TMEP 1602.02: Acts of 1881 and 1905

October 2017 Edition of the TMEP

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1602.02    Acts of 1881 and 1905

Registrations under the Act of 1905 were issued for an original term of twenty years, and were renewable for twenty-year periods.  Registrations under the Act of 1881 were issued for an original term of thirty years, and were renewable under the Act of 1905 for twenty-year periods.

Effective November 16, 1989, registrations issued under the 1905 Act and the 1881 Act are renewable under the 1946 Act for periods of ten years.  Before November 16, 1989, registrations issued under the 1905 Act and the 1881 Act were renewable under the 1946 Act for periods of twenty years.  Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(b).

A registrant under the 1905 Act or the 1881 Act may file an affidavit or declaration under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), to claim the benefits of the 1946 Act, without affecting the term of the registration. See TMEP §1603.  Under §8(a)(1) of the 1946 Act, 15 U.S.C. §1058(a)(1), if the registrant claims the benefits of the 1946 Act, the registrant must file an affidavit or declaration of use or excusable nonuse within the sixth year after publication of the notice of the §12(c) claim in the Official Gazette, to avoid cancellation.  See TMEP §§1604 et seq. regarding affidavits or declarations of use or excusable nonuse.

Section 8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), requires that owners of marks registered under the Acts of 1905 and 1881 file affidavits or declarations of use or excusable nonuse at the end of each successive ten-year period following the date of registration, even if the registrant does not claim the benefits of the 1946 Act under §12(c) of the Act.  However, this requirement does not apply to a registration renewed for a twenty-year term (i.e., a registration renewed prior to November 16, 1989) until a renewal application is due. See TMEP §1604.04(b).