15 U.S.C. § 1115 — Registration on principal register as evi-

Page 1312 TITLE 15—COMMERCE AND TRADE § 1115 AMENDMENTS 2005—Par. (3). Pub. L. 109–9 added par. (3). 1999—Par. (1). Pub. L. 106–43, in undesignated par., in- serted after ‘‘includes’’ in first sentence ‘‘the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and’’ and, in second sentence, substituted ‘‘The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any’’ for ‘‘Any’’. Par. (2). Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(1)], in introductory provisions, substituted ‘‘under section 1125(a) or (d) of this title’’ for ‘‘under section 1125(a) of this title’’. Par. (2)(D), (E). Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(2)], added subpar. (D) and redesignated former subpar. (D) as (E). 1998—Par. (1). Pub. L. 105–330 substituted ‘‘As used in this paragraph’’ for ‘‘As used in this subsection’’ in last paragraph. 1992—Par. (1). Pub. L. 102–542 inserted at end ‘‘As used in this subsection, the term ‘any person’ includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovern- mental entity.’’ 1988—Par. (2). Pub. L. 100–667 amended par. (2) gen- erally. Prior to amendment, par. (2) read as follows: ‘‘Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed shall be limited as follows: (a) Where an infringer in en- gaged solely in the business of printing the mark for others and establishes that he was an innocent in- fringer the owner of the right infringed shall be enti- tled as against such infringer only to an injunction against future printing; (b) where the infringement complained of is contained in or is part of paid adver- tising matter in a newspaper, magazine, or other simi- lar periodical the remedies of the owner of the right in- fringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical shall be confined to an injunction against the presentation of such advertising matter in future issues of such news- papers, magazines, or other similar periodical: Pro- vided, That these limitations shall apply only to inno- cent infringers; (c) injunction relief shall not be avail- able to the owner of the right infringed in respect of an issue of a newspaper, magazine, or other similar peri- odical containing infringing matter when restraining the dissemination of such infringing matter in any par- ticular issue of such periodical would delay the deliv- ery of such issue after the regular time therefor, and such delay would be due to the method by which publi- cation and distribution of such periodical is custom- arily conducted in accordance with sound business practice, and not to any method or device adopted for the evasion of this section or to prevent or delay the issuance of an injunction or restraining order with re- spect to such infringing matter.’’ 1962—Par. (1). Pub. L. 87–772 amended provisions gen- erally, and among other changes, inserted ‘‘distribu- tion’’, and struck out ‘‘purchasers as to the source of origin of such goods or services’’ after ‘‘or to deceive’’ in subsec. (a), inserted provisions regarding the likeli- hood of such use causing confusion, mistake, or decep- tion, in subsec. (b), and struck out the limitation on re- covery under subsec. (b) to acts committed with knowl- edge that such acts would deceive purchasers. Par. (2)(b). Pub. L. 87–772 substituted ‘‘publisher’’ for ‘‘published’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 applicable to all do- main names registered before, on, or after Nov. 29, 1999, see section 1000(a)(9) [title III, § 3010] of Pub. L. 106–113, set out as a note under section 1117 of this title. EFFECTIVE DATE OF 1998 AMENDMENT Amendment by Pub. L. 105–330 effective Oct. 30, 1998, and applicable only to any civil action filed or pro- ceeding before the United States Patent and Trade- mark 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 1992 AMENDMENT Pub. L. 102–542, § 4, Oct. 27, 1992, 106 Stat. 3568, pro- vided that: ‘‘The amendments made by this Act [enact- ing section 1122 of this title and amending this section and sections 1125 and 1127 of this title] shall take effect with respect to violations that occur on or after the date of the enactment of this Act [Oct. 27, 1992].’’ 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 chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. § 1115. Registration on principal register as evi- dence of exclusive right to use mark; de- fenses (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 pre- clude 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; defenses To the extent that the right to use the reg- istered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the reg- istered 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 provi- sions of section 1059 of this title if the goods or Page 1313 TITLE 15—COMMERCE AND TRADE § 1115 services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or re- newal 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 incontest- able right to use the mark was obtained fraud- ulently; 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 serv- ices 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, other- wise 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 with- out 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 Trade- mark Law Revision Act of 1988, or (C) publica- tion of the registered mark under subsection (c) of section 1062 of this title: Provided, how- ever, 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 publica- tion 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 reg- istrant’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 lach- es, 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 Notes REFERENCES 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 re- pealed 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 reg- istration of the mark, of the registrant’s ownership of the mark, and of the’’ after ‘‘facie evidence of’’, in- serted ‘‘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 intro- ductory provisions generally. Prior to amendment, in- troductory 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 con- nection with the goods or services specified in the affi- davit filed under the provisions of said section 1065 sub- ject to any conditions or limitations stated therein ex- cept when one of the following defenses or defects is es- tablished:’’. 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 estab- lished pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the appli- cation 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 ‘‘registra- tion 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 per- son 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). Page 1314 TITLE 15—COMMERCE AND TRADE § 1116 1 So in original. Probably should be ‘‘manufacturer’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1998 AMENDMENT Amendment by Pub. L. 105–330 effective Oct. 30, 1998, and applicable only to any civil action filed or pro- ceeding before the United States Patent and Trade- mark 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 chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. § 1116. Injunctive relief (a) Jurisdiction; service The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title. A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irrep- arable harm upon a finding of a violation identi- fied in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a viola- tion identified in this subsection in the case of a motion for a preliminary injunction or tem- porary restraining order. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the de- fendant of such injunction, or such extended pe- riod as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction grant- ed upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such in- junction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose ju- risdiction the defendant may be found. (b) Transfer of certified copies of court papers The said courts shall have jurisdiction to en- force said injunction, as provided in this chap- ter, as fully as if the injunction had been grant- ed by the district court in which it is sought to be enforced. The clerk of the court or judge granting the injunction shall, when required to do so by the court before which application to enforce said injunction is made, transfer with- out delay to said court a certified copy of all pa- pers on file in his office upon which said injunc- tion was granted. (c) Notice to Director It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark reg- istered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the desig- nating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall give like notice thereof to the Director, and within one month after the judgment is entered or an appeal is taken the clerk of the court shall give notice thereof to the Director, and it shall be the duty of the Director on receipt of such no- tice forthwith to endorse the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the con- tents of said file wrapper. (d) Civil actions arising out of use of counterfeit marks (1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 220506 of title 36 with respect to a violation that consists of using a counterfeit mark in connec- tion with the sale, offering for sale, or distribu- tion of goods or services, the court may, upon ex parte application, grant an order under sub- section (a) of this section pursuant to this sub- section providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation. (B) As used in this subsection the term ‘‘coun- terfeit mark’’ means— (i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or (ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of sec- tion 220506 of title 36; but such term does not include any mark or des- ignation used on or in connection with goods or services of which the manufacture 1 or producer was, at the time of the manufacture or produc- tion in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation. (2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reason- able under the circumstances to the United States attorney for the judicial district in which such order is sought. Such attorney may partici- pate in the proceedings arising under such appli-