Why You Should File Declaration of Incontestability for Your Trademark

Why You Should File Declaration of Incontestability for Your Trademark

Why You Should File Declaration of Incontestability for Your Trademark

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Trademark law provides legal protection to company brands.  However, there are different levels of protection depending on whether the trademark is registered and how it is used and for how long.  Every business should try to meet the requirements for trademark incontestability status because it offers the most advantages in the event of a trademark dispute.

What is an incontestable trademark?

Business owners can, but are not required to, register their trademarks.  However, federal registration with the U.S. Patent and Trademark Office (USPTO) provides many additional benefits, including putting others on notice of the company’s mark so they do not use a similar one and allowing owners to sue infringers in federal court and obtain certain monetary damages.  If a business continues to use its federally registered mark in commerce for a period of five years after it has been registered, the business may also be permitted to file for “incontestability” status of the mark.  An incontestable trademark is conclusive evidence that the trademark registration is valid, and the registrant owns it.

How do you get incontestable status?

After a trademark is registered on the Principal Register, the trademark owner must continuously use the mark for the listed goods or services in commerce for five consecutive years.  Within one year after the expiration of the five-year period, the owner then must file a Declaration of Incontestability under Section 15 of the Lanham Act with the USPTO.  In the affidavit, the owner must affirm that the mark has been continuously used for five years and that there are no decisions adverse to the owner’s claim of ownership or pending challenges to the trademark owner’s rights in a court or with the USPTO.

Why do you want incontestable status?

Incontestable status provides significant advantages in the event of a trademark dispute.  As noted above, the owner benefits from the conclusive evidence that the trademark registration is valid, and the owner listed on the registration owns such trademark, along with the exclusive right to use the mark for the listed goods or services.  This limits the ability of an infringer to claim that the trademark is invalid.  Additionally, incontestability provides trademark registrations immunity against the challenges of distinctiveness or descriptiveness.  However, trademarks can still be challenged on other grounds.

When can someone challenge my trademark if it is incontestable?

Owners may still face legal challenges to their trademarks for various reasons.  The most common grounds include:

  1. The registration or incontestable status was obtained fraudulently;
  2. The mark has been abandoned by the owner, typically for at least three years;
  3. The mark has become the generic name for the associated goods or services or a portion thereof;
  4. The mark is misrepresentative of the source of the services or goods it represents;
  5. The mark is or has been used to violate antitrust laws; and
  6. That equitable principles, including laches, estoppel and acquiescence, are applicable.

A challenge to an incontestable status is known as a cancellation proceeding and it is held before the USPTO Trademark Trial and Appeal Board.

Conclusion

To better maximize the legal trademark protections, owners must register their trademarks with the USPTO, use such marks with the goods or services covered in the registration continuously in commerce for five years, and then file the Declaration of Incontestability.

Photo by Kelly Sikkema on Unsplash

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This Blog is made available by Romano Law PLLC for general informational and educational purposes only, not to provide specific legal advice. By using this Blog you understand that there is no attorney client relationship between you and Romano Law PLLC or any individual contributor. You should consult a licensed professional attorney for individual advice regarding your own situation.

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