What is an incontestable trademark registration?
A federal trademark registration on the Principal Register may become incontestable after five years. An incontestable registration provides its owner with certain rights and advantages. Registrations on the Supplemental Register are not eligible for incontestability, although trademark owners can certainly file or re-file applications for the Principal Register.
How does a trademark registration become incontestable?
Initially, the trademark must have issued on the Principal Register as opposed to the Supplemental Register. The owner must “maintain” (i.e., renew) the registration during a 1-year window that begins at the 5th year anniversary of the registration date and ends at the 6th year anniversary. During that 1-year period, the registration owner (registrant) must file two statements:
1) a declaration that the trademark has been used continuously on the products and/or services identified in the registration except for any non-use items to be deleted from the registration (Section 8 statement); and
2) a declaration that basically says the trademark has not been legally challenged by any third parties (Section 15 statement).
The post-registration Section 15 statement is what boosts the registration to incontestable status. Technically, a trademark “renewal” is not due until the tenth year anniversary of the registration date and every ten years thereafter, but this 6th-year deadline is practically a renewal deadline with the added requirement of the Section 15 statement which needs to be filed only once after registration.
What are advantages of an incontestable registration?
A federal trademark registration provides its owner with certain advantages called legal presumptions. Those presumptions mean that certain facts and legal positions will be assumed in the trademark owner’s favor and that the burden will fall on a challenger to prove otherwise.
Here are key legal presumptions of a federal trademark registration:
- the mark is valid;
- the registrant is the rightful owner of the mark; and
- the registrant has an exclusive right to use the mark with the registered goods and services.
A huge benefit of an incontestable registration includes the fact that others can no longer challenge the registration on certain grounds such as:
1) Priority – alleging that the third party made earlier use of a similar mark;
2) Descriptiveness – alleging that the mark is descriptive of the goods or services identified in the registration.
Can a registration over 5 years-old still be challenged?
While an incontestable is immune from certain challenges as outlined above, a third party may nonetheless seek to cancel an incontestable registration on grounds such as abandonment (i.e., failure to continue using the mark), fraud, misuse to misrepresent the source of goods or services, or the mark becoming generic.
Though a prior user would not be able to cancel an incontestable registration, the prior user can establish certain defenses to an incontestable registration by carving out territories where the prior user used its mark before the registration date.
Section 14(3) of the Lanham Act sets forth potential challenges that may be brought against an incontestable registration or any registration over five years, such as:
- generic mark
- fraud
- abandonment
- immoral, deceptive or scandalous matter
- falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols
- mark consists of a name, portrait, or signature of a living person without their written consent
- mark is being used by or with the permission of the registrant so as to misrepresent the source of goods or services
Why file a federal trademark application with the USPTO?
The possibility of obtaining incontestable status is a key reason for filing a federal trademark application. If you continue using your registered mark without any legal challenges for five years, you’ll be on your way to incontestable trademark rights.
Vic Lin
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