TITLE IX INTERNATIONAL CONVENTIONS

§44 (15 U.S.C. §1126) International conventions; register of marks

(a) 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 Act 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. Note: The United States is not at present a party to the parts of the international conventions providing for international bureaus for the registration or communication of trademarks.

(b) 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. Notes: International Convention for the Protection of Industrial Property of 1883 (Paris); revised at Washington in 1911, 204 O.G. 1011, July 21, 1914 (37 Stat. 1645; Treaty Series 579); at the Hague in 1925, 407 O.G. 298, June 9, 1931 (47 Stat. 1789; Treaty Series 834; 2 Bevans 524); at London in 1934, 613 O.G. 23, August 3, 1948 (53 Stat. 1748; Treaty Series 941; 3 Bevans 223); at Lisbon in 1958, 775 O.G. 321, February 13, 1962 (53 Stat. 1748; 13 U.S.T. 1; TIAS 9431); and at Stockholm July 14, 1967, 852 O.G. 511, July 16, 1968 (21 U.S.T. 1583; TIAS 6923). A list of the member countries together with an indication of the latest Act by which each country is bound and the date from which each is considered to be bound appears annually (January issue) in "Industrial Property," a monthly review of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. General Inter-American Convention for Trade-Mark and Commercial Protection (Pan-American Trade-Mark Convention) of 1929, 46 Stat. 2907; Pan-American Trade-Mark Convention of 1923, 44 Stat. 2494; Pan-American Trade-Mark Convention of 1910, 39 Stat. 1675. List of the States which are parties to the above conventions may be found in "Treaties in Force," a list of treaties and other international agreements in force on the first day of January of each year, compiled annually by the Office of the Legal Adviser, U.S. Department of State.

(c) 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) An application for registration of a mark under sections 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 6 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.

Provided

Note: Section 3 of Public Law 333, 87th Cong., approved October 3, 1961, 75 Stat. 748, the provision which added the last paragraph above provided that "This Act 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 is applied 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." This provision became effective Jan. 4, 1962.

(e) 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 herein 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) 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 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) 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 herein 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 the United States shall have the same benefits as are granted by this section to persons described in subsection (b) of this section.

(Amended Oct. 3, 1961, 75 Stat. 748; Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3946; Oct. 30, 1998, 112 Stat. 3068; Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.)