Trademark incontestability is a special status trademark. The process of obtaining incontestability involves filing with the US Patent and Trademark (“USPTO“) a form (with supporting documents) called a Section 15 Declaration of Incontestability.
The Declaration can only be filed by the owner of a trademark, can only be filed if the trademark is listed on the Principle Register (not the Supplemental Register), and can only be filed after the trademark has been used in interstate commerce for at least five years. The Declaration is submitted along with the filing fee, which is currently $200. If approved, then the Declaration of Incontestability is listed along with the trademark on the Principle Register.
The Section 15 Declaration must be sworn by the owner of the trademark and must contain the following Statements:
- That the trademark has been used in interstate commerce for at least the last five years — interstate commerce means the use of the trademark on goods and packages that cross State borders or with services that are provided in multiple States
- That use in commerce was continuous
- That there is no evidence that the trademark is generic — a trademark becomes generic if, in the mind of consumers, the trademark stops meaning a specific product but rather a whole class of goods or services; an example is ZIPPER which used to refer to a particular company’s fastener, but now defines a whole class of fastening devices
- That the trademark has not been abandoned — abandonment is defined as discontinued use of a trademark with no intention of resuming use in the future
- That there have been no challenges to the validity of the trademark or the registration, that there have been no adverse legal or other decisions regarding same, and that there are no pending proceedings challenging the validity of the trademark/registration
Note that there is no requirement that a trademark owner file for Incontestability status. However, other than the filing fee, there appears to be no disadvantage to filing a Section 15 Declaration, and incontestability provides many enhanced legal protections, including the following:
- In any legal proceeding, an incontestable trademark and its registration are legally presumed to be valid without further need for proof
- Ownership of the trademark is presumed to be valid without the need for further proof
- A legal challenge to the continued validity of the trademark and registration can only be based on three factual claims: that the registration was obtained through fraud, the trademark has been abandoned, or that the trademark has become generic
- An incontestable trademark will make it easier to prove that a trademark is famous, which is necessary for certain types of trademark litigation
Why might the USPTO refuse incontestable status?
Refusal of incontestable status is rare after the filing of a Section 15 Declaration. When the USPTO does deny incontestable status, it is usually based on the improper or incomplete filing of the forms or evidence that one of the requirements has not been met. Maybe a full five years has not elapsed, or there is evidence that a proceeding is currently pending that challenges the validity of the trademark and/or the registration.
Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
