15 U.S.C. § 1115

Registration on principal register as evidence of exclusive right to use mark; defenses

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(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), which might have been asserted if such mark had not been registered.

(b) Incontestability; defensesTo 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, § 33, 60 Stat. 438; Pub. L. 87–772, § 18, Oct. 9, 1962, 76 Stat. 774; Pub. L. 100–667, title I, § 128(a), (b), Nov. 16, 1988, 102 Stat. 3944; Pub. L. 105–330, title II, § 201(a)(9), Oct. 30, 1998, 112 Stat. 3070; Pub. L. 107–273, div. C, title III, § 13207(b)(7), Nov. 2, 2002, 116 Stat. 1908.)Editorial NotesReferences 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, § 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.

Prior Provisions

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

Amendments

2002—Subsec. (b)(8). Pub. L. 107–273 realigned margins.

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, § 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),” after “or defect”.

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

Subsec. (b)(4). Pub. L. 100–667, § 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, § 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, § 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).

Statutory Notes and Related SubsidiariesEffective 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.

Notes of Decisions

Cited in 1,274 cases (281 in the last 5 years), 1950–2026 · leading case: Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985).

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Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). · cites it 16× “" § 33(b), 15 U. S. C. § 1115 (b). Respondent also provides long-term airport parking services, but only has operations in Portland, Oregon.”

Lone Star Steakhouse & Saloon, Inc. Max Shayne, Inc. v. Alpha of Virginia, Inc., D/B/A Lone Star Grill, 43 F.3d 922 (4th Cir. 1995). · cites it 6× “” 15 U.S.C. § 1115 (b). A registrant’s right to use a mark may become incontestable after five years of continuous and unchallenged use, if such use has been averred to in an affidavit filed with the Patent and Trademark Office within one year after the five-year period.”

San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522 (1987). · cites it 6× “See 15 U. S. C. § 1115 (b). [5] This argument ignores the clear language of the section.”

Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010). · cites it 5× “The Lanham Act provides some affirmative defenses, see 15 U.S.C. § 1115 (b), one of which allows an accused infringer to avoid liability by showing that it has used the plaintiffs trademark “fairly,” id.”

Quicksilver, Inc. v. Kymsta, Corp., 466 F.3d 749 (9th Cir. 2006). · cites it 7× “Kymsta Introduced Evidence to Support Its Defense of Innocent Use Under 15 U.S.C. § 1115 (b)(5). To establish innocent use, Kymsta had the burden to prove that it (1) adopted the “ROXYWEAR” mark without actual or constructive knowledge of Quiksilver’s pri- or use of “QUIKSILVER…”

Diana Packman v. Chicago Tribune Co., an Illinois Corp., & Front Page News, Inc., a California Corp., 267 F.3d 628 (7th Cir. 2001). · cites it 4× “*639 15 U.S.C. § 1115 (a). Secondary meaning exists “only if most consumers have come to think of the word not as descriptive at all but as the name of the product.”

JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir. 2009). · cites it 4× “15 U.S.C. § 1115 (b)(4). Assessment of this defense thus requires analysis of whether a given use was "(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.”

Soweco, Inc. v. Shell Oil Co., Etc. & Shell Chem. Co., Etc., 617 F.2d 1178 (5th Cir. 1980). · cites it 6× “” 15 U.S.C. § 1115 (a). If, however, a registrant has used his mark in connection with the goods or services specified on his registration for five continuous years after the registration date, his mark is deemed “incontestable,” id.”

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). · cites it 4× “” HW contends, however, that even if ‘Safari’ is a valid trademark for boots, it is entitled to the defense of “fair use” within § 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115 (b)(4). That section offers such a defense even as against marks that have become incontestable when…”

Marketquest Grp., Inc. v. Bic Corp., 862 F.3d 927 (9th Cir. 2017). · cites it 4× “15 U.S.C. § 1115 (b)(4). Additionally, “the degree of customer confusion [is] a factor in evaluating fair use.”

Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96 (S.D.N.Y. 1989). · cites it 10× “CAW Has Failed to Prove Prior Use Under 15 U.S.C. § 1115 (b)(5)... .117 B. Liability of CAW for Trademark Infringement.”

Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013). · cites it 4× “See 15 U.S.C. § 1115 (b)(4); EMI Catalogue P’ship, 228 19 F.”

Show all 1,274 citing cases →

— 15 U.S.C. § 1115(5) — 1 case

A1 Garage Door Serv., L.L.C. v. West (D. Colo. 2022).

— 15 U.S.C. § 1115(a) — 2 cases

Venetianaire Corp. Of Am. v. A & P Imp. Co., 429 F.2d 1079 (2d Cir. 1970).

John C. Flood of Virginia, Inc. v. John C. Flood, Inc. (D.D.C. 2010).

— 15 U.S.C. § 1115(b) — 6 cases

Koppers Co., Inc. v. Krupp-Koppers GmbH, 517 F. Supp. 836 (W.D. Pa. 1981).

John R. Thompson Co., Doing Bus. as & Through Its Wholly Owned Subsidiaries Holloway House, Inc. v. Mrs. Lee Holloway, Sr., 366 F.2d 108 (5th Cir. 1966).

Venetianaire Corp. Of Am. v. A & P Imp. Co., 429 F.2d 1079 (2d Cir. 1970).

Bayshore Grp., Ltd. v. Bay Shore Seafood Brokers, Inc., 762 F. Supp. 404 (D. Mass. 1991).

Carl Zeiss Stiftung v. V.E.B. Carl Zeiss, Jena, 298 F. Supp. 1309 (S.D.N.Y. 1969).

— 15 U.S.C. § 1115(b)(1) — 1 case

Dubliner, Inc. v. East Coast Tavern Grp., Inc. (D. Mass. 2023).

— 15 U.S.C. § 1115(b)(4) — 4 cases

Int'l Stamp Art, Inc. v. United States Postal Serv., 456 F.3d 1270 (11th Cir. 2006).

Armstrong Cork Co. & Armstrong World Indus., Inc., Plaintiffs- Cross-Appellees v. World Carpets, Inc., Cross-Appellants, 597 F.2d 496 (5th Cir. 1979).

3lions Publ'g, Inc. v. Interactive Media Corp., 389 F. Supp. 3d 1031 (M.D. Fla. 2019).

Shabazz v. ICWUC Ctr. for Worker Health & Saf. Educ. (S.D. Ohio 2021).

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