15 U.S.C. § 1115 | Registration on principal register as evidence of exclusive right to use mark; defenses

(a)

Evidentiary value; defenses

March 3, 1881February 20, 1905Any registration issued under the Act of , or the Act of , or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b), which might have been asserted if such mark had not been registered.

(b)

Incontestability; defenses

section 1065 of this title section 1065 of this title section 1059 of this title section 1114 of this titleTo the extent that the right to use the registered mark has become incontestable under , the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of , or in the renewal application filed under the provisions of if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in , and shall be subject to the following defenses or defects:

(1)

That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2)

That the mark has been abandoned by the registrant; or

(3)

That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or

(4)

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or

(5)

section 1057(c) of this title section 1062 of this titleProvided, however That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to , (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of : , That this defense or defect shall apply only for the area in which such continuous prior use is proved; or

(6)

section 1062 of this titleProvided, however That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of of the registered mark of the registrant, and not abandoned: , That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or

(7)

That the mark has been or is being used to violate the antitrust laws of the United States; or

(8)

That the mark is functional; or

(9)

That equitable principles, including laches, estoppel, and acquiescence, are applicable.

July 5, 1946, ch. 540 60 Stat. 438 Pub. L. 87–772, § 18Oct. 9, 196276 Stat. 774 Pub. L. 100–667, title I, § 128(a)Nov. 16, 1988102 Stat. 3944 Pub. L. 105–330, title II, § 201(a)(9)Oct. 30, 1998112 Stat. 3070 Pub. L. 107–273, div. C, title III, § 13207(b)(7)Nov. 2, 2002116 Stat. 1908(, title VI, § 33, ; , , ; , (b), , ; , , ; , , .)

Editorial Notes

References in Text

March 3, 1881February 20, 1905Mar. 3, 1881, ch. 138 21 Stat. 502 Feb. 20, 1905, ch. 592 33 Stat. 724 act July 5, 1946, ch. 540, § 46(a)60 Stat. 444Feb. 20, 1905Acts , and , referred to in subsec. (a), are acts , and , , which were repealed insofar as inconsistent with this chapter by , . Act , was classified to sections 81 to 109 of this title.

Nov. 16, 1988section 136 of Pub. L. 100–667 section 1051 of this titleThe effective date of the Trademark Law Revision Act of 1988, referred to in subsec. (b)(5), is one year after . See , set out as an Effective Date of 1988 Amendment note under .

Prior Provisions

Act Feb. 20, 1905, ch. 592 33 Stat. 728, §§ 16, 21, , 729.

Amendments

Pub. L. 107–2732002—Subsec. (b)(8). realigned margins.

Pub. L. 105–3301998—Subsec. (b)(8), (9). added par. (8) and redesignated former par. (8) as (9).

Pub. L. 100–667, § 128(a)1988—Subsec. (a). , inserted “the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the” after “facie evidence of”, inserted “or in connection with” after “in commerce on”, substituted “another person” for “an opposing party”, and inserted “, including those set forth in subsection (b),” after “or defect”.

Pub. L. 100–667, § 128(b)(1)section 1065 of this titleSubsec. (b). , amended introductory provisions generally. Prior to amendment, introductory provisions read as follows: “If the right to use the registered mark has become incontestable under , the registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the affidavit filed under the provisions of said section 1065 subject to any conditions or limitations stated therein except when one of the following defenses or defects is established:”.

Pub. L. 100–667, § 128(b)(2)Subsec. (b)(3). , inserted “on or” after “goods or services”.

Pub. L. 100–667, § 128(b)(3)Subsec. (b)(4). , struck out “trade or service” after “than as a” and “to users” after “only to describe”.

Pub. L. 100–667, § 128(b)(4)section 1057(c) of this titleSubsec. (b)(5). , substituted “(A) the date of constructive use of the mark established pursuant to , (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C)” for “registration of the mark under this chapter or”.

Pub. L. 100–667, § 128(b)(5)Subsec. (b)(8). , (6), added par. (8).

Pub. L. 87–7721962—Subsec. (a). substituted “registration subject to” for “certificate subject to”, and struck out “certificate of” before “registration issued”.

Pub. L. 87–772 section 1062 of this title section 1062 of this titleSubsec. (b). substituted “registration shall” for “certificate shall”, and “affidavit filed under the provisions of said section 1065” for “certificate” in text preceding par. (1), substituted “registrant or a person in privity with the registrant,” for “assignee”, and struck out “has been assigned and” after “registered mark” in par. (3), substituted “registration of the mark under this chapter or” for “the”, and struck out “(a) or” before “(c) of section 1062” in par. (5), inserted “registration under this chapter”, substituted “such registration or such” for “the date of”, and struck out “(a) or” before “(c) of section 1062”, “only where the said mark has been published pursuant to subsections (c) of and shall apply” after “defect shall apply”, and “under subsection (a) or (c) of ” after “registrant’s mark”, in par. (6).

Statutory Notes and Related Subsidiaries

Effective Date of 1998 Amendment

Pub. L. 105–330Oct. 30, 1998section 201(b) of Pub. L. 105–330 section 1051 of this titleAmendment by effective , and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see , set out as a note under .

Effective Date of 1988 Amendment

Pub. L. 100–667Nov. 16, 1988section 136 of Pub. L. 100–667 section 1051 of this titleAmendment by effective one year after , see , set out as a note under .

Repeal and Effect on Existing Rights

section 1051 of this titleRepeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, see notes set out under .