What is an Incontestable Trademark Registration?

What is an Incontestable Trademark Registration? 

A registered trademark is eligible to receive incontestable status after the first 5 years of its registration under Section 15 of the Lanham Act (15 U.S.C. Sect. 1065).

• Incontestable trademark status denies others from challenging your trademark.

Combined Section 8 and 15 Declaration is required for applying for incontestable trademark status. Although the Section 15 Declaration is not mandatory, it is strongly recommended. Continue reading to learn more about the added benefits and requirements of filing the Section 15 Declaration.

Incontestable Trademark Registration

The Benefits of Filing for Incontestable Trademark Registration

An incontestable trademark denies adverse litigants the ability to challenge your trademark registration.

Previously stated, an incontestable trademark denies adverse litigants the ability to challenge your trademark registration. For example, even a prior unregistered user of the trademark is blocked from canceling your trademark registration when it is deemed incontestable.

Additional protection for your trademark and brand. 

Think of incontestable status as an added layer of insurance for your trademark and brand. In the long run, it could save you thousands of dollars in litigation fees and protect you from messy trademark disputes.

Conclusive evidence of the trademark owner’s rights. 

Incontestable trademark status is conclusive proof that your trademark is valid, registered, and that it has obtained exclusive rights to use the mark with the registered goods and services.

Once accepted as incontestable, adverse parties can challenge the trademark only in very limited circumstances.

The only grounds to challenge an incontestable trademark are genericness and abandonment. 

If you have not yet filed for incontestable status but are approaching your 5 year mark, see below for the requirements for filing a Section 15 Declaration. Or, visit my article Maintain Your Trademark Registration for a timeline of important filings. For more information visit the USPTO article Registration Maintenance/Renewal/Correction Forms.

The Requirements for Filing a Section 15 Declaration

  1. Your registered mark must have been in continuous use for at least five consecutive years from the date of registration. 
  2. You must be able to prove your marks use in commerce for each and every item listed in the declaration. 
  3. There must not be any current legal challenges against your mark.

Note: Marks registered on the Supplemental Register are not eligible for incontestability status.

By |2019-11-22T02:47:56+00:00November 12th, 2019|maintenance, Trademark Guide, Uncategorized|0 Comments