U.S. Code » Title 15 » Chapter CHAPTER 22— TRADEMARKS › Subchapter SUBCHAPTER I— THE PRINCIPAL REGISTER

15 U.S.C. § 1065

Incontestability of right to use mark under certain conditions

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Except on a ground for which application to cancel may be filed at any time under paragraphs (3), (5), and (6) 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 owner 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 the owner’s claim of ownership of such mark for such goods or services, or to the owner’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 United States 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) hereof; 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, § 15, 60 Stat. 433; Pub. L. 87–772, § 10, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–247, § 10, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 116, Nov. 16, 1988, 102 Stat. 3941; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 111–146, § 3(b), Mar. 17, 2010, 124 Stat. 67; Pub. L. 116–260, div. Q, title II, § 225(e)(1), Dec. 27, 2020, 134 Stat. 2207.)Editorial NotesReferences 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, § 46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title.

Amendments

2020—Pub. L. 116–260 substituted “paragraphs (3), (5), and (6)” for “paragraphs (3) and (5)” in introductory provisions.

2010—Pub. L. 111–146, § 3(b)(1), substituted “right of the owner” for “right of the registrant” in introductory provisions.

Par. (1). Pub. L. 111–146, § 3(b)(2), amended par. (1) generally. Prior to amendment, par. (1) read as follows: “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”.

Par. (2). Pub. L. 111–146, § 3(b)(3), inserted “United States” before “Patent and Trademark Office”.

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).

Statutory Notes and Related SubsidiariesEffective Date of 2020 Amendment

Amendment by Pub. L. 116–260 effective upon the expiration of the 1-year period beginning on Dec. 27, 2020, and applicable to any mark registered before, on, or after that effective date, see section 225(g) of div. Q of Pub. L. 116–260, set out as a note under section 1064 of this title.

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, § 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.

Executive DocumentsTransfer 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, §§ 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.

Notes of Decisions
Cited in 741 cases (100 in the last 5 years), 1951–2026 · leading case: Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.
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Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. (1985) scotus · cites it 6× “433 , as amended, 15 U. S. C. § 1065 , the affidavit stated that the mark had been registered and in continuous use for five consecutive years, that there had been no final adverse decision to petitioner's claim of ownership or right to registration, and *192 that no proceedings…”
Nartron Corporation v. Stmicroelectronics, Inc. (2002) ca6 · cites it 5× “” In 1987, pursuant to 15 U.S.C. § 1065 , Nar-tron filed an affidavit of incontestability with the United States Patent and Trade *401 mark Office.”
Progressive Distribution Services, Inc. v. United Parcel Service, Inc. (2017) ca6 · cites it 4× “The doctrine of incontestability and its evidentiary value is outlined in both 15 U.S.C. §§ 1065 and 1115(b). And while there is no dispute that incontestable status serves as conclusive evidence of the registrant’s exclusive right to use the mark, Park ’N Fly, Inc.”
Cullman Ventures, Inc. v. Columbian Art Works, Inc. (1989) nysd · cites it 10× “This action involves claims arising under the Lanham Act, specifically, Sections 15, 32, 33 and 43, 15 U.S.C. §§ 1065 , 1114, 1115 and 1125, Sections 133, 349, 350, 350-d, 368-d of the New York General Business Law, and the common law.”
Shakespeare Company v. Silstar Corporation of America, Incorporated (1993) ca4 · cites it 6× “§ 1119 (1988)), of a trademark that has been registered more than five years, and is incontestable pursuant to 15 U.S.C. § 1065 (1988), can order cancellation on the ground that the trademark is found to be functional, even though functionality is not one of the grounds set…”
TD Bank NA v. Vernon Hill, II (2019) ca3 · cites it 2× “” 15 U.S.C. §§ 1065 , 1115(b). The Copyright Act contains no analogous provision.”
Lone Star Steakhouse & Saloon, Incorporated Max Shayne, Incorporated v. Alpha of Virginia, Incorporated, D/B/A Lone Star (1995) ca4 · cites it 3× “1,155,907, issued on May 26, 1981, for the mark “LONE STAR CAFE,” which registration is now incontestable under 15 U.S.C. § 1065 . This registration is based on a date of first use of February 2, 1977, and covers restaurant services and *926 nightclub services featuring musical…”
Soweco, Inc. v. Shell Oil Company, Etc. And Shell Chemical Company, Etc. (1980) ca5 · cites it 4× “See 15 U.S.C. § 1065 (1976). After an intervening assignment, 1 Nor-Am Agricultural Products, Inc.”
Philip Morris USA Inc. v. Castworld Products, Inc. (2003) cacd · cites it 2× “Plaintiff alleges that Defendant imported counterfeit cigarettes that infringed at least two of Plaintiffs trademarks, both of which are valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065 . Therefore, Plaintiff is entitled to recover up to $2,000,000 in statutory…”
Spiral Direct, Inc. v. Basic Sports Apparel, Inc. (2017) flmd · cites it 7× “1999) (citing 15 U.S.C. § 1065 ). In 2005, Basic fulfilled these requirements and the Basic Mark obtained "incontestable status.”
Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V. (2017) dcd · cites it 4× “Both registrations became “incontestable” pursuant to 15 U.S.C. § 1065 on Decem *103 ber 12, 2014 upon PLM’s filing of Section 15 affidavits with the USPTO.”
Wrist-Rocket Manufacturing Co., Inc., Cross-Appellee v. Saunders Archery Company, Cross-Appellant (1978) ca8 · cites it 5× “In Wrist-Rocket I this court held, inter alia, that Ellenburg’s registered trademark was incontestable under 15 U.S.C. § 1065 , that none of the defenses or defects listed in 15 U.”
Show all 741 citing cases →
— 15 U.S.C. § 1065(2) — 1 case
Clamp Manufacturing Company, Inc. v. Enco Manufacturing Company, Inc., Colex, Inc. (1989) ca9
— 15 U.S.C. § 1065(3) — 1 case
Michael Caruso & Co. v. Estefan Enterprises, Inc. (1998) flsd
— 15 U.S.C. § 1065(4) — 1 case
Woodroast Systems, Inc. v. Restaurants Unlimited, Inc. (1992) mnd
Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.