
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: 15USC1115]

 
                      TITLE 15--COMMERCE AND TRADE
 
                         CHAPTER 22--TRADEMARKS
 
                   SUBCHAPTER III--GENERAL PROVISIONS
 
Sec. 1115. Registration on principal register as evidence of 
        exclusive right to use mark; defenses
        

(a) Evidentiary value; defenses

    Any registration issued under the Act of March 3, 1881, or the Act 
of February 20, 1905, 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) of this section, which might have been 
asserted if such mark had not been registered.

(b) Incontestability; defenses

    To the extent that the right to use the registered mark has become 
incontestable under section 1065 of this title, 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 section 1065 of this 
title, or in the renewal application filed under the provisions of 
section 1059 of this title 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 section 1114 of this 
title, 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) 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 section 1057(c) of this title, (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 section 1062 of this title: Provided, 
    however, That this defense or defect shall apply only for the area 
    in which such continuous prior use is proved; or
        (6) 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 section 1062 of this title of 
    the registered mark of the registrant, and not abandoned: Provided, 
    however, 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, title VI, Sec. 33, 60 Stat. 438; Pub. L. 87-772, 
Sec. 18, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100-667, title I, 
Sec. 128(a), (b), Nov. 16, 1988, 102 Stat. 3944; Pub. L. 105-330, title 
II, Sec. 201(a)(9), Oct. 30, 1998, 112 Stat. 3070.)

                       References in Text

    Acts March 3, 1881, and February 20, 1905, referred to in subsec. 
(a), 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.
    The effective date of the Trademark Law Revision Act of 1988, 
referred to in subsec. (b)(5), is one year after Nov. 16, 1988. See 
section 136 of Pub. L. 100-667, set out as an Effective Date of 1988 
Amendment note under section 1051 of this title.
    The antitrust laws, referred to in subsec. (b)(7), are classified 
generally to chapter 1 (Sec. 1 et seq.) of this title.


                            Prior Provisions

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


                               Amendments

    1998--Subsec. (b)(8), (9). Pub. L. 105-330 added par. (8) and 
redesignated former par. (8) as (9).
    1988--Subsec. (a). Pub. L. 100-667, Sec. 128(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) of this 
section,'' after ``or defect''.
    Subsec. (b). Pub. L. 100-667, Sec. 128(b)(1), amended introductory 
provisions generally. Prior to amendment, introductory provisions read 
as follows: ``If the right to use the registered mark has become 
incontestable under section 1065 of this title, 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:''.
    Subsec. (b)(3). Pub. L. 100-667, Sec. 128(b)(2), inserted ``on or'' 
after ``goods or services''.
    Subsec. (b)(4). Pub. L. 100-667, Sec. 128(b)(3), struck out ``trade 
or service'' after ``than as a'' and ``to users'' after ``only to 
describe''.
    Subsec. (b)(5). Pub. L. 100-667, Sec. 128(b)(4), substituted ``(A) 
the date of constructive use of the mark established pursuant to section 
1057(c) of this title, (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''.
    Subsec. (b)(8). Pub. L. 100-667, Sec. 128(b)(5), (6), added par. 
(8).
    1962--Subsec. (a). Pub. L. 87-772 substituted ``registration subject 
to'' for ``certificate subject to'', and struck out ``certificate of'' 
before ``registration issued''.
    Subsec. (b). Pub. L. 87-772 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 
section 1062 of this title and shall apply'' after ``defect shall 
apply'', and ``under subsection (a) or (c) of section 1062 of this 
title'' after ``registrant's mark'', in par. (6).


                    Effective Date of 1998 Amendment

    Amendment by Pub. L. 105-330 effective Oct. 30, 1998, 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 section 201(b) of Pub. L. 105-330, set 
out as a note under section 1051 of this title.


                    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.


                  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.

                  Section Referred to in Other Sections

    This section is referred to in section 1094 of this title.
