§1058. Duration
(a) In general
Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director for failure to comply with the provisions of subsection (b) of this section, upon the expiration of the following time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this chapter, at the end of 6 years following the date of registration.
(2) For registrations published under the provisions of section 1062(c) of this title, at the end of 6 years following the date of publication under such section.
(3) For all registrations, at the end of each successive 10-year period following the date of registration.
(b) Affidavit of continuing use
During the 1-year period immediately preceding the end of the applicable time period set forth in subsection (a) of this section, the owner of the registration shall pay the prescribed fee and file in the Patent and Trademark Office-
(1) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce and such number of specimens or facsimiles showing current use of the mark as may be required by the Director; or
(2) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is not in use in commerce and showing that any such nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.
(c) Grace period for submissions; deficiency
(1) The owner of the registration may make the submissions required under this section within a grace period of 6 months after the end of the applicable time period set forth in subsection (a) of this section. Such submission is required to be accompanied by a surcharge prescribed by the Director.
(2) If any submission filed under this section is deficient, the deficiency may be corrected after the statutory time period and within the time prescribed after notification of the deficiency. Such submission is required to be accompanied by a surcharge prescribed by the Director.
(d) Notice of affidavit requirement
Special notice of the requirement for affidavits under this section shall be attached to each certificate of registration and notice of publication under section 1062(c) of this title.
(e) Notification of acceptance or refusal of affidavits
The Director shall notify any owner who files 1 of the affidavits required by this section of the Commissioner's 1 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 registrant is not domiciled in the United States, the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.
(July 5, 1946, ch. 540, title I, §8, 60 Stat. 431
;
Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949
;
Pub. L. 97–247, §8, Aug. 27, 1982, 96 Stat. 320
;
Pub. L. 100–667, title I, §110, Nov. 16, 1988, 102 Stat. 3939
;
Pub. L. 105–330, title I, §105, Oct. 30, 1998, 112 Stat. 3066
;
Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4732(b)(1)(B), (C)], Nov. 29, 1999, 113 Stat. 1536
, 1501A-583;
Pub. L. 107–273, div. C, title III, §13207(b)(3), Nov. 2, 2002, 116 Stat. 1906
.)
Prior Provisions
Act Feb. 20, 1905, ch. 592, §12, 33 Stat. 727
.
Amendments
2002-Subsec. (f). Pub. L. 107–273 amended subsec. (f) generally. Prior to amendment, text read as follows: "If the registrant is not domiciled in the United States, the registrant shall designate by a written document filed in the Patent and Trademark Office the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director."
1999-Subsecs. (a) to (c). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(b)(1)(B)], substituted "Director" for "Commissioner" wherever appearing.
Subsec. (e). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(b)(1)(B), (C)], amended subsec. (e) identically, substituting "Director" for "Commissioner".
Subsec. (f). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(b)(1)(B)], substituted "Director" for "Commissioner".
1998-Pub. L. 105–330 amended section catchline and text generally. Prior to amendment, text consisted of subsecs. (a) to (c) relating to affidavits of continuing use, registrations published under other provisions of law, and notification of acceptance or refusal of affidavits.
1988-Subsec. (a). Pub. L. 100–667 substituted "ten" for "twenty" and "setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce and attaching to the affidavit a specimen or facsimile showing current use of the mark, or showing that any" for "showing that said mark is in use in commerce or showing that its".
1982-Subsecs. (a), (b). Pub. L. 97–247 struck out "still" after "showing that said mark is", and inserted "in commerce" after "use".
1975-Subsecs. (a), (b). Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office".
Effective Date of 1999 Amendment
Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents.
Effective Date of 1998 Amendment
Amendment by Pub. L. 105–330 effective on the date that is 1 year after Oct. 30, 1998, see section 110 of Pub. L. 105–330, set out as a note under section 1051 of this title.
Pub. L. 105–330, title I, §109(a), Oct. 30, 1998, 112 Stat. 3069
, provided that: "The provisions of section 8 of the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to a registration for trademark issued or renewed for a 20-year term, if the expiration date of the registration is on or after the effective date of this Act [probably should be "this title", see section 110 of Pub. L. 105–330, set out as an Effective Date of 1998 Amendment note under section 1051 of this title]."
For provisions relating to applicability of amendment by Pub. L. 105–330 to applications for registration of trademarks, see section 109(b) of Pub. L. 105–330, set out as a note under section 1051 of this title.
Pub. L. 105–330, title I, §109(c), Oct. 30, 1998, 112 Stat. 3069
, provided that: "The provisions of section 8 of the Trademark Act of 1946 [15 U.S.C. 1058], as amended by section 105 of this Act, shall apply to the filing of an affidavit if the sixth or tenth anniversary of the registration, or the sixth anniversary of publication of the registration under section 12(c) of the Trademark Act of 1946 [15 U.S.C. 1062(c)], for which the affidavit is filed is on or after the effective date of this Act [probably should be "this title", see section 110 of Pub. L. 105–330, set out as an Effective Date of 1998 Amendment 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.
Effective Date of 1975 Amendment
Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of this title.
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, and saving clause, see notes set out under section 1051 of this title.
Transfer of Functions
For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.
References to Trademark Act of 1946
Pub. L. 105–330, title I, §102, Oct. 30, 1998, 112 Stat. 3064
, provided that: "For purposes of this title [see Short Title of 1998 Amendment note set out under section 1051 of this title], the Act entitled 'An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.), shall be referred to as the 'Trademark Act of 1946'."
Pending Applications
Act July 5, 1946, ch. 540, title XI, §51, as added Nov. 16, 1988,
Pub. L. 100–667, title I, §135, 102 Stat. 3948
, provided that: "All certificates of registration based upon applications for registration pending in the Patent and Trademark Office on the effective date of the Trademark Law Revision Act of 1988 [see Effective Date of 1988 Amendment note set out under section 1051 of this title] shall remain in force for a period of 10 years."