What is trademark incontestability status (Section 15 filing)?

Trademark Incontestability Status

Trademark owners filing their 5th to 6th year renewal have the ability to apply for “incontestability status” via a Section 15 declaration.  The declaration is simply the claim that the mark has been in continuous use in commerce for a period of five years after the date of registration. Filing the Section 15 incontestability status with the USPTO provides benefits and adds protections not otherwise available.

Is Section 15 Incontestability Status Filing Required?

No. The claim of incontestability is optional. Either the registrant can claim the benefits or pass on those benefits. However, this is your only ability to make it more difficult to challenge your trademark.

What are the benefits of Trademark Incontestability Status?

Trademark incontestability prevents certain challenges to your trademark. The biggest benefit is the effect of showing up to court with an “incontestable trademark.”

Gives you a Court Boost

Essentially it is the USPTO’s stamp of approval to show the following:

• The validity of a registered trademark.
• Validity of ownership of the trademark.
• Exclusivity to use the trademark with the goods/services in the registration.

Prevents Certain Challenges to Your Mark

Incontestable by definition means incapable of being challenged.  A bit of a misnomer, but incontestability status does prevent the following challenges:

1. No one can challenge your mark on the grounds its terms are descriptive.
   • This pertains to being descriptive of goods/services, being merely a surname, and/or being geographically descriptive.
   • Keep in mind they could challenge you based on being generic (the actual name of the goods/services).
2. No one can assert your trademark lacks secondary meaning (meaning the public does not associate your name with your goods/services).
   • With exceptions for abandonment (meaning you no longer use the mark) or genericness (the actual name of the goods/services).
3. No one can challenge your mark based on prior use and likelihood of confusion.
   • This one is a bit tricky. This does not apply to marks that were federally registered before you. Therefore if the one challenging your mark owns a registration, and did before you acquired registration they may have the right to challenge your mark based on prior use.
   • Common law use exception: this does not give you authorization to tell anyone to stop using the name. If someone began using the name before you, tread lightly. They will retain the right to do so. The prior user will be able to use their trademark in the geographic area in which they have maintained continuous use prior to your registration. The key here is that you potentially own the rights outside their geographic use area. However, if their use is nationwide, you have an issue. They can challenge your federal mark (even though incontestable).

When do I have to file the Section 15 claim?

The incontestability claim is normally submitted with your Section 8 renewal declaration. This renewal occurs between the 5th and 6th year of registration. However, the Section 15 filing is simply after 5 years of continuous registered use:

• The incontestability status can be filed after use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce.
• If you miss this deadline you miss out on Section 15 claim of incontestability.

Do I Qualify for an Incontestable Trademark?

Maybe. You have to have the following qualifications:

1. There are no pending challenges to your trademark: no outstanding cancellation proceedings, no infringement cases, etc.
2. There has not been a final decision against your ownership of the trademark.
3. Your mark has been used and registered for 5 continuous years and continues to be in use.

What are the Grounds Someone Could Still Challenge My Incontestable Trademark?

Again, incontestable does not equate to an invincible trademark. Others can still challenge your rights based on a number of grounds.

1. Abandonment (meaning you no longer use the mark).
   • You quit selling goods 3 years ago, with no intent to resume selling.
2. Genericness (your trademark is the actual name of the goods/services)
   • Your name is TRAMPOLINE or FLIP PHONE.
3. Someone used the mark before you in a certain geographic area.
   1. See #3 above in “Prevents Certain Challenges to Your Mark.”
4. Your trademark violates antitrust laws.
   • You engage in predatory or anticompetitive conduct with the specific intent to monopolize a market.
5. You are misrepresenting your goods/services.
   • You are “palming off” your products. You own an incontestable trademark for FOCEBOOK and use an F symbol in a blue box and offer social networking services.
6. You obtained the trademark fraudulently.
   • You swore you were using the name when you weren’t.
7. The mark is functional.
   • For example your bottle shape is trademarked with incontestable status. Someone can challenge the shape claiming it is utilitarian in purpose and rather serves as an ergonomic design that provides comfort to the palm.

If you would like an assessment of your trademark and your ability to claim Section 15, incontestability status. We can help. Give us a ring.