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U.S. Code as of:
01/19/04
Section 1115. Registration on principal register as evidence of exclusive right to use mark; defenses
(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) of this section, which might have been asserted if
such mark had not been registered.
(b) Incontestability; defenses
To 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.
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