
From the U.S. Code Online via GPO Access
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[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 2002]
[CITE: 15USC1065]

 
                      TITLE 15--COMMERCE AND TRADE
 
                         CHAPTER 22--TRADEMARKS
 
                  SUBCHAPTER I--THE PRINCIPAL REGISTER
 
Sec. 1065. Incontestability of right to use mark under certain 
        conditions
        
    Except on a ground for which application to cancel may be filed at 
any time under paragraphs (3) and (5) of section 1064 of this title, and 
except to the extent, if any, to which the use of a mark registered on 
the principal register infringes a valid right acquired under the law of 
any State or Territory by use of a mark or trade name continuing from a 
date prior to the date of registration under this chapter of such 
registered mark, the right of the registrant to use such registered mark 
in commerce for the goods or services on or in connection with which 
such registered mark has been in continuous use for five consecutive 
years subsequent to the date of such registration and is still in use in 
commerce, shall be incontestable: Provided, That--
        (1) there has been no final decision adverse to registrant's 
    claim of ownership of such mark for such goods or services, or to 
    registrant's right to register the same or to keep the same on the 
    register; and
        (2) there is no proceeding involving said rights pending in the 
    Patent and Trademark Office or in a court and not finally disposed 
    of; and
        (3) an affidavit is filed with the Director within one year 
    after the expiration of any such five-year period setting forth 
    those goods or services stated in the registration on or in 
    connection with which such mark has been in continuous use for such 
    five consecutive years and is still in use in commerce, and other 
    matters specified in paragraphs (1) and (2) of this section; and
        (4) no incontestable right shall be acquired in a mark which is 
    the generic name for the goods or services or a portion thereof, for 
    which it is registered.

    Subject to the conditions above specified in this section, the 
incontestable right with reference to a mark registered under this 
chapter shall apply to a mark registered under the Act of March 3, 1881, 
or the Act of February 20, 1905, upon the filing of the required 
affidavit with the Director within one year after the expiration of any 
period of five consecutive years after the date of publication of a mark 
under the provisions of subsection (c) of section 1062 of this title.
    The Director shall notify any registrant who files the above-
prescribed affidavit of the filing thereof.

(July 5, 1946, ch. 540, title I, Sec. 15, 60 Stat. 433; Pub. L. 87-772, 
Sec. 10, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93-596, Sec. 1, Jan. 2, 
1975, 88 Stat. 1949; Pub. L. 97-247, Sec. 10, Aug. 27, 1982, 96 Stat. 
320; Pub. L. 100-667, title I, Sec. 116, Nov. 16, 1988, 102 Stat. 3941; 
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec. 4732(b)(1)(B)], 
Nov. 29, 1999, 113 Stat. 1536, 1501A-583.)

                       References in Text

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


                               Amendments

    1999--Pub. L. 106-113 substituted ``Director'' for ``Commissioner'' 
in par. (3) and in two places in concluding provisions.
    1988--Pub. L. 100-667, in introductory provisions, substituted 
``paragraphs (3) and (5)'' for ``subsections (c) and (e)'', in par. (3) 
``paragraphs'' for ``subsections'', and in par. (4) ``the generic name 
for the goods or services or a portion thereof, for which it is 
registered'' for ``the common descriptive name of any article or 
substance, patented or otherwise''.
    1982--Pub. L. 97-247 substituted ``registration'' for ``the 
publication'' in provision preceding par. (1).
    1975--Par. (2). Pub. L. 93-596 substituted ``Patent and Trademark 
Office'' for ``Patent Office''.
    1962--Pub. L. 87-772 substituted ``(c) and (e) of section 1064'' for 
``(c) and (d) of section 1064'' in provision preceding par. (1), and 
struck out ``or trade name'' after ``in a mark'' in par. (4).


                    Effective Date of 1999 Amendment

    Amendment by Pub. L. 106-113 effective 4 months after Nov. 29, 1999, 
see section 1000(a)(9) [title IV, Sec. 4731] of Pub. L. 106-113, set out 
as a note under section 1 of Title 35, Patents.


                    Effective Date of 1988 Amendment

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


                    Effective Date of 1982 Amendment

    Amendment by Pub. L. 97-247 effective six months after Aug. 27, 
1982, see section 17(c) of Pub. L. 97-247, set out as a note under 
section 294 of Title 35, Patents.


                    Effective Date of 1975 Amendment

    Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of 
Pub. L. 93-596, set out as a note under section 1111 of this title.


                  Repeal and Effect on Existing Rights

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

                          Transfer of Functions

    For transfer of functions of other officers, employees, and agencies 
of Department of Commerce, with certain exceptions, to Secretary of 
Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, 
Secs. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in 
the Appendix to Title 5, Government Organization and Employees.

                  Section Referred to in Other Sections

    This section is referred to in sections 1094, 1115 of this title.
