Let’s say that you have a trademark that has been registered on the U.S. Patent and Trademark Office’s (“PTO”) Principal Register and that you have used your mark for a consecutive 5 years after registration without anyone successfully challenging your trademark. Your mark may then be declared “incontestable,” which is a significant asset to your business. (For more information on trademark registration, check out Trademark Basics in our Entrepreneur’s Intellectual Property Academy.)
“Incontestability” is a term of art and comes with significant benefits. The Lanham Act, the federal law governing trademarks, states that registration of an incontestable trademark provides conclusive evidence of:
- The validity of the registered trademark;
- The validity of the registration of the trademark;
- The trademark holder’s ownership of the trademark; and
- The trademark holder’s exclusive right to use the trademark in business.
After obtaining incontestable status, a trademark is immune from many legal challenges, being subject to only a limited number of defenses involving abandonment, functionality, fraud, and illegally.
So how do you seek incontestable status? First, make sure that you meet the requirements for incontestability: (1) Registration of your trademark on the Principal Register, (2) Continuous use of your mark in commerce for 5 years after the date of registration, and (3) Your mark is still in use.
Second, file a “Declaration of Incontestability of a Mark under Section 15” with the PTO. You can file a declaration to claim incontestability within one year after the 5-year period of continuous use. The form is available via the PTO’s Trademark Electronic Application System: https://teas.uspto.gov/postreg/sect15/.
You will need your registration number, date of registration, and background information as to your mark. You will need to declare that (1) there has been no successful challenge to your ownership of your trademark or to your right to register the mark, (2) there is no proceeding involving your trademark rights in court or before the PTO, and (3) you have been using your mark for a consecutive 5 years after the date of registration and are still using your mark. You will also need to pay a filing fee. If there are any problems with your declaration, the PTO will notify you in writing to which you must respond within the required time to avoid abandoning your declaration.
After submitting the signed declaration to the PTO, the PTO will update its record to acknowledge receipt of your declaration and send you a notice of acknowledgement, thereby providing notice to the public of your incontestability declaration. Note that the PTO’s record of your declaration doesn’t conclusively prove that your mark is incontestable – that issue will be determined if you’re in court because of your trademark.
Your trademark is a very important aspect of your business. And, if your trademark is eligible for incontestability, consider filing a declaration to strengthen your mark and minimize legal challenges down the road.