What are Incontestable Trademarks?
Incontestable Trademarks
Incontestable Trademarks — An incontestable trademark is one that been in continuous use in commerce for at least five consecutive years from the date of registration, and must still be currently in use in commerce. Once a mark is deemed incontestable, it can no longer be cancelled by the USPTO Trademark Trial and Appeal Board on the ground that the mark is descriptive. An incontestable trademark registration can also be used as the basis for injunctive relief in an infringement action before the U.S. courts. Incontestability status is considered to be conclusive evidence of the following rights (subject to certain limitations): The validity of the registered mark; the registration of the mark; the owner’s ownership of the mark; and the owner’s exclusive right to use the mark with the registered goods and services.
Section 15 Declaration — To achieve an incontestable mark, you must file a Declaration under Section 15 of the Lanham Act, 15 U.S.C. § 1065. This requires a verification that “there has been no final decision adverse to the owner’s claim of ownership of such mark for those goods or services, or to the owner’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the Patent and Trademark Office (USPTO) or in the courts.”
Defenses to Incontestable Marks — Despite the label, incontestable marks can still be contested. There a variety of ways a challenger can invalidate the incontestable mark. One method is through a functionality argument, stating that the putative mark actually serves some functional purpose with regard to the good being sold, and that letting someone trademark the functional item puts competitors at a disadvantage. Another method is a genericness argument, claiming the mark has become a generic term for the good or service it covers. Finally, a challenger can also claim the owner has abandoned the mark by nonuse for a period of three years.
For more information, see our blog posts Incontestable Trademarks: Part 1 and Incontestable Marks: Part 2.
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This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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