§ 1064. Cancellation of registration

2,191 words·~10 min read·/usc/title-15/section-1064

A research copy — for the controlling text, always check the official state or federal source. Not legal advice.

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 a likelihood of dilution by blurring or dilution by tarnishment 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.

(6)At any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration:

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. Nothing in paragraph

(6)shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title shall not be cancelled pursuant to paragraph

(6)if the registrant demonstrates that any nonuse is due to special circumstances that excuse such nonuse.

(July 5, 1946, ch. 540, title I, § 14, 60 Stat. 433; Pub. L. 87–772, § 9, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97–247, § 9(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98–620, title I, § 102, Nov. 8, 1984, 98 Stat. 3335; Pub. L. 100–667, title I, § 115, Nov. 16, 1988, 102 Stat. 3940; Pub. L. 105–330, title II, § 201(a)(4), title III, § 301, Oct. 30, 1998, 112 Stat. 3070; Pub. L. 106–43, § 2(c), Aug. 5, 1999, 113 Stat. 218; Pub. L. 109–312, § 3(c), Oct. 6, 2006, 120 Stat. 1732; Pub. L. 116–260, div. Q, title II, § 225(b), Dec. 27, 2020, 134 Stat. 2204.)