§ 1065. — Incontestability of right to use mark under certain conditions.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 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, 1141m of this
title.
