Securing the principal registration of a trademark is a significant accomplishment for any company. If possible, you should also seek an incontestable trademark. Once a trademark has been registered and in continuous use for 5 years, the owner can file a Section 15 Trademark Declaration of Incontestability. It provides even greater protection to trademarks registered on the principal register.
Declaration of Incontestability
Under Section 15 of the Lanham Act, a trademark owner may seek a Declaration of Incontestability. This element of incontestability strengthens the trademark and limits attacks that can be made on the trademark in a trademark cancellation. A challenge can only be made against an incontestable trademark in limited situations such as if the trademark has been abandoned, it has been used in an effort to violate United States laws, is found to be fraudulent in some manner, or has become a generic term for a certain type of goods or service.
In order to properly secure incontestability under Section 15, the owner of the trademark must supply the following declaration in a written statement to the United States Patent and Trademark Office (USPTO):
- That the trademark has used continuously for the past 5 years
- That no final decisions have been established on the ownership of the trademark
- That there are no current proceedings concerning the validity of the trademark
In addition to the aforementioned, applicants must supply the following items in a timely fashion, in order to complete the trademark renewal process:
- The renewal fee based on the number of classes of goods and services
- A specimen of use showing that the trademark remains in use
Incontestable Trademark Benefits
While it is not a necessary procedure in order to maintain a trademark’s registration, trademark incontestability under Section 15 offers owners a bit more security when it comes to protecting a trademark. Incontestability can help win trademark disputes or avoid them altogether because an incontestable trademark is immune from certain challenges. Three exceptions are if the trademark has become generic, has been abandoned, or if the registration was acquired by fraud.
An incontestable trademark is also considered conclusive evidence of the following rights of the trademark owner:
- That the trademark and registration is valid;
- That the trademark registration owner is the true owner of the trademark; and
- That the trademark registration owner has the exclusive right to use the trademark in relation to the goods and services listed in the registration.
If you are seeking trademark incontestability under Section 15 or have a trademark infringement issue related to it, please contact us for any assistance that you may require.