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.

What Legal Protections Does Incontestability Actually Provide?

Incontestable status under 15 U.S.C. § 1065 is one of the strongest legal shields available to a trademark owner. Once the USPTO accepts your Section 15 Declaration, the registration becomes conclusive evidence of the trademark’s validity, your ownership, and your exclusive right to use the mark in commerce in connection with the registered goods or services. Courts treat this as a presumption that is extremely difficult to rebut.

Under 15 U.S.C. § 1115(b), an incontestable trademark can only be challenged on a narrow set of grounds. These are called the “defenses” to incontestability. Even against an incontestable mark, a defendant may still argue:

• The registration was obtained through fraud on the USPTO
• The mark has been abandoned by its owner
• The mark is being used to misrepresent the source of the goods or services
• The mark is functional (i.e., its features are essential to the use or purpose of the product)
• The mark was used in violation of antitrust laws
• Equitable principles like laches, estoppel, or acquiescence

Critically, what a defendant cannot argue against an incontestable mark is that the mark is merely descriptive. Before incontestability, a descriptive mark is a valid basis for challenging or canceling a registration. After incontestability, that ground disappears. The Supreme Court confirmed this in Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), holding that the owner of an incontestable mark cannot be challenged on the ground that the mark is merely descriptive.

How Incontestability Strengthens Your Litigation Position

In trademark infringement litigation, the registered trademark owner must ordinarily prove ownership of a valid mark and the likelihood of confusion caused by the defendant’s use. The incontestability status compresses the evidentiary burden substantially. The registration certificate itself serves as prima facie and often conclusive evidence of ownership and validity. That means the defendant, not the plaintiff, bears the burden of proving invalidity.

This matters enormously in litigation strategy and settlement leverage. A company that holds an incontestable mark enters any infringement dispute from a position of strength. The other side knows that cancellation proceedings at the USPTO Trademark Trial and Appeal Board (TTAB) based on descriptiveness or lack of distinctiveness will fail. Pre-suit demand letters and cease-and-desist correspondence referencing an incontestable registration signal seriousness to opposing counsel.

Common Mistakes When Filing the Section 15 Declaration

Many trademark owners wait years to file the Section 15 Declaration even after they are eligible. Others file prematurely — before the five-year continuous use period has actually been satisfied — which can expose the owner to a fraud claim. Key errors to avoid include:

• Filing before five years of continuous use in interstate commerce have actually run from the registration date
• Failing to include all goods and services in the Declaration (if only some are covered, only those become incontestable)
• Using the wrong form — the Section 15 Declaration is often combined with the Section 8 Declaration of Continued Use, but the two serve different purposes
• Not verifying that no pending proceedings exist against the mark at the time of filing

Incontestability can be filed concurrently with the required Section 8 Declaration of Continued Use, which must be filed between the fifth and sixth year after registration. Many trademark counsel file both simultaneously as an efficiency measure. Once granted, incontestability lasts as long as the registration remains valid and in force.

If you have a federally registered trademark that has been in continuous use for five years, do not wait to achieve incontestable status. Contact Revision Legal today at 231-714-0100 or 855-473-8474 to discuss filing your Section 15 Declaration and locking in the strongest available trademark protections.