After five years or more straight years of use, the owner of a registered trademark can apply to make their trademark immune from most legal attacks by filing a Declaration of Incontestability.
By Michael Kondoudis, Trademark Attorney
This is our COMPLETE guide to incontestable trademarks.
In this guide, we explore what incontestability means for a trademark, when and how to gain incontestable status, and the advantages the incontestable trademarks enjoy.
So, if you need to quickly learn about incontestable trademarks, read on – this guide is for you.
CONTENTS
I. TRADEMARKS + INCONTESABILITY
What is a Trademark?
A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.
What is a Registered Trademark?
A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO), which grants exclusive and nationwide rights to use the trademark.
How Do You Get a Registered Trademark?
You get a registered trademark by applying to the USPTO (United States Patent and Trademark Office). After registration, trademark owners may display the ® symbol to indicate it is protected by federal law.
What is an Incontestable Trademark?
An incontestable trademark is a special type of trademark that is immune from challenge in court under normal circumstances. When a mark is declared incontestable, it can only be challenged on specific, limited grounds.
What Does Incontestability Mean?
In trademarks, incontestability means immunity from most legal challenges. Incontestable trademarks can only be challenged when they are no longer in use, were obtained by lying to the USPTO (U.S. Patent and Trademark Office), or have become generic (e.g., Aspirin and Jacuzzi).
What are the Advantages of an Incontestable Trademark?
Incontestability enhances and strengthens trademark rights by making it harder to challenge them.
The primary advantage of having an incontestable trademark is its substantial legal protection against potential challenges. If someone accuses you of infringing on their mark, it’s much harder for them to prove their case if your trademark is incontestable. Incontestable trademarks are well protected against common legal attacks should any disputes arise.
Trademark incontestability solidifies your trademark rights and makes them more robust. Incontestability carries significant weight in court.
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What Does It Mean to Have an Incontestable Trademark?
Having an incontestable trademark means that many aspects of a registered trademark cannot be challenged in court. Some of the aspects of an incontestable trademark cannot be attacked:
The Validity and Registration of your mark (the trademark must be presumed to be valid and enforceable)
Your Ownership (the trademark registration must be presumed to be accurate)
Your Exclusive Rights to Use the mark for the goods and services in the registration
Incontestability also means that a registered trademark can only be challenged in three ways:
The registration was obtained through fraud
The trademark is abandoned (no longer in use)
The trademark is generic for a type or entire category of products
Thus, incontestability strengthens a registered trademark by limiting attacks against it in a dispute.
How Do You Get an Incontestable Trademark?
You file a Section 15 Declaration of Continued Use with the USPTO (U.S. Patent and Trademark Office).
To get an incontestable trademark, a trademark owner must file a Declaration of incontestability (also known as a “Section 15 Declaration”) with the U.S. Patent and Trademark Office. Also, the trademark owner must pay a fee.
When Should You Get an Incontestable Trademark?
According to most authorities, you should get an incontestable trademark as soon as your trademark is eligible. Since you can seek incontestability for your registered trademark at any time after five years of continuous use, most trademark owners seek incontestability on the “five-year” anniversaries of their trademark registrations.
II. SECTION 15 DECLARATIONS OF INCONTESTABILITY
What is a Section 15 Declaration?
A Section 15 Declaration, also known as a “Declaration of Incontestability,” is a sworn statement filed by the trademark owner and placed on the USPTO’s (U.S. Patent and Trademark Office’s) Principal Register of trademarks.
A Section 15 is a declaration filed with the U.S. Patent and Trademark Office to secure incontestable status for your registered trademark. A Section 15 declares your rights to a registered trademark to be incontestable and states that all requirements for incontestability have been met.
Section 15 Declarations can be filed online at the USPTO Website.
Do You Have To File a Section 15 Declaration of Incontestability?
No, a trademark owner is never required to file a Section 15 Declaration. Section 15 Declarations of Incontestability are not mandatory.
While not mandatory, a Section 15 Declaration provides important legal and practical advantages for your trademark. This declaration, once approved, renders your trademark incontestable and significantly strengthens it.
Section 15 Declarations: Requirements and Timing
Filing a Section 15 Declaration comes with specific requirements and timing considerations.
1. The trademark must be used in interstate commerce: For a trademark to be registered, it must be used in interstate commerce. This means that the trademark must be used in connection with the sale of goods or services that cross state lines.
2. The trademark must be registered with the USPTO: Only trademarks registered on the USPTO’s Principal Register are eligible for incontestable status.
3. The trademark must be distinctive: For a trademark to be registered, it must be distinctive (i.e., not generic). This means that the trademark must be capable of distinguishing the goods or services of one company from those of another company.
4. The trademark must have been in continuous use for five years: For a trademark to be incontestable, it must have been in continuous use for five years. This means that the owner of the trademark must have been using the mark continuously during that time period.
5. There must be no evidence that the trademark is generic or has been abandoned: For a trademark to be incontestable, there must be no evidence that the mark is generic or has been abandoned. A mark is generic if it refers to a class of goods or services. A mark is abandoned if its use has been discontinued with no intention of resuming such use in the future.
6. There must be no challenges to the validity of the registration: For a mark to be incontestable, there can be no adverse decisions or pending proceedings challenging the validity of the registration in a court or other judicial body.
7. The trademark owner must file a Section 15 Declaration of Incontestability with the USPTO: Incontestability is not automatic.
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What Is The Cost to Get an Incontestable Trademark?
Currently, the U.S. Patent and Trademark Office charges a fee of 200 USD per class of goods or services.
III. WHY INCONTESTABILITY MATTERS
Should I Get an Incontestable Trademark?
Yes. Most authorities agree that trademark owners should seek incontestable status for their trademarks. There are significant benefits to incontestable status. Incontestable trademarks come with enhanced protections that make enforcing trademark rights easier and less expensive if there is a dispute. For example, many common legal defenses are barred by incontestability, such as challenges of descriptiveness.
If you meet the requirements to make your trademark incontestable, you will have a strong defense against any challenges to your mark.
Why Incontestable Trademarks Matter for Small Business Owners
Having an incontestable trademark as a small business owner is essential:
- Legal protection: It offers a robust defense against accusations of trademark infringement, which can be expensive and time-consuming.
- Brand reputation: An incontestable trademark maintains your brand’s reputation by preventing competitors from challenging your right to use it.
- Proof of ownership: Owning an incontestable trademark is conclusive proof of ownership, simplifying legal disputes that may arise.
IV. CONDENSED SUMMARY
After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. An incontestable mark is immune from most legal challenges except when it has become generic or abandoned for nonuse or if the registration was acquired fraudulently. To secure incontestability, a trademark owner must file a Declaration of Incontestability with the U.S. Patent and Trademark Office. Declarations of Incontestability are usually filed sometime between the fifth and sixth anniversaries of federal trademark registration.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).