Can Incontestable Trademarks Be Cancelled?

Incontestable trademarks are like super-trademarks: they are even more protected than your run-of-the-mill marks. Incontestable marks are marks that have been listed on the Federal Register and have been in use for more than five years. Once this magical five-year window has passed, the mark automatically adopts one very important and powerful protection: it is presumed that the mark is either inherently distinctive, or that it has acquired secondary meaning. In either case, it becomes much harder for another trademark owner to attack the mark’s validity once it has become incontestable.

How to Cancel an Incontestable Trademark

But an incontestable trademark is not immune from any challenge. One very common tool trademark owners can use to boot other marks from the Federal Register is what’s called a Cancellation Proceeding. This is a hearing before the Trademark Trial and Appeal Board (TTAB) that allows a petitioner to argue that a mark currently on the Federal Register should be removed for any of a variety of reasons. With incontestable trademarks, that list is shorter. However, there are still three main ways in which incontestable trademarks can be cancelled: genericness, abandonment, and misrepresentation.

It should also be noted that there are other ways to “attack” an incontestable mark outside of a Cancellation Proceeding. For instance, the strength of the mark can still be attacked.

Genericness

One way in which an incontestable trademark can be attacked is by arguing that the mark has become generic.

Click here to read up on cancellation proceedings based on genericness.

A trademark becomes generic once the relevant consuming public associates the mark with the “genus” of the goods or services. Put simply, a mark becomes generic when the public uses the mark as a term to define the product itself.

A great example of this is Escalator: once a company that manufactured and sold moving-staircase-machines, now just the term used to describe moving-staircase-machines. While a mark may be incontestable (as Escalator was), once it becomes generic, it can be cancelled.

Abandonment

Abandonment is one of the most common reasons to cancel a trademark. The doctrine is basically what it sounds like—trademarks can be abandoned by non-use. However, this “non-use” must also be accompanied by an intent to not use the mark.

Click here to read up on the legal details regarding abandonment of trademark rights.

In general, seasonal abandonment is not reason enough to cancel a mark, and the law in the U.S. gives trademark owners three full years of non-use before saddling the mark with a presumption of abandonment. However, even incontestable marks—marks that were registered and in use for at least 5 years—can be abandoned. And because they can be abandoned, they can be cancelled.

Misrepresentation

Finally, even an incontestable trademark can be cancelled if the mark misrepresents the source of goods or services. This type of claim is grounded in the goodwill-based common law doctrine of “passing off,” which bans the “passing off” of one’s goods as those of another. The key to a misrepresentation claim is confusion: if consumers would be confused into thinking that a mark represented a source that a mark does not really represent, it can be cancelled for misrepresentation.

An example of this would be if a soft-drink manufacturer called itself Coca-Cala and used a red can and cursive, white font, misrepresenting itself by trying to look like Coke’s can and script. Consumers might be confused into thinking Coco-Cala is Coke. Even if the Coco-Cala mark somehow made its way on to the Federal Register, and survived there for five years, it could be cancelled for misrepresentation.

Conclusion

The procedure for maintaining a cancellation proceeding with the TTAB is complex. If you need help identifying an incontestable trademark, or would like assistance in petitioning the TTAB to cancel a federally registered trademark, please give the expert trademark attorneys at Revision Legal a call at 855-473-8474.

Editors Note: This post was originally published in February of 2016. Is has been updated for comprehensiveness and clarity.

The Statutory Basis for Incontestability

Incontestability is a creature of the Lanham Act, specifically 15 U.S.C. § 1065. Under that section, a trademark owner whose mark has been in continuous use for five consecutive years following registration on the Principal Register, and who files a Section 15 Declaration of Incontestability within one year after the expiration of that five-year period, acquires a mark whose validity and ownership cannot be challenged on most grounds. The practical effect is that an incontestable mark is conclusive evidence of its own validity in any court proceeding — a significant litigation advantage that substantially raises the cost and difficulty of attacking the mark.

But Congress built in express exceptions. Section 1065 itself preserves the right to challenge a mark on seven specific grounds regardless of incontestability, and Section 1064 governs when and how those challenges may be brought at the TTAB. Understanding these statutory exceptions is essential for any trademark practitioner advising either a mark owner defending incontestable status or a challenger seeking to cancel such a mark.

The Park ‘N Fly Decision and What It Changed

The Supreme Court’s 1985 decision in Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, settled a major dispute about the scope of incontestability: can mere descriptiveness be used as a defense in an infringement action against an incontestable mark? The Court held no — once a mark is incontestable, its owner cannot be required to re-prove distinctiveness. A defendant in an infringement suit cannot defeat an incontestable mark by arguing it was descriptive when first registered. This decision dramatically strengthened the value of filing and maintaining Section 15 Declarations and created significant strategic incentives for mark owners to pursue incontestable status promptly.

What Park ‘N Fly did not foreclose, however, were the affirmative defenses expressly listed in 15 U.S.C. § 1115(b). Those defenses — which include genericness, abandonment, fraud in procurement, functionality, and others — remain available regardless of incontestable status. This is the framework within which cancellation proceedings against incontestable marks operate.

Abandonment in Practice: What It Takes to Cancel a Mark

Abandonment under 15 U.S.C. § 1127 requires both non-use and intent to discontinue use. Three consecutive years of non-use creates a rebuttable presumption of abandonment, but the mark owner can defeat cancellation by showing excusable non-use — circumstances beyond the owner’s control that prevented use without a subjective intent to abandon. Courts have found excusable non-use in contexts ranging from litigation-imposed injunctions to supply chain disruptions and factory fires.

A common mistake in abandonment proceedings is focusing exclusively on use in U.S. commerce. A mark owner can maintain registration by using the mark on goods or services in interstate commerce even if the mark is not used in every identified class. Partial abandonment — non-use in some but not all identified classes — can result in a partial cancellation. TTAB petitioners should carefully review the identification of goods and services on the challenged registration to craft the most effective abandonment argument.

Fraud in the Procurement or Maintenance of Registration

Fraud is the fourth ground for canceling an incontestable mark, and it is both powerful and difficult to establish. Under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), the Federal Circuit held that fraud in trademark proceedings requires a showing of subjective intent to deceive the USPTO. Objective recklessness is not enough. The petitioner must prove that the registrant knew the representation was false and made it with intent to deceive. This is a high bar, but it is not insurmountable.

The most common fraud scenario involves false statements in use declarations — specifically, declarations that a mark has been in use in commerce in connection with all identified goods or services when in fact some of those goods or services have been discontinued. If a mark owner submits a Section 8 or Section 15 Declaration claiming continued use in all classes while knowing that use has ceased in at least one class, a fraud cancellation proceeding becomes viable. The entire registration — not just the affected class — can be canceled if fraud is proven.

Functionality: The Defense That Applies to Product Configuration Marks

For incontestable trade dress and product configuration marks, functionality is a critical available defense. Under TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), a product feature is functional — and thus unprotectable as a trademark — if it is essential to the use or purpose of the article or affects its cost or quality. Incontestability does not override the functionality defense. A petitioner can cancel a trade dress registration, no matter how long-established, by proving the registered configuration is functional.

This is particularly relevant in technology and industrial goods markets, where product configuration trade dress registrations are common. If a competitor is blocking you from using a design that is dictated by the product’s function, a TTAB cancellation proceeding based on functionality may be your most efficient route to clearing the path — even if the registration is incontestable.

Strategic Considerations Before Filing a Cancellation Proceeding

Before initiating a cancellation proceeding against an incontestable mark, petitioners should assess standing, grounds, evidence, and litigation risk in parallel. Standing requires a real interest in the proceeding beyond that of the general public — typically, a reasonable belief of damage from the registration’s continued existence. Courts have found standing based on direct competition, prior rights claims, and even marketplace confusion that harms the petitioner’s own mark.

Evidence gathering before filing is critical. TTAB proceedings involve limited discovery compared to district court litigation, but they are not trivial. Expert testimony, consumer surveys, and documentary evidence of non-use or genericness often determine outcomes. Filing a cancellation proceeding without an evidentiary foundation is a common and costly mistake.

If you are facing a TTAB cancellation proceeding, defending an incontestable registration, or evaluating whether to challenge a competitor’s mark, Revision Legal’s trademark attorneys can help. Contact us through the form on this page or call 855-473-8474.