§ 1115. Registration on principal register as evidence of exclusive right to use mark; defenses

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.

1. 1946

   Pub. L. 79–540 · 60 Stat. 427

   Enacted · 15 U.S.C. § 1115

   July 5, 1946, ch. 540, title VI, § 33, 60 Stat. 438

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title VI, § 33, 60 Stat. 438

2. 1962

   Pub. L. 87–772 § 18 · 76 Stat. 769

   1. Substituted · 15 U.S.C. § 1115(a)

      Pub. L. 87–772 substituted “registration subject to” for “certificate subject to”

   2. Struck · 15 U.S.C. § 1115(a)

      Pub. L. 87–772 struck out “certificate of” before “registration issued”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 87–772 substituted “registration subject to” for “certificate subject to”, and struck out “certificate of” before “registration issued”.

   Enacted provision · exact public law section
   Sec. 18. Subsection (a) of section 33 is amended by striking therefrom the words “certificate of” in the first line, and changing “certificate”, second appearance, to “registration”. Subsection (b) of section 33 is amended by striking the word “certificate”, first appearance, and inserting the word “registration” in lieu thereof and by striking therefrom the word “certificate”, second appearance, and inserting in lieu thereof “affidavit filed under the Ante, p. 771. provisions of said section 15”. Paragraph (3) of subsection (b) of section 33 is amended by striking therefrom the words “has been assigned and”; and by striking therefrom the word “assignee” and inserting in lieu thereof the words “registrant or a person in privity with the registrant”. Paragraph (5) of subsection (b) of section 33 is amended by striking therefrom the word “the” following the words “date prior to” and inserting in lieu thereof the words “registration of the mark under this Act or”; by striking therefrom “(a) or” following the word “subsection”; and by changing the period to “; or”. Paragraph (6) of subsection (b) of section 33 is amended by inserting the words “registration under this Act or” after the word “the”, second appearance; by striking therefrom “(a) or” following the word “subsection”, first appearance; by striking from the proviso the words “only where the said mark has been published pursuant to subsection Ante, p. 771. (c) of section 12 and shall apply”; by striking the words “the date of” following the words “prior to” in said proviso and inserting in lieu thereof “such registration or such”; by striking therefrom the words “under subsection (a) or (c) of section 12 of this Act”; and by changing the period to “; or”.

3. 1962

   Pub. L. 87–772 § 18 · 76 Stat. 769

   1. Substituted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 substituted “registration shall” for “certificate shall” in text preceding par. (1)

   2. Substituted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 substituted “affidavit filed under the provisions of said section 1065” for “certificate” in text preceding par. (1)

   3. Substituted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 substituted “registrant or a person in privity with the registrant,” for “assignee”

   4. Struck · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 struck out “has been assigned and” after “registered mark” in par. (3)

   5. Substituted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 substituted “registration of the mark under this chapter or” for “the”

   6. Struck · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 struck out “(a) or” before “(c) of section 1062” in par. (5)

   7. Inserted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 inserted “registration under this chapter”

   8. Substituted · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 substituted “such registration or such” for “the date of”

   9. Struck · 15 U.S.C. § 1115(b)

      Pub. L. 87–772 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)

   Source evidence

   Code amendment note
   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).

   Enacted provision · exact public law section
   Sec. 18. Subsection (a) of section 33 is amended by striking therefrom the words “certificate of” in the first line, and changing “certificate”, second appearance, to “registration”. Subsection (b) of section 33 is amended by striking the word “certificate”, first appearance, and inserting the word “registration” in lieu thereof and by striking therefrom the word “certificate”, second appearance, and inserting in lieu thereof “affidavit filed under the Ante, p. 771. provisions of said section 15”. Paragraph (3) of subsection (b) of section 33 is amended by striking therefrom the words “has been assigned and”; and by striking therefrom the word “assignee” and inserting in lieu thereof the words “registrant or a person in privity with the registrant”. Paragraph (5) of subsection (b) of section 33 is amended by striking therefrom the word “the” following the words “date prior to” and inserting in lieu thereof the words “registration of the mark under this Act or”; by striking therefrom “(a) or” following the word “subsection”; and by changing the period to “; or”. Paragraph (6) of subsection (b) of section 33 is amended by inserting the words “registration under this Act or” after the word “the”, second appearance; by striking therefrom “(a) or” following the word “subsection”, first appearance; by striking from the proviso the words “only where the said mark has been published pursuant to subsection Ante, p. 771. (c) of section 12 and shall apply”; by striking the words “the date of” following the words “prior to” in said proviso and inserting in lieu thereof “such registration or such”; by striking therefrom the words “under subsection (a) or (c) of section 12 of this Act”; and by changing the period to “; or”.

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(a) · 102 Stat. 3935

   1. Inserted · 15 U.S.C. § 1115(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”

   2. Inserted · 15 U.S.C. § 1115(a)

      Pub. L. 100–667, § 128(a), inserted “or in connection with” after “in commerce on”

   3. Substituted · 15 U.S.C. § 1115(a)

      Pub. L. 100–667, § 128(a), substituted “another person” for “an opposing party”

   4. Inserted · 15 U.S.C. § 1115(a)

      Pub. L. 100–667, § 128(a), inserted “, including those set forth in subsection (b),” after “or defect”

   Source evidence

   Code amendment note
   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”.

   Enacted provision · exact public law section
   (a) Prima Facie Evidence of Exclusive Right To Use Mark.— Section 33(a) (15 U.S.C. 1115(a)) is amended— (1) by inserting “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 “prima facie evidence of”; (2) by inserting “or in connection with” after “in commerce on”; (3) by striking out “an opposing party” and inserting in lieu thereof “another person”; and (4) by inserting “, including those set forth in subsection (b),” after “or defect”.

5. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(b)(1) · 102 Stat. 3935

   Amended · 15 U.S.C. § 1115(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:”

   Source evidence

   Code amendment note
   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:”.

   Enacted provision · exact public law section
   (1) in subsection (b) by amending the matter before paragraph (1) to read as follows: “(b) To the extent that the right to use the registered mark has become incontestable under section 15, 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 15, or in the renewal application filed under the provisions of section 9 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 32, and shall be subject to the following defenses or defects;”;

6. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(b)(2) · 102 Stat. 3935

   Inserted · 15 U.S.C. § 1115(b)(3)

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

   Source evidence

   Code amendment note
   Subsec. (b)(3). Pub. L. 100–667, § 128(b)(2), inserted “on or” after “goods or services”.

   Enacted provision · exact public law section
   (2) in paragraph (3) by inserting “on or” after “goods or services”;

7. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(b)(3) · 102 Stat. 3935

   Struck · 15 U.S.C. § 1115(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”

   Source evidence

   Code amendment note
   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”.

   Enacted provision · exact public law section
   (3) in paragraph (4)— (A) by striking out “trade or service”; and (B) by striking out “to users”;

8. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(b)(4) · 102 Stat. 3935

   Substituted · 15 U.S.C. § 1115(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”

   Source evidence

   Code amendment note
   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”.

   Enacted provision · exact public law section
   (4) in paragraph (5) by striking out “registration of the mark under this Act or” and inserting in lieu thereof “(A) the date of constructive use of the mark established pursuant to section 7(c), (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C)”;

9. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 § 128(b)(5) · 102 Stat. 3935

   Added · 15 U.S.C. § 1115(b)(8)

   Pub. L. 100–667, § 128(b)(5), (6), added par. (8)

   Source evidence

   Code amendment note
   Subsec. (b)(8). Pub. L. 100–667, § 128(b)(5), (6), added par. (8).

   Enacted provision · exact public law section
   (5) in paragraph (7) by striking out the period and inserting in lieu thereof “; or”; and

10. 1998

    Pub. L. 105–330 title II § 201(a)(9) · 112 Stat. 3064

    1. Added · 15 U.S.C. § 1115(b)(8); 15 U.S.C. § 1115(b)(9)

       Pub. L. 105–330 added par. (8)

    2. Redesignated · 15 U.S.C. § 1115(b)(8); 15 U.S.C. § 1115(b)(9)

       Pub. L. 105–330 redesignated former par. (8) as (9)

    Source evidence

    Code amendment note
    Subsec. (b)(8), (9). Pub. L. 105–330 added par. (8) and redesignated former par. (8) as (9).

    Enacted provision · exact public law section
    (9) Section 33(b) (15 U.S.C. 1115(b)) is amended— (A) by redesignating paragraph (8) as paragraph (9); and (B) by inserting after paragraph (7) the following: “(8) That the mark is functional; or”.

    Effective date note
    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.

11. 2002

    Intellectual Property and High Technology Technical Amendments Act of 2002

    Pub. L. 107–273 div. C title III § 13207(b)(7) · 116 Stat. 1758

    Changed · 15 U.S.C. § 1115(b)(8)

    Pub. L. 107–273 realigned margins

    Source evidence

    Code amendment note
    Subsec. (b)(8). Pub. L. 107–273 realigned margins.

    Enacted provision · exact public law section
    (b) Additional Technical Amendments.— The Trademark Act of 1946 is further amended as follows: (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1) is amended in the first sentence by striking “specifying the date of the applicant’s first use” and all that follows through the end of the sentence and inserting “specifying the date of the applicant’s first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce.”. (2) Section 1(e) (15 U.S.C. 1051(e)) is amended to read as follows: “(e) If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.”. (3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read as follows: “(f) If the registrant is not domiciled in the United States, the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.”. (4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read as follows: “(c) If the registrant is not domiciled in the United States the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.”. (5) Subsections (a) and (b) of section 10 (15 U.S.C. 1060(a) and (b)) are amended to read as follows: “(a) (1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing. “(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted. “(3) Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution. “(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase. “(5) The United States Patent and Trademark Office shall maintain a record of information on assignments, in such form as may be prescribed by the Director. “(b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.”. (6) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking the second comma after “numeral”. (7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by aligning the text with paragraph (7). (8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”. (9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii)) is amended by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code”. (10) Section 34(d)(11) is amended by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (11) Section 35(b) (15 U.S.C. 1117(b)) is amended— (A) by striking “section 110” and all that follows through “(36 U.S.C. 380)” and inserting “section 220506 of title 36, United States Code,”; and (B) by striking “6621 of the Internal Revenue Code of 1954” and inserting “6621(a)(2) of the Internal Revenue Code of 1986”. (12) Section 44(e) (15 U.S.C. 1126(e)) is amended by striking “a certification” and inserting “a true copy, a photocopy, a certification,”.

23 of 24 references resolved to an enrolled provision · 1 partial