1601    Types of Registrations

1601.01    Registrations Now Being Issued

Currently, the United States Patent and Trademark Office ("USPTO") issues registrations only under the Trademark Act of 1946, 15 U.S.C. §§1051  et seq.  These are either Principal Register registrations or Supplemental Register registrations.  See TMEP §801.02(a) regarding the Principal Register, and TMEP §801.02(b) regarding the Supplemental Register.

1601.01(a)    Certificate of Registration

The USPTO issues registration certificates for all registrations resulting from applications based on §§1, 44, and 66(a) of the Trademark Act, 15 U.S.C. §§1051, 1126, 1141f(a).  The registration certificate includes the owner’s name and address, the mark, the goods/services/collective membership organization, and the class(es).  The certificate is signed by the Director and issued under the seal of the USPTO.  15 U.S.C. §§1057(a),  1093; 37 C.F.R. §2.151.   See Notice of Reformatted Trademark Registration Certificate at 74 Fed. Reg. 34559  (July 16, 2009).

1601.01(b)    Duplicate Certificate of Registration

On September 15, 2009, changes were made to the format of the registration certificate that enable the USPTO to provide duplicates of certificates issued on or after that date. For registrations issued on or after September 15, 2009, the owner of the registration may request a duplicate certificate of registration by filing a petition to the Director under 37 C.F.R §2.146(a)(3), accompanied by the required verified statement of the facts and the petition fee required by 37 C.F.R §2.6. See TMEP §§1705–1705.07 regarding petition requirements. The Director may exercise supervisory authority to grant the request for good cause. A separate petition must be filed for each registration for which a duplicate registration certificate is requested. See TMEP §1707. Requests for waiver of the petition fee will be considered in certain appropriate cases. See TMEP §1705.02. The USPTO is not able to provide duplicates of registrations issued before September 15, 2009.

The owner of a registration may obtain a certified copy of the registration from the Document Services Branch of the Public Records Division of the USPTO for a fee. See TMEP §111.

1601.01(c)    Registered Extension of Protection of International Registration to the United States

Effective November 2, 2003, §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), permits the holder of an international registration to file a request for extension of protection of the international registration to the United States.   See TMEP §§1904 et seq.

Unless the request for extension of protection is refused under §68 of the Trademark Act, 15 U.S.C. §1141h,  the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official Gazette.  Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a).  The certificate of registration will look the same as the certificates issued for registrations resulting from applications based on §§1 and 44 of the Act.  From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register.  Section 69(b) of the Trademark Act, 15 U.S.C. §1141i(b).

Under §66(b), 15 U.S.C. §1141f(b),  unless the extension of protection is refused, the proper filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, 15 U.S.C. §1057(c),  as of the earliest of the following:

  • (1) The international registration date, if the request for extension of protection was made in the international application;
  • (2) The date of recordal of the subsequent designation requesting an extension of protection to the United States, if the request for extension of protection to the United States was made in a subsequent designation; or
  • (3) The date of priority claimed pursuant to §67 of the Trademark Act, 15 U.S.C.  §1141g.

Upon registration, the USPTO will refer to an extension of protection to the United States as a "registration" or a "registered extension of protection."  37 C.F.R. §7.25(c).

A registered extension of protection remains part of the international registration after registration in the United States.  See 15 U.S.C. §1141j,  37 C.F.R. §7.30, and TMEP §1904.08 for information about the dependence of the extension of protection on the underlying international registration.  In this respect, the registered extension of protection differs from a registration issuing from a §44 application, which exists independent of the underlying foreign registration, pursuant to §44(f), 15 U.S.C.  §1126(f).

See TMEP §1609.01(a) regarding amendment of registered extensions of protection under §7 of the Trademark Act, 15 U.S.C.  §1057.

1601.02    Repeal of Prior Acts

The Act of 1946 became effective on July 5, 1947.  Most Acts relating to trademarks that existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946.  Repealed Acts include the Act of 1881, the Act of 1905, the Act of 1920, and the amendment entitled "Act of June 10, 1938."  The repeal did not affect the validity of registrations granted under prior Acts.  Trademark Act §46(a), 15 U.S.C. §1051 note.

1601.03    Additional Registration Under Act of 1946

Marks that were registered under any previous Act may be registered again, under the Act of 1946, if the mark meets the requirements of the Act of 1946.  Trademark Act §46(b), 15 U.S.C. §1051 note.

However, the USPTO will not issue duplicate registrations for marks that are registered under the Act of 1946.  37 C.F.R. §2.48; see TMEP §703.

1601.04    1881 and 1905 Act Registrations

Registrations that were issued under the Acts of 1881 and 1905 may be renewed under §9 of the Act of 1946, 15 U.S.C. §1059.  These registrations are subject to, and entitled to the benefits of, the provisions of the Act of 1946 as though registered on the Principal Register of the Act, except with certain limitations that are set out in §46(b), 15 U.S.C. §1051 note.  Some of these limitations can be removed if the registrant claims the benefits of the Act of 1946 under §12(c), 15 U.S.C. §1062(c).   See TMEP §1603.

Marks registered under the "10-year proviso" of §5 of the Act of 1905 are deemed to have become distinctive under §2(f) of the Act of 1946, 15 U.S.C. §1052(f).   Trademark Act §46(b), 15 U.S.C. §1051 note.

See TMEP §1602.02 regarding the duration of and requirements for maintaining registrations issued under the Acts of 1881 and 1905.

1601.05    1920 Act Registrations

Registrations under the Act of 1920 are subject to, and entitled to the benefits of, the provisions of the Act of 1946 relating to marks registered on the Supplemental Register, and may not be renewed, unless renewal is required to support a foreign registration.  Trademark Act §46(b), 15 U.S.C. §1051 note.

See TMEP §1602.03 regarding the duration of and requirements for maintaining registrations issued under the Act of 1920.

1601.06    Registrations Issued Under Prior Classification Systems

Prior to September 1, 1973, the United States used its own system for the classification of goods and services, which is different from the international classification system.  For all registrations issued on the basis of an application filed on or before August 31, 1973, the classification under which the registration issued governs for all statutory purposes, including affidavits or declarations under §8, 15 U.S.C. §1058,  and renewal applications under §9, 15 U.S.C. §1059.    See 37 C.F.R. §§2.85(b), 2.183(f).  

As of September 1, 1973, the international system for classification of goods and services is the controlling classification system used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes.   See TMEP §1401.02; 37 C.F.R. §2.85(a).

A registrant whose registration issued under the U.S. classification system may voluntarily amend the registration under §7 of the Trademark Act, 15 U.S.C. §1057, to adopt the international classification set forth in the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement").  The registrant must pay the filing fee required for §7 amendments under 37 C.F.R. §2.6.   See37 C.F.R. §2.84(e)(3); TMEP §1609.04.

1601.07    Form of Copies of Registrations

Before August 24, 1920, the name of the Act under which a registration was issued was not designated on the copy of the registration on file in the Trademark Search Library.  Beginning with registrations issued on August 24, 1920, each registration includes in the heading either the words "Act of Feb. 20, 1905" or the words "Act of Mar. 19, 1920."  The first registrations under the Act of 1920 apparently were issued on August 24, 1920.

Registrations under the Act of 1881 range from Number 8,191, issued on May 17, 1881, through Number 44,357, issued on March 28, 1905.  No registrations were issued between March 28, 1905, and July 4, 1905.  On July 4, 1905, the first registration under the Act of 1905 was issued as Number 44,358.

The Act of 1946 provides that the certificates of registration for marks registered on the Supplemental Register shall be conspicuously different from certificates issued for marks registered on the Principal Register.  Trademark Act §25, 15 U.S.C. §1093.  Certificates issued under the 1946 Act are clearly marked either "Principal Register" or "Supplemental Register," with the date the application was filed.