TMEP 1603: Bringing Prior Act Registrations Under 1946 Act, §12(c)

This is the October 2015 Edition of the TMEP

Previous: §1602.04 | Next: §1603.01

1603    Bringing Prior Act Registrations Under 1946 Act, §12(c)

Owners of marks registered under the Acts of 1905 or 1881 may claim the benefits of the Act of 1946, but are not required to do so. Trademark Act §12(c), 15 U.S.C. §1062(c). The 1946 Act refers to a “registrant” claiming the benefits of the Act. The term “registrant” includes both the original registrant and a person who has acquired ownership through proper transfer of title. See 15 U.S.C. §1127. The claim must be made by the person who owns the mark at the time the claim is made.

To claim the benefits of the Act of 1946, the owner of the registration must file an affidavit or a declaration under 37 C.F.R. §2.20. The affidavit or declaration must: (1) set forth those items listed in the registration on which the mark is currently in use in commerce; (2) state that the benefits of the Act of 1946 are claimed for the mark; (3) be accompanied by the fee required by 37 C.F.R. §2.6; and (4) be filed by the owner and signed by a person properly authorized to sign on behalf of the owner. 37 C.F.R. §2.153. No specimen is required. Goods or services not listed in the affidavit or declaration will be deleted from the registration. The affidavit or declaration under §12(c) of the Act may be filed at any time during the life of the registration.

A claim of the benefits of the 1946 Act does not affect or alter the term of the 1905 or 1881 Act registration. These registrations still remain in force for the times indicated in TMEP §1602.02, subject to cancellation if acceptable affidavits or declarations of use or excusable nonuse are not filed under 15 U.S.C. §1058. The deadline for renewal (and the affidavit or declaration of use or excusable nonuse required during the year before the end of every ten-year period after the date of the registration) is calculated from the date of issue of the registration, not from the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act.