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.   See15 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.

1603.01    Notification and Publication of Mark in Trademark Official Gazette

If the affidavit or declaration claiming the benefits of the Act of 1946 is acceptable, the mark and accompanying notice of the claim of benefits of the 1946 Act are published in the Trademark Official Gazette under the heading "Registrations Published Under Sec. 12(c)."  37 C.F.R. §2.154.  The USPTO notifies the registrant of the publishing of the mark in the Trademark Official Gazette, and also informs the registrant of the requirement for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.  37 C.F.R. §2.155.  

If an affidavit or declaration claiming the benefits of the Act of 1946 is unacceptable, the USPTO notifies the registrant of the defect.

These marks are not subject to opposition on their publication in the Trademark Official Gazette.  37 C.F.R. §2.156.

1603.02    Cancellation and Incontestability

If the benefits of the Act of 1946 are claimed, registrants under the Acts of 1905 and 1881 may subsequently file affidavits or declarations under §15 of the Act of 1946, 15 U.S.C. §1064, whereby the marks shall be incontestable.   See TMEP §§1605-1605.06.

Once the registrant claims the benefits of the Act of 1946, registrations under the 1905 and 1881 Acts are subject to cancellation under §14 of the Act of 1946, 15 U.S.C. §1064.   See TMEP §1607.

1603.03    Affidavits or Declarations of Use in Commerce Required

After the benefits of the Act of 1946 are claimed for a registration issued under the Act of 1881 or the Act of 1905, the registrant must file an affidavit or declaration of use or excusable nonuse during the sixth year after the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act in the Trademark Official Gazette, or within the six-month grace period after expiration of the sixth year, to avoid cancellation under §8(a)(1) and (a)(3) of the Act.  15 U.S.C. §1058(a)(1), (a)(3). An affidavit or declaration of use or excusable nonuse must also be filed within one year before the end of every ten-year period after the date of the registration, or within the six-month grace period thereafter.  15 U.S.C. §1058(a)(2), (a)(3). See TMEP §§1604-1604.21(d) for further information about affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.