By: Sharon Urias, Esq.
Trademark Incontestability
What Is An Incontestable Trademark and What Are The Benefits?
An incontestable trademark is protected from challenge. Trademarks are a frequent target and often a subject of dispute. In addition to choosing a mark that is strong and unique, over time you can also acquire the extra benefit and advantage of incontestability for your trademark. The benefit of an incontestable trademark is that once your trademark is protected, it makes it difficult for others to contest your mark. Additionally, once a trademark is properly granted incontestable status, it can no longer be cancelled by the USPTO Trademark Trial and Appeal Board on the ground that the mark is descriptive (in general, trademarks that are simply descriptive are not entitled to trademark protection), and it can be used as a basis for injunctive relief in an infringement action. It is important to note, however, that while an incontestable trademark is shielded from many challenges, there are exceptions such as if the mark has become generic, is being misused, has been abandoned for nonuse, or if the registration was obtained fraudulently.
The Importance of Incontestability
Incontestability status for your trademark is conclusive evidence of the following:
• The validity of the registered mark
• The registration of the mark
• The owner’s ownership of the mark
• The owner’s exclusive right to use the mark with goods and services
The status of incontestability of your mark can be a beneficial tool in circumstances where you need to protect your mark from trademark infringement, or if another individual or entity attempts to sue you for trademark infringement. If you can demonstrate that your mark is incontestable, your mark will generally be presumed valid in infringement disputes.
When And How To Apply For Incontestability?
In order to apply for incontestability of your trademark, there must be five years of consecutive use from the date of registration, and in current use for commerce. If your mark meets that standard, the filing for incontestability is done through the United States Patent and Trademark Office (USPTO) under Section 15 between the fifth and sixth anniversaries of the original trademark registration (or for an additional fee, you may file within the six-month grace period following the sixth anniversary date). You may also need to file a Declaration of Continued Use under Section 8 asserting your mark is in use in commerce.
The incontestability filing requires you to supply your registration number, information about ownership of the mark, the execution of the declaration affirming contestability, your electronic signature, and fee for the filing. The current fee for filing a declaration is $200 per class of goods/services, and the filing fee for Sections 8 & 15 Combined Declaration is $300 per class.
In particular, your Section 15 Declaration must show that your mark has: (1) been in continued use in commerce for a period of five years in connection with the goods/services recited in the registration; (2) there has been no final decision adverse to your claim of ownership of the mark or right to register the mark; and (3) there is no proceeding involving claimed rights pending in the USPTO or unresolved in a court of law.
Conclusion
It is important to remember that incontestability of your trademark does not prevent challenges to your mark, but it does protect your mark from challenges. The protection can be an invaluable benefit and enforcement tool for your trademark. As the USPTO website confirms, an incontestable trademark is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services.
