15 U.S.C. § 1065 — Incontestability of right to use mark

Page 1294 TITLE 15—COMMERCE AND TRADE § 1065 any final judgment entered prior to the date of enact- ment of this title [Nov. 8, 1984].’’ REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. RESTRICTION ON USE OF FUNDS TO CANCEL REGISTRATION OF TRADEMARKS For provisions restricting the use of funds authorized to be appropriated to carry out section 41 et seq. of this title for fiscal year 1980, 1981, or 1982, for the purpose of taking any action under this section with respect to the cancellation of the registration of any mark on the ground that such mark has become the common de- scriptive name of an article or substance, see section 18 of Pub. L. 96–252, set out as a note under section 57c of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of Federal Trade Commis- sion, with certain exceptions, to Chairman of such Commission, see Reorg. Plan No. 8 of 1950, § 1, eff. May 24, 1950, 15 F.R. 3175, 64 Stat. 1264, set out under section 41 of this title. § 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 para- graphs (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 reg- ister 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 com- merce, 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 own- er’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 fi- nally 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 mat- ters 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 ref- erence 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 provi- sions 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 Notes 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, § 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 introduc- tory provisions. Par. (1). Pub. L. 111–146, § 3(b)(2), amended par. (1) gen- erally. Prior to amendment, par. (1) read as follows: ‘‘there has been no final decision adverse to reg- istrant’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 con- cluding provisions. 1988—Pub. L. 100–667, in introductory provisions, sub- stituted ‘‘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 serv- ices or a portion thereof, for which it is registered’’ for ‘‘the common descriptive name of any article or sub- stance, 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 pre- ceding 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 ex- piration 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. Page 1295 TITLE 15—COMMERCE AND TRADE § 1066a 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 chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 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. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1066. Interference; declaration by Director Upon petition showing extraordinary cir- cumstances, the Director may declare that an interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive. No interference shall be declared be- tween an application and the registration of a mark the right to the use of which has become incontestable. (July 5, 1946, ch. 540, title I, § 16, 60 Stat. 434; Pub. L. 87–772, § 11, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97–247, § 11, Aug. 27, 1982, 96 Stat. 321; Pub. L. 100–667, title I, § 117, 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.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726. AMENDMENTS 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’. 1988—Pub. L. 100–667 substituted ‘‘used on or in con- nection with the goods or services’’ for ‘‘applied to the goods or when used in connection with the services’’. 1982—Pub. L. 97–247 substituted ‘‘Upon petition show- ing extraordinary circumstances, the Commissioner may declare that an interference exists when applica- tion is made for the registration of a mark which so re- sembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when applied to the goods or when used in connection with the services of the ap- plicant to cause confusion or mistake or to deceive’’ for ‘‘Whenever application is made for the registration of a mark which so resembles a mark previously reg- istered by another, or for the registration of which an- other has previously made application, as to be likely when applied to the goods or when used in connection with the services of the applicant to cause confusion or mistake or to deceive, the Commissioner may declare that an interference exists’’. 1962—Pub. L. 87–772 struck out ‘‘purchasers’’ after ‘‘or to deceive’’. Statutory Notes and Related Subsidiaries 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. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 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. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1066a. Ex parte expungement (a) Petition Notwithstanding sections 1057(b) and 1072 of this title, and subsections (a) and (b) of section 1115 of this title, any person may file a petition to expunge a registration of a mark on the basis that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. (b) Contents of petition A petition filed under subsection (a), together with any supporting documents, shall— (1) identify the registration that is the sub- ject of the petition; (2) identify each good or service recited in the registration for which it is alleged that the mark has never been used in commerce; (3) include a verified statement that sets forth— (A) the elements of the reasonable inves- tigation the petitioner conducted to deter-