Despite having registered their trademark, some mark owners will at times be forced to litigate the validity of their registration, especially in regards to the potential “descriptive” nature of their mark. Generally, marks that are merely descriptive or associated with a name or a location, are not permitted in the Principal Register. One powerful tool in warding off attempts at canceling a registered trademark, is to file for “incontestability”. Incontestability is a term utilized by the USPTO in order to designate an active trademark that is essentially invulnerable to attempts at cancellation due to its unchallenged usage by one owner. An owner whose mark has been in continuous use for five years may file a Declaration of Incontestability under Section 15 of the Lanham Act, 15 U.S.C. § 1065. A USPTO filing fee applies per class. Confirm the current amount on the USPTO fee schedule before filing. Following the filing of a Section 15 declaration, the trademark becomes incontestable. An incontestable mark is substantially harder to challenge, though not immune. The only grounds by which an incontestable mark can be canceled are as follows.
- The abandonment of the mark, (i.e. a lack of active usage of the mark in the market for an extended period of time)
- Fraud. Trademark registration that is fraudulent due to willful misleading of the USPTO.
- “Genericness”. Any mark that has become so generic and widespread as to become synonymous with an entire category of goods and services may lose its trademark status despite incontestability, (i.e Aspirin).
Those three grounds are generally avoidable through ordinary use and accurate filings, which is why most owners file the declaration once they are eligible. A mark in continuous use past five years is already difficult to challenge. The declaration makes that position explicit on the register. Incontestability is one of several tools federal registration provides. The rest, including damages under 15 U.S.C. § 1117 and customs recordation, are covered in the enforcement and litigation advantages of federal registration.
Sari Law Firm advises businesses on trademark registration and enforcement across California and nationwide.
