INCONTESTABILITY IN TRADEMARK OWNERSHIP

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 of a mark that has been registered for five years can declare incontestability for that mark by filing a Declaration of Incontestability, along with a filing fee of $200. Following the filing of a Section 15 declaration, the trademark becomes incontestable. An incontestable mark is immune to the majority of legal challenges. 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).

As the three of these legal issues are generally easily avoided, declaring for incontestability following an active five year usage of a mark is practically a no-brainer. A mark beyond that time frame without incontestability is generally already a safe, difficult to challenge mark. Yet a Declaration of Incontestability will ensure it remains as such, and remains an effective tool in safeguarding a mark. If you have any questions, or require any assistance, the experienced lawyers at Sari Law Firm are alway available to provide clear and concise legal aid in regards to your trademarks.