Under the Lanham Act, after five years a registered trademark shall be “incontestable,” which provides trademark owners with a presumption they own the registered trademark, it is valid, and not merely descriptive.
Section 15 of the Lanham Act allows the owners of registered trademarks to file Declaration of Incontestability, which if accepted, gives the trademark added benefits and presumptions (described below). Trademark incontestability is an important tool for trademark owners to prevent their trademarks from being cancelled or to being used offensively to stop trademark infringement.
How to Claim Trademark Incontestability
To claim trademark incontestability, trademark owners, on their own or through a trademark attorney, need to file Declaration of Incontestability of a Mark under Section 15 (of the Lanham Act). Trademark owners or their trademark counsel can file a Declaration of Incontestability online at the United States Patent and Trademark Office website here. The requirements to claim incontestability, as outlined in the Declaration of Incontestability form, the trademark owner must assert the registered trademark:
Has been used for five consecutive years after the registration date and is still in use for all the registered goods/services;
There has been no final decision against the trademark owner’s ownership;
There is no current proceeding regarding the trademark registration; and
The signatory has a good faith belief the above is true.
After asserting the truth of the above requirements, and a warning that fraudulently lying about them can lead to loss of trademark rights and possible criminal action, the USPTO requires a $200 fee to process the Declaration of Incontestability form.
Start screen for filing a Declaration of Incontestability form online
Benefits of Trademark Incontestability
There are several benefits to trademark incontestability, including benefits that can save a registered trademark from being cancelled during a Cancellation proceeding. In particular, an incontestable trademark cannot be cancelled on the grounds that the trademark is merely descriptive because it is presumed incontestable marks have acquired secondary meaning. In addition to the defensive benefits of incontestable trademarks, incontestable trademark status can be used offensively to be granted injunctive relief by a U.S. district court in a trademark infringement action.
In addition to defensive and offensive benefits of incontestability, incontestable trademarks will be given the presumption in any trademark proceeding at the Trademark Trial and Appeal Board (TTAB) or U.S. district courts that the registered trademark is valid and the owner has the exclusive right to use the trademark in connection with the registered goods and/or services.
Limited Challenges to Incontestable Trademarks
Although incontestable trademark status protects registered trademarks from certain claims such as the trademark is merely descriptive, it is not a complete shield against all claims for trademark cancellation. Incontestable trademarks can still be cancelled if the trademark:
Is primarily functional;
Was fraudulently registered or obtained;
Has become generic;
There is an equitable doctrine that applies such as estoppel or laches;
Has been abandoned;
Does not have priority over a previously used or registered trademark; and
Several less common causes of actions.
Do you have a trademark that has been registered for five years or more? File a Declaration of Incontestability before a third party comes along to challenge your trademark rights. If you need help filing the Declaration of Incontestability, feel free to contact us and we will do our best to help you out.