Title 15 — Commerce and Trade
Chapter 22 — Trademarks
§ 1065. Incontestability of right to use mark under certain conditions
Statutory text
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—
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
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
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
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 , or the Act of , 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.
Legislative history
Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.
Pub. L. 79–540 · 60 Stat. 427
Enacted · 15 U.S.C. § 1065
July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433
Source evidence
Code source credit
July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433Pub. L. 87–772 § 10 · 76 Stat. 769
Substituted · 15 U.S.C. § 1065
Pub. L. 87–772 substituted “(c) and (e) of section 1064” for “(c) and (d) of section 1064” in provision preceding par. (1)
Struck · 15 U.S.C. § 1065
Pub. L. 87–772 struck out “or trade name” after “in a mark” in par. (4)
Source evidence
Code amendment note
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).Enacted provision · exact public law section
Sec. 10. Section 15 is amended by striking “(c) and (d)” in the first 15 USC 1065. paragraph and inserting in lieu thereof the following: “(c) and (e)”. Section 15 is amended by striking “or trade name” from paragraph numbered (4).Pub. L. 93–596 § 1 · 88 Stat. 1949
Substituted · 15 U.S.C. § 1065(2)
Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”
Source evidence
Code amendment note
Par. (2). Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.Enacted provision · exact public law section
Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.Pub. L. 97–247 § 10 · 96 Stat. 317
Substituted · 15 U.S.C. § 1065
Pub. L. 97–247 substituted “registration” for “the publication” in provision preceding par. (1)
Source evidence
Code amendment note
Pub. L. 97–247 substituted “registration” for “the publication” in provision preceding par. (1).Enacted provision · exact public law section
Sec. 10. Section 15 of the Trademark Act of 1946, as amended (15 U.S.C. 1065), is amended by deleting the phrase “the publication” and inserting in its place the word “registration”.Trademark Law Revision Act of 1988
Pub. L. 100–667 title I § 116 · 102 Stat. 3935
Substituted · 15 U.S.C. § 1065
Pub. L. 100–667, in introductory provisions, substituted “paragraphs (3) and (5)” for “subsections (c) and (e)”
Substituted · 15 U.S.C. § 1065
Pub. L. 100–667, in introductory provisions, substituted “paragraphs” for “subsections”
Substituted · 15 U.S.C. § 1065
Pub. L. 100–667, in introductory provisions, substituted “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”
Source evidence
Code amendment note
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”.Enacted provision · exact public law section
SEC. 116. INCONTESTABILITY OF RIGHT TO USE MARK. Section 15 (15 U.S.C. 1065) is amended— (1) by striking out “subsections (c) and (e)” and inserting in lieu thereof “paragraphs (3) and (5)”; (2) in paragraph (3) by striking out “subsections (1) and (2) hereof” and inserting in lieu thereof “paragraphs (1) and (2) of this section”; and (3) in paragraph (4) by striking out “the common descriptive name of any article or substance, patented or otherwise” and inserting in lieu thereof “the generic name for the goods or services or a portion thereof, for which it is registered”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4732)(b)(1)(B) · 113 Stat. 1501
Substituted · 15 U.S.C. § 1065
Pub. L. 106–113 substituted “Director” for “Commissioner” in par. (3) and in two places in concluding provisions
Source evidence
Code amendment note
Pub. L. 106–113 substituted “Director” for “Commissioner” in par. (3) and in two places in concluding provisions.Trademark Technical and Conforming Amendment Act of 2010
Pub. L. 111–146 § 3(b)(1) · 124 Stat. 66
Substituted · 15 U.S.C. § 1065
Pub. L. 111–146, § 3(b)(1), substituted “right of the owner” for “right of the registrant” in introductory provisions
Source evidence
Code amendment note
Pub. L. 111–146, § 3(b)(1), substituted “right of the owner” for “right of the registrant” in introductory provisions.Enacted provision · exact public law section
(1) by striking “right of the registrant” and inserting “right of the owner”;Trademark Technical and Conforming Amendment Act of 2010
Pub. L. 111–146 § 3(b)(2) · 124 Stat. 66
Amended · 15 U.S.C. § 1065(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”
Source evidence
Code amendment note
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”.Enacted provision · exact public law section
(2) by amending paragraph (1) to read as follows: “(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” ; andTrademark Technical and Conforming Amendment Act of 2010
Pub. L. 111–146 § 3(b)(3) · 124 Stat. 66
Inserted · 15 U.S.C. § 1065(2)
Pub. L. 111–146, § 3(b)(3), inserted “United States” before “Patent and Trademark Office”
Source evidence
Code amendment note
Par. (2). Pub. L. 111–146, § 3(b)(3), inserted “United States” before “Patent and Trademark Office”.Enacted provision · exact public law section
(3) in paragraph (2), by inserting “United States” before “Patent and Trademark Office”.Department of Homeland Security Appropriations Act, 2021
Pub. L. 116–260 div. Q title II § 225(e)(1) · 134 Stat. 1182
Substituted · 15 U.S.C. § 1065
Pub. L. 116–260 substituted “paragraphs (3), (5), and (6)” for “paragraphs (3) and (5)” in introductory provisions
Source evidence
Code amendment note
Pub. L. 116–260 substituted “paragraphs (3), (5), and (6)” for “paragraphs (3) and (5)” in introductory provisions.Enacted provision · exact public law section
Sec. 225. Without regard to the limitation as to time and condition of section 503(d) of this Act, after June 30, up to $10,000,000 may be reprogrammed to or from the Military Pay and Allowances funding category within “Coast Guard—Operations and Support” in accordance with subsection (a) of section 503 of this Act.Effective date note
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.
11 of 13 references resolved to an enrolled provision · 2 partial
Editorial Notes
References in Text
Acts and , 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 , was classified to sections 81 to 109 of this title.
Amendments1962–2020 · 7 rounds
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 Subsidiaries
Effective Date of 2020 Amendment
Amendment by Pub. L. 116–260 effective upon the expiration of the 1-year period beginning on , 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 , 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 , 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 , 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 , 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 Documents
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, §§ 1, 2, eff. , 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.
Credits
1946–2020 · 8 acts
- 1946July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433
- 1962Pub. L. 87–772, § 10, , 76 Stat. 771
- 1975Pub. L. 93–596, § 1, , 88 Stat. 1949
- 1982Pub. L. 97–247, § 10, , 96 Stat. 320
- 1988Pub. L. 100–667, title I, § 116, , 102 Stat. 3941
- 1999Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], , 113 Stat. 1536, 1501A–583
- 2010Pub. L. 111–146, § 3(b), , 124 Stat. 67
- 2020Pub. L. 116–260, div. Q, title II, § 225(e)(1), , 134 Stat. 2207.
Show as published
(July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433; Pub. L. 87–772, § 10, , 76 Stat. 771; Pub. L. 93–596, § 1, , 88 Stat. 1949; Pub. L. 97–247, § 10, , 96 Stat. 320; Pub. L. 100–667, title I, § 116, , 102 Stat. 3941; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], , 113 Stat. 1536, 1501A–583; Pub. L. 111–146, § 3(b), , 124 Stat. 67; Pub. L. 116–260, div. Q, title II, § 225(e)(1), , 134 Stat. 2207.)