
From the U.S. Code Online via GPO Access
[wais.access.gpo.gov]
[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 2002]
[CITE: 15USC1064]

 
                      TITLE 15--COMMERCE AND TRADE
 
                         CHAPTER 22--TRADEMARKS
 
                  SUBCHAPTER I--THE PRINCIPAL REGISTER
 
Sec. 1064. Cancellation of registration

    A petition to cancel a registration of a mark, stating the grounds 
relied upon, may, upon payment of the prescribed fee, be filed as 
follows by any person who believes that he is or will be damaged, 
including as a result of dilution under section 1125(c) of this title, 
by the registration of a mark on the principal register established by 
this chapter, or under the Act of March 3, 1881, or the Act of February 
20, 1905:
        (1) Within five years from the date of the registration of the 
    mark under this chapter.
        (2) Within five years from the date of publication under section 
    1062(c) of this title of a mark registered under the Act of March 3, 
    1881, or the Act of February 20, 1905.
        (3) At any time if the registered mark becomes the generic name 
    for the goods or services, or a portion thereof, for which it is 
    registered, or is functional, or has been abandoned, or its 
    registration was obtained fraudulently or contrary to the provisions 
    of section 1054 of this title or of subsection (a), (b), or (c) of 
    section 1052 of this title 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 is being 
    used by, or with the permission of, the registrant so as to 
    misrepresent the source of the goods or services on or in connection 
    with which the mark is used. If the registered mark becomes the 
    generic name for less than all of the goods or services for which it 
    is registered, a petition to cancel the registration for only those 
    goods or services may be filed. A registered mark shall not be 
    deemed to be the generic name of goods or services solely because 
    such mark is also used as a name of or to identify a unique product 
    or service. The primary significance of the registered mark to the 
    relevant public rather than purchaser motivation shall be the test 
    for determining whether the registered mark has become the generic 
    name of goods or services on or in connection with which it has been 
    used.
        (4) At any time if the mark is registered under the Act of March 
    3, 1881, or the Act of February 20, 1905, and has not been published 
    under the provisions of subsection (c) of section 1062 of this 
    title.
        (5) At any time in the case of a certification mark on the 
    ground that the registrant (A) does not control, or is not able 
    legitimately to exercise control over, the use of such mark, or (B) 
    engages in the production or marketing of any goods or services to 
    which the certification mark is applied, or (C) permits the use of 
    the certification mark for purposes other than to certify, or (D) 
    discriminately refuses to certify or to continue to certify the 
    goods or services of any person who maintains the standards or 
    conditions which such mark certifies:

Provided, That the Federal Trade Commission may apply to cancel on the 
grounds specified in paragraphs (3) and (5) of this section any mark 
registered on the principal register established by this chapter, and 
the prescribed fee shall not be required. Nothing in paragraph (5) shall 
be deemed to prohibit the registrant from using its certification mark 
in advertising or promoting recognition of the certification program or 
of the goods or services meeting the certification standards of the 
registrant. Such uses of the certification mark shall not be grounds for 
cancellation under paragraph (5), so long as the registrant does not 
itself produce, manufacture, or sell any of the certified goods or 
services to which its identical certification mark is applied.

(July 5, 1946, ch. 540, title I, Sec. 14, 60 Stat. 433; Pub. L. 87-772, 
Sec. 9, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97-247, Sec. 9(b), Aug. 27, 
1982, 96 Stat. 320; Pub. L. 98-620, title I, Sec. 102, Nov. 8, 1984, 98 
Stat. 3335; Pub. L. 100-667, title I, Sec. 115, Nov. 16, 1988, 102 Stat. 
3940; Pub. L. 105-330, title II, Sec. 201(a)(4), title III, Sec. 301, 
Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106-43, Sec. 2(c), Aug. 5, 1999, 
113 Stat. 218.)

                       References in Text

    Acts March 3, 1881 and February 20, 1905, referred to in opening 
par. and pars. (2) and (4), are acts Mar. 3, 1881, ch. 138, 21 Stat. 502 
and Feb. 20, 1905, ch. 592, 33 Stat. 724, which were repealed insofar as 
inconsistent with this chapter by act July 5, 1946, ch. 540, Sec. 46(a), 
60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of 
this title.


                            Prior Provisions

    Act Feb. 20, 1905, ch. 592, Sec. 13, 33 Stat. 728.


                               Amendments

    1999--Pub. L. 106-43 inserted ``, including as a result of dilution 
under section 1125(c) of this title,'' after ``damaged'' in introductory 
provisions.
    1998--Pub. L. 105-330, Sec. 301, inserted at end ``Nothing in 
paragraph (5) shall be deemed to prohibit the registrant from using its 
certification mark in advertising or promoting recognition of the 
certification program or of the goods or services meeting the 
certification standards of the registrant. Such uses of the 
certification mark shall not be grounds for cancellation under paragraph 
(5), so long as the registrant does not itself produce, manufacture, or 
sell any of the certified goods or services to which its identical 
certification mark is applied.''
    Par. (3). Pub. L. 105-330, Sec. 201(a)(4), inserted ``or is 
functional,'' before ``or has been abandoned''.
    1988--Pub. L. 100-667, Sec. 115(1), (7), in introductory provisions, 
inserted ``as follows'' and substituted ``1905:'' for ``1905--'', and in 
concluding proviso substituted ``paragraphs (3) and (5)'' for 
``subsections (c) and (e)''.
    Par. (1). Pub. L. 100-667, Sec. 115(2), substituted ``(1) Within'' 
for ``(a) within'' and ``chapter.'' for ``chapter; or''.
    Par. (2). Pub. L. 100-667, Sec. 115(3), substituted ``(2) Within'' 
for ``(b) within'', and ``1905.'' for ``1905; or''.
    Par. (3). Pub. L. 100-667, Sec. 115(4), substituted ``(3)'' for 
``(c)'' and amended text generally. Prior to amendment, text read as 
follows: ``at any time if the registered mark becomes the common 
descriptive name of an article or substance, or has been abandoned, or 
its registration was obtained fraudulently or contrary to the provisions 
of section 1054 of this title or of subsections (a), (b), or (c) of 
section 1052 of this title for a registration hereunder, or contrary to 
similar prohibitory provisions of said prior Acts for a registration 
thereunder, or if the registered mark is being used by, or with the 
permission of, the registrant so as to misrepresent the source of the 
goods or services in connection with which the mark is used. A 
registered mark shall not be deemed to be the common descriptive name of 
goods or services solely because such mark is also used as a name of or 
to identify a unique product or service. The primary significance of the 
registered mark to the relevant public rather than purchaser motivation 
shall be the test for determining whether the registered mark has become 
the common descriptive name of goods or services in connection with 
which it has been used; or''.
    Par. (4). Pub. L. 100-667, Sec. 115(5), substituted ``(4) At'' for 
``(d) at'', and ``title.'' for ``title; or''.
    Par. (5). Pub. L. 100-667, Sec. 115(6), substituted ``(5) At'' for 
``(e) at'' and redesignated former pars. (1) to (4) as subpars. (A) to 
(D), respectively.
    1984--Par. (c). Pub. L. 98-620 inserted provision that a registered 
mark shall not be deemed to be the common descriptive name of goods or 
services solely because such mark is also used as a name of or to 
identify a unique product or service, and that the primary significance 
of the registered mark to the relevant public rather than purchaser 
motivation shall be the test for determining whether the registered mark 
has become the common descriptive name of goods or services in 
connection with which it has been used.
    1982--Pub. L. 97-247 struck out ``verified'' before ``petition to 
cancel'' in provision preceding par. (a).
    1962--Pub. L. 87-772 inserted provisions which require a verified 
petition to cancel a registration, redesignated par. (d) as (e), added 
par. (d) which is composed of provisions formerly part of par. (c), and 
in said par. (c), substituted ``registrant'' for ``assignee'', and 
struck out ``on which the patent has expired'' before ``or has been 
abandoned'', and ``has been assigned and'' before ``is being used by''.


                    Effective Date of 1999 Amendment

    Amendment by Pub. L. 106-43 effective Aug. 5, 1999, and applicable 
only to any application for registration filed on or after Jan. 16, 
1996, see section 2(e) of Pub. L. 106-43, set out as a note under 
section 1052 of this title.


                    Effective Date of 1998 Amendment

    Amendment by section 201(a)(4) of Pub. L. 105-330 effective Oct. 30, 
1998, 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 section 201(b) of Pub. 
L. 105-330, set out as a note under section 1051 of this title.


                    Effective Date of 1988 Amendment

    Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988, 
see section 136 of Pub. L. 100-667, set out as a note under section 1051 
of this title.


                    Effective Date of 1982 Amendment

    Amendment by Pub. L. 97-247 effective six months after Aug. 27, 
1982, see section 17(c) of Pub. L. 97-247, set out as a note under 
section 294 of Title 35, Patents.


             Finality of Judgments Prior to November 8, 1984

    Section 104 of title I of Pub. L. 98-620 provided that: ``Nothing in 
this title [amending this section and section 1127 of this title and 
enacting provisions set out as a note under section 1051 of this title] 
shall be construed to provide a basis for reopening of any final 
judgment entered prior to the date of enactment of this title [Nov. 8, 
1984].''


                  Repeal and Effect on Existing Rights

    Repeal of inconsistent provisions, effect of this chapter on pending 
proceedings and existing registrations and rights under prior acts, see 
notes set out under section 1051 of this title.

                          Transfer of Functions

    For transfer of functions of Federal Trade Commission, with certain 
exceptions, to Chairman of such Commission, see Reorg. Plan No. 8 of 
1950, Sec. 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat. 1264, set out 
under section 41 of this title.


    Restriction on Use of Funds To Cancel Registration of Trademarks

    For provisions restricting the use of funds authorized to be 
appropriated to carry out section 41 et seq. of this title for fiscal 
year 1980, 1981, or 1982, for the purpose of taking any action under 
this section with respect to the cancellation of the registration of any 
mark on the ground that such mark has become the common descriptive name 
of an article or substance, see section 18 of Pub. L. 96-252, set out as 
a note under section 57c of this title.

                  Section Referred to in Other Sections

    This section is referred to in sections 1052, 1065, 1094 of this 
title.
