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September 25, 2023 | GeneralTrademark

Why You Should File Declaration of Incontestability for Your Trademark

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Author(s)
Ru Hochen

Associate Attorney

Ashley Sohn

Paralegal

Trademark law is designed to provide legal protection to a business brand.  However, the level of protection varies by whether the trademark is registered, how it is used, and how long it has been in use.  If you have been using a trademark for five consecutive years, it is advisable to consider obtaining “incontestability” status for your mark, as the status offers enhanced protection in the event of a trademark dispute.

What is an Incontestable Trademark and How Do You Obtain it?

When a trademark becomes “incontestable,” it is generally immune from most legal challenges with a few exceptions.  A trademark is eligible for incontestable status after five years of registration.  The incontestability status is obtained by filing a Declaration of Incontestability under Section 15 of the Lanham Act with the USPTO between the fifth and sixth anniversary of registration.  The trademark owner must (1) affirm that the mark has been continuously used for five years and (2) 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.

What are the Advantages of Incontestable Status?

Note that a Section 15 Declaration is not required for maintaining your ownership or rights under trademark law.  Nevertheless, making such a declaration can significantly reduce the likelihood of facing lawsuits, as it prevents third parties from challenging an incontestable trademark on specific grounds: the validity of the trademark, your ownership of the mark, and your exclusive right to use it in the designated goods and services, among others.

However, despite incontestability status, a trademark registration may still face challenges on certain grounds.  A third party can attempt to cancel an incontestable registration based on factors like abandonment (i.e., failure to continue using the mark), fraud (i.e., the trademark registration was obtained under fraudulent pretenses), misrepresentation (i.e., the mark is misrepresentative of the source of the services or goods it represents), or genericide (i.e., the mark has become generic and thus lost trademark protection).

In such cases, a cancellation proceeding is held before the USPTO Trademark Trial and Appeal Board.  It is advisable for a trademark owner to seek legal counsel to evaluate potential options and defenses against a cancellation proceeding.

Conclusion

Filing a Declaration of Incontestability for your trademark can provide better protection against trademark infringement and strengthening your rights over your trademark. It is important to consult an attorney to ensure that your trademark is adequately protected.

 

Photo by ergonofis on Unsplash
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