsection (d) of [section 1052 of this title](/usc/15/1052.md). However, no final judgment shall be entered in favor of an [applicant](/usc/15/1127.md) under [section 1051(b) of this title](/usc/15/1051.md?p=b) before the [mark](/usc/15/1127.md) is registered, if such [applicant](/usc/15/1127.md) cannot prevail without establishing constructive use pursuant to [section 1057(c) of this title](/usc/15/1057.md?p=c).


# §1069. Application of equitable principles in inter partes proceedings


In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied.


# §1070. Appeals to Trademark Trial and Appeal Board from decisions of examiners


An appeal may be taken to the [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1) from any final decision of the examiner in charge of the registration of [marks](/usc/15/1127.md) or a final decision by an examiner in an ex parte expungement proceeding or ex parte reexamination proceeding upon the payment of the prescribed fee. The [Director](/usc/15/1127.md) may reconsider, and modify or set aside, a decision of the [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1) under this section.


# §1071. Appeal to courts

- (a) **Persons entitled to appeal; United States Court of Appeals for the Federal Circuit; waiver of civil action; election of civil action by adverse party; procedure—**
  - (1) An [applicant](/usc/15/1127.md) for registration of a [mark](/usc/15/1127.md), party to an interference proceeding, party to an opposition proceeding, party to an [application](/usc/15/77ccc.md?p=8) to register as a lawful concurrent user, party to a cancellation proceeding, a [registrant](/usc/15/1127.md) who has filed an affidavit as provided in [section 1058 of this title](/usc/15/1058.md) or [section 1141k of this title](/usc/15/1141k.md), an [applicant](/usc/15/1127.md) for renewal, or a [registrant](/usc/15/1127.md) subject to an ex parte expungement proceeding or an ex parte reexamination proceeding, who is dissatisfied with the decision of the [Director](/usc/15/1127.md) or [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1), may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under [subsection (b)](#b) of this section: Provided, That such appeal shall be dismissed if any adverse party to the proceeding, other than the [Director](/usc/15/1127.md), shall, within twenty days after the appellant has filed notice of appeal according to paragraph (2) of this subsection, files notice with the [Director](/usc/15/1127.md) that he elects to have all further proceedings conducted as provided in [subsection (b)](#b) of this section. Thereupon the appellant shall have thirty days thereafter within which to file a civil action under [subsection (b)](#b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case.
  - (2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the United States Patent and [Trademark](/usc/15/1127.md) Office a written notice of appeal directed to the [Director](/usc/15/1127.md), within such time after the date of the decision from which the appeal is taken as the [Director](/usc/15/1127.md) prescribes, but in no case less than 60 days after that date.
  - (3) The [Director](/usc/15/1127.md) shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the United States Patent and [Trademark](/usc/15/1127.md) Office. The court may request that the [Director](/usc/15/1127.md) forward the original or certified copies of such documents during pendency of the appeal. In an ex parte case, the [Director](/usc/15/1127.md) shall submit to that court a brief explaining the grounds for the decision of the United States Patent and [Trademark](/usc/15/1127.md) Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the [Director](/usc/15/1127.md) and the parties in the appeal.
  - (4) The United States Court of Appeals for the Federal Circuit shall review the decision from which the appeal is taken on the record before the United States Patent and [Trademark](/usc/15/1127.md) Office. Upon its determination the court shall issue its mandate and opinion to the [Director](/usc/15/1127.md), which shall be entered of record in the United States Patent and [Trademark](/usc/15/1127.md) Office and shall govern the further proceedings in the case. However, no final judgment shall be entered in favor of an [applicant](/usc/15/1127.md) under [section 1051(b) of this title](/usc/15/1051.md?p=b) before the [mark](/usc/15/1127.md) is registered, if such [applicant](/usc/15/1127.md) cannot prevail without establishing constructive use pursuant to [section 1057(c) of this title](/usc/15/1057.md?p=c).
- (b) **Civil action; persons entitled to; jurisdiction of court; status of Director; procedure—**
  - (1) Whenever a [person](/usc/15/1127.md) authorized by [subsection (a)](#a) of this section to appeal to the United States Court of Appeals for the Federal Circuit, except for a [registrant](/usc/15/1127.md) subject to an ex parte expungement proceeding or an ex parte reexamination proceeding, is dissatisfied with the decision of the [Director](/usc/15/1127.md) or [Trademark](/usc/15/1127.md) Trial and Appeal [Board](/usc/15/205c.md?p=1), said [person](/usc/15/1127.md) may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the [Director](/usc/15/1127.md) appoints or as provided in [subsection (a)](#a) of this section. The court may adjudge that an [applicant](/usc/15/1127.md) is entitled to a registration upon the [application](/usc/15/77ccc.md?p=8) involved, that a registration involved should be canceled, or such other matter as the issues in the proceeding require, as the facts in the case may appear. Such adjudication shall authorize the [Director](/usc/15/1127.md) to take any necessary action, upon compliance with the requirements of law. However, no final judgment shall be entered in favor of an [applicant](/usc/15/1127.md) under [section 1051(b) of this title](/usc/15/1051.md?p=b) before the [mark](/usc/15/1127.md) is registered, if such [applicant](/usc/15/1127.md) cannot prevail without establishing constructive use pursuant to [section 1057(c) of this title](/usc/15/1057.md?p=c).
  - (2) The [Director](/usc/15/1127.md) shall not be made a party to an inter partes proceeding under this subsection, but he shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall have the right to intervene in the action.
  - (3) In any case where there is no adverse party, a copy of the complaint shall be served on the [Director](/usc/15/1127.md), and, unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. In suits brought hereunder, the record in the United States Patent and [Trademark](/usc/15/1127.md) Office shall be admitted on motion of any party, upon such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of any party to take further testimony. The testimony and exhibits of the record in the United States Patent and [Trademark](/usc/15/1127.md) Office, when admitted, shall have the same effect as if originally taken and produced in the suit.
  - (4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the United States Patent and [Trademark](/usc/15/1127.md) Office at the time of the decision complained of, but any party in interest may become a party to the action. If there are adverse parties residing in a plurality of districts not embraced within the same [State](/usc/15/15g.md?p=2), or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs.

# §1072. Registration as constructive notice of claim of ownership


Registration of a [mark](/usc/15/1127.md) on the [principal register](/usc/15/1127.md) provided by this chapter or under the [Act of March 3, 1881](/usc/15/1127.md), or the [Act of February 20, 1905](/usc/15/1127.md), shall be constructive notice of the [registrant](/usc/15/1127.md)’s claim of ownership thereof.