US Code Title 15 Section 1126

CITE

    15 USC Sec. 1126                                            01/05/2009

EXPCITE

    TITLE 15 - COMMERCE AND TRADE
    CHAPTER 22 - TRADEMARKS
    SUBCHAPTER III - GENERAL PROVISIONS

HEAD

    Sec. 1126. International conventions

STATUTE

    (a) Register of marks communicated by international bureaus
      The Director shall keep a register of all marks communicated to
    him by the international bureaus provided for by the conventions
    for the protection of industrial property, trademarks, trade and
    commercial names, and the repression of unfair competition to which
    the United States is or may become a party, and upon the payment of
    the fees required by such conventions and the fees required in this
    chapter may place the marks so communicated upon such register.
    This register shall show a facsimile of the mark or trade or
    commercial name; the name, citizenship, and address of the
    registrant; the number, date, and place of the first registration
    of the mark, including the dates on which application for such
    registration was filed and granted and the term of such
    registration; a list of goods or services to which the mark is
    applied as shown by the registration in the country of origin, and
    such other data as may be useful concerning the mark. This register
    shall be a continuation of the register provided in section 1(a) of
    the Act of March 19, 1920.
    (b) Benefits of section to persons whose country of origin is party
      to convention or treaty
      Any person whose country of origin is a party to any convention
    or treaty relating to trademarks, trade or commercial names, or the
    repression of unfair competition, to which the United States is
    also a party, or extends reciprocal rights to nationals of the
    United States by law, shall be entitled to the benefits of this
    section under the conditions expressed herein to the extent
    necessary to give effect to any provision of such convention,
    treaty or reciprocal law, in addition to the rights to which any
    owner of a mark is otherwise entitled by this chapter.
    (c) Prior registration in country of origin; country of origin
      defined
      No registration of a mark in the United States by a person
    described in subsection (b) of this section shall be granted until
    such mark has been registered in the country of origin of the
    applicant, unless the applicant alleges use in commerce.
      For the purposes of this section, the country of origin of the
    applicant is the country in which he has a bona fide and effective
    industrial or commercial establishment, or if he has not such an
    establishment the country in which he is domiciled, or if he has
    not a domicile in any of the countries described in subsection (b)
    of this section, the country of which he is a national.
    (d) Right of priority
      An application for registration of a mark under section 1051,
    1053, 1054, or 1091 of this title or under subsection (e) of this
    section, filed by a person described in subsection (b) of this
    section who has previously duly filed an application for
    registration of the same mark in one of the countries described in
    subsection (b) of this section shall be accorded the same force and
    effect as would be accorded to the same application if filed in the
    United States on the same date on which the application was first
    filed in such foreign country: Provided, That -
        (1) the application in the United States is filed within six
      months from the date on which the application was first filed in
      the foreign country;
        (2) the application conforms as nearly as practicable to the
      requirements of this chapter, including a statement that the
      applicant has a bona fide intention to use the mark in commerce;
        (3) the rights acquired by third parties before the date of the
      filing of the first application in the foreign country shall in
      no way be affected by a registration obtained on an application
      filed under this subsection;
        (4) nothing in this subsection shall entitle the owner of a
      registration granted under this section to sue for acts committed
      prior to the date on which his mark was registered in this
      country unless the registration is based on use in commerce.
      In like manner and subject to the same conditions and
    requirements, the right provided in this section may be based upon
    a subsequent regularly filed application in the same foreign
    country, instead of the first filed foreign application: Provided,
    That any foreign application filed prior to such subsequent
    application has been withdrawn, abandoned, or otherwise disposed
    of, without having been laid open to public inspection and without
    leaving any rights outstanding, and has not served, nor thereafter
    shall serve, as a basis for claiming a right of priority.
    (e) Registration on principal or supplemental register; copy of
      foreign registration
      A mark duly registered in the country of origin of the foreign
    applicant may be registered on the principal register if eligible,
    otherwise on the supplemental register in this chapter provided.
    Such applicant shall submit, within such time period as may be
    prescribed by the Director, a true copy, a photocopy, a
    certification, or a certified copy of the registration in the
    country of origin of the applicant. The application must state the
    applicant's bona fide intention to use the mark in commerce, but
    use in commerce shall not be required prior to registration.
    (f) Domestic registration independent of foreign registration
      The registration of a mark under the provisions of subsections
    (c), (d), and (e) of this section by a person described in
    subsection (b) of this section shall be independent of the
    registration in the country of origin and the duration, validity,
    or transfer in the United States of such registration shall be
    governed by the provisions of this chapter.
    (g) Trade or commercial names of foreign nationals protected
      without registration
      Trade names or commercial names of persons described in
    subsection (b) of this section shall be protected without the
    obligation of filing or registration whether or not they form parts
    of marks.
    (h) Protection of foreign nationals against unfair competition
      Any person designated in subsection (b) of this section as
    entitled to the benefits and subject to the provisions of this
    chapter shall be entitled to effective protection against unfair
    competition, and the remedies provided in this chapter for
    infringement of marks shall be available so far as they may be
    appropriate in repressing acts of unfair competition.
    (i) Citizens or residents of United States entitled to benefits of
      section
      Citizens or residents of the United States shall have the same
    benefits as are granted by this section to persons described in
    subsection (b) of this section.

SOURCE

    (July 5, 1946, ch. 540, title IX, Sec. 44, 60 Stat. 441; Pub. L. 87-
    333, Sec. 2, Oct. 3, 1961, 75 Stat. 748; Pub. L. 87-772, Sec. 20,
    Oct. 9, 1962, 76 Stat. 774; Pub. L. 100-667, title I, Sec. 133,
    Nov. 16, 1988, 102 Stat. 3946; Pub. L. 105-330, title I, Sec. 108,
    Oct. 30, 1998, 112 Stat. 3068; Pub. L. 106-43, Sec. 6(b), Aug. 5,
    1999, 113 Stat. 220; Pub. L. 106-113, div. B, Sec. 1000(a)(9)
    [title IV, Sec. 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536,
    1501A-583; Pub. L. 107-273, div. C, title III, Sec. 13207(b)(12),
    Nov. 2, 2002, 116 Stat. 1908.)

REFERENCES IN TEXT

      Section 1(a) of the Act of March 19, 1920, referred to in subsec.
    (a), is section 1(a) of act Mar. 19, 1920, ch. 104, 41 Stat. 533,
    which was classified to section 121(a) of this title, and repealed
    by act July 5, 1946, ch. 540, Sec. 46(a), 60 Stat. 444, insofar as
    inconsistent with this chapter.

PRIOR PROVISIONS

      Acts Feb. 20, 1905, ch. 592, Secs. 1, 2, 4, 33 Stat. 724, 725;
    May 4, 1906, ch. 2081, Secs. 1, 3, 34 Stat. 168, 169; Feb. 18,
    1909, ch. 144, 35 Stat. 628; Mar. 19, 1920, ch. 104, Secs. 1, 6, 41
    Stat. 533, 535; Apr. 11, 1930, ch. 132, Sec. 4, 46 Stat. 155; June
    20, 1936, ch. 617, 49 Stat. 1539; June 10, 1938, ch. 332, Secs. 1,
    2, 3, 52 Stat. 638, 639.
                                AMENDMENTS
      2002 - Subsec. (e). Pub. L. 107-273 substituted "a true copy, a
    photocopy, a certification," for "a certification".
      1999 - Subsec. (a). Pub. L. 106-113 substituted "Director" for
    "Commissioner".
      Pub. L. 106-43 substituted "trademarks" for "trade-marks".
      Subsec. (e). Pub. L. 106-113 substituted "Director" for
    "Commissioner".
      1998 - Subsec. (d). Pub. L. 105-330, Sec. 108(1)(A), in
    introductory provisions, substituted "or 1091 of this title or
    under subsection (e) of this section" for "1091 of this title, or
    subsection (e) of this section".
      Subsec. (d)(3), (4). Pub. L. 105-330, Sec. 108(1)(B), made
    technical amendment to reference in original act which appears in
    text as reference to this subsection.
      Subsec. (e). Pub. L. 105-330, Sec. 108(2), substituted "Such
    applicant shall submit, within such time period as may be
    prescribed by the Commissioner, a certification or a certified copy
    of the registration in the country of origin of the applicant" for
    "The application therefor shall be accompanied by a certification
    or a certified copy of the registration in the country of origin of
    the applicant".
      1988 - Subsec. (a). Pub. L. 100-667, Sec. 133(2), substituted
    "required in this chapter" for "herein prescribed".
      Subsec. (c). Pub. L. 100-667, Sec. 133(1), made technical
    amendment in two places to references in the original act to
    subsection (b) of this section, resulting in no change in text.
      Subsec. (d). Pub. L. 100-667, Sec. 133(1), (3), (4), (5), in
    introductory provisions, made technical amendment in two places to
    references in the original act to subsection (b) of this section,
    resulting in no change in text, and substituted "section 1051,
    1053, 1054, or 1091 of this title, or subsection (e) of this
    section" for "sections 1051, 1052, 1053, 1054, or 1091 of this
    title", in par. (2), substituted "including a statement that the
    applicant has a bona fide intention to use the mark in commerce"
    for "but use in commerce need not be alleged", and in par. (3),
    substituted "foreign" for "foreing".
      Subsec. (e). Pub. L. 100-667, Sec. 133(6), inserted at end "The
    application must state the applicant's bona fide intention to use
    the mark in commerce, but use in commerce shall not be required
    prior to registration."
      Subsec. (f). Pub. L. 100-667, Sec. 133(1), (7), made technical
    amendment to references in the original act to subsections (c),
    (d), and (e) of this section and to subsection (b) of this section,
    resulting in no change in text.
      Subsecs. (g) to (i). Pub. L. 100-667, Sec. 133(1), (8), made
    technical amendment to references in the original act to subsection
    (b) of this section, resulting in no change in text.
      1962 - Subsec. (b). Pub. L. 87-772 inserted "or extends
    reciprocal rights to nationals of the United States by law," and
    substituted provisions requiring the person's country of origin to
    be a party to any convention or treaty, for provisions which
    required such persons to be nationals of, domiciled in, or have a
    bona fide and effective business or commercial establishment in a
    foreign country which was a party to the International Convention
    for the Protection of Industrial Property, or the General Inter-
    American Convention for Trade Mark and Commercial Protection, or
    any other convention or treaty relating to trademarks, trade, or
    commercial names.
      Subsec. (e). Pub. L. 87-772 inserted "certification or a" after
    "accompanied by a" and struck out "application for or" before
    "registration".
      1961 - Subsec. (d). Pub. L. 87-333 inserted par. at end
    authorizing the right provided by this section to be based upon a
    subsequent application in the same foreign country, instead of the
    first application, provided that any foreign application filed
    prior to such subsequent one was withdrawn, or otherwise disposed
    of, without having been open to public inspection and without
    leaving any rights outstanding, nor any basis for claiming
    priority.
                     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, Sec. 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.
      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.
                     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 1961 AMENDMENT
      Section 3 of Pub. L. 87-333 provided that: "This Act [amending
    this section and section 119 of Title 35, Patents] shall take
    effect on the date when the Convention of Paris for the Protection
    of Industrial Property of March 20, 1883, as revised at Lisbon,
    October 31, 1958, comes into force with respect to the United
    States and shall apply only to applications thereafter filed in the
    United States by persons entitled to the benefit of said
    convention, as revised at the time of such filing."
                   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 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, Secs. 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.