TMEP 1602.01: Act of 1946

This is the October 2015 Edition of the TMEP

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1602.01    Act of 1946

Registrations Resulting From Applications Under §§1 and 44

The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, which took effect on November 16, 1989, amended §9 of the Trademark Act of 1946 to reduce both the duration of registration and the term of renewal from twenty to ten years. All registrations issued or renewed on or after November 16, 1989 are issued or renewed for a ten-year period.

Thus, registrations issued under the Act of 1946 on or after November 16, 1989, remain in force for ten years, provided that affidavits or declarations of use or excusable nonuse under §8 of the Act are filed. 37 C.F.R. §2.181(a)(2). See 37 C.F.R. §2.160(a) and TMEP §1604.04 regarding the due dates for affidavits or declarations of use or excusable nonuse. Registrations issued under the Act of 1946 before November 16, 1989 remain in force for twenty years, provided that an affidavit or declaration of use or excusable nonuse was filed during the sixth year after the date of registration. 37 C.F.R. §2.181(a)(1). See TMEP §§1604 et seq. regarding affidavits or declarations of use under §8 of the 1946 Act.

Effective November 16, 1989, registrations under the Act of 1946 may be renewed for periods of ten years from the end of the expiring period. 37 C.F.R. §2.181(a). Before November 16, 1989, registrations under the Act of 1946 were renewed for twenty-year periods. The applicable term for renewals that were processed during the transition depends on whether the registration was renewed before or after November 16, 1989. If the registration was renewed before November 16, 1989, the renewal term is twenty years; if the registration was renewed on or after November 16, 1989, the renewal term is ten years, regardless of the date on which the renewal application was filed. In re Maytag Corp., 21 USPQ2d 1615 (Comm’r Pats. 1991). See TMEP §§1606 et seq. regarding renewal under §9 of the 1946 Act.

Registered Extensions of Protection

Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of an international registration and its corresponding extension of protection to the United States must be made at the International Bureau of the World Intellectual Property Organization (“IB”), in accordance with Article 7 of the Madrid Protocol. 37 C.F.R. §7.41(a). See TMEP §1614 for further information about renewal of international registrations.

Section 71 of the Act, 15 U.S.C. §1141k, requires the periodic filing of affidavits or declarations of use in commerce or excusable nonuse for registered extensions of protection. See TMEP §1613 regarding due dates and requirements for §71 affidavits or declarations.