What is an incontestable trademark in the United States?

What is an incontestable trademark in the United States?

In the United States, five years after you have registered a trademark with the United States Patent and Trademark Office you can file a Declaration of Incontestability under Section 15 of the U.S. Trademark (Lanham) Act.  To be declared incontestable, a trademark must be registered on the Principal Register, the trademark must not have been acquired fraudulently, there must be no final decision adverse to the registrant’s claim of ownership or right to register the mark, there must be no such proceeding pending, the trademark must not be generic and the trademark must have been in consistent use for five consecutive years.  A declaration of Incontestability cannot be filed for trademarks registered on the Supplemental Register.  The process to file a Declaration of Incontestability is simple, you can download a form from the United States Patent and Trademark website, complete the form and submit it to the United States Patent and Trademark Office.  After you submit your Declaration of Incontestability to the United States Patent and Trademark Office they will acknowledge that they have received it.  A Declaration of Incontestability only needs to be filed only once in order to claim its benefits.

It should be noted that a Section 8 Declaration of Continued Use is required to be filed around the same time you may file for a Section 15 Declaration of Incontestability.  The two forms should not be confused.  They are separate forms that do different things and even though they can be filed together, one form cannot be substituted for the other.  A Section 8 Declaration of Continued Use must be filed regularly or your trademark will be canceled.

There are many benefits to owning an incontestable registered trademark.  An incontestable registration can be used as the basis for getting a restraining order in an infringement lawsuit in courts in the United States. Gaining incontestable status also means that a registered trademark cannot be canceled on the ground that the trademark is descriptive.

Incontestable status is considered to be conclusive evidence of the following things:

  1. the validity of the registered mark;
  2. the registration of the mark;
  3. the ownership of the mark; and
  4. the owner’s exclusive right to use the mark with the registered goods and services.

It should be noted however that an incontestable registered trademark can still have its validity questioned.  An incontestable trademark is still vulnerable to the following challenges:

  • Someone else used the mark before it was registered.
  • Someone else registered the mark first.
  • The trademark was obtained under fraudulent pretenses.
  • The Declaration of Incontestability of the trademark was fraudulent.
  • The mark has been abandoned.
  • The mark is being misused because it misrepresents of the source of the services or goods it represents.
  • The mark is reserved or prohibited under the Lanham Act.
  • The mark is simply a person using their name for business practices.
  • The mark is used in violation of U.S. antitrust laws.
  • The mark does not have the strength or scope of protection needed to avoid a likelihood of confusion.
  • The mark is functional in nature.

Filing a Declaration of Incontestability is a good idea to help give your trademarks additional strength.  If you have a registered trademark and would like to file a Declaration of Incontestability you should consult with an attorney that specializes in trademark law to determine what the best course of action is for your trademark.