What is Trademark Incontestability?

A trademark can quickly become a significant asset for a business as it is a source identifier to consumers and competitors of your brand. After obtaining a federal trademark registration, you may think you are finished with the trademark process. Once the mark is registered, you must continue using the mark in commerce, and you or your company will need to file additional paperwork with the USPTO to show that the mark is still being used.

After five years of trademark ownership, the USPTO will contact you or your business regarding filing a Section 8 & 15 Declaration of Use and Incontestability form. While this form is not required, it is strongly encouraged to fill out if you are still using the trademark. Section 15 of the Trademark Act (15 U.S.C. §1065) gives a trademark owner the exclusive right to make their mark incontestable. Section 15 permits an affidavit or declaration to be filed with the USPTO stating that the mark has been used continuously for the five years after the registration date to show incontestability. Also, incontestability is so important because a trademark cannot be cancelled by the Trademark Trial and Appeals Board (TTAB) if it is descriptive in nature with this status.

The Section 15 declaration must be filed between the fifth and sixth year of trademark ownership in order to obtain incontestable status. See 37 C.F.R. 2.167(f). Generally, your trademark attorney will create a reminder in their docketing system to remind them to file this declaration. Also, when filing this declaration, a trademark owner must not having any pending TTAB cases. 37 C.F.R. 2.167(e).

It is important to know that even though an incontestable trademark cannot be cancelled due to descriptiveness, a trademark can still be cancelled for other reasons, even if it is incontestable. Incontestability makes it much more difficult for a mark to be cancelled, but it is still possible. In these cases, a trademark can still be challenged for going abandoned, if there is no longer use in commerce, or in cases where possible fraud is detected.

While incontestability cannot prevent all possible issues a federally registered mark may face with the USPTO, it does alleviate some of the most common challenges for a trademark owner. As long as your mark remains in use in commerce, no fraud is committed while using the mark, and it does not go abandon in these five years, incontestability status can be achieved.

If you or your business have questions about trademark incontestability, and you require advice regarding trademarks, contact the Business Law and Business Litigation Attorneys at The Jacobs Law LLC at 1-800-652-4783 or email TRADEMARKS@THEJACOBSLAW.COM.