Incontestable Trademarks

What Are Incontestable Trademarks and What Immunities Do They Have?

An incontestable trademark is afforded immunity from several things that can be made the basis of challenging an ordinary registered mark. The term “incontestable” is a bit misleading in this case because even after acquiring the status of incontestability, the mark can be challenged under certain circumstances. The legal position of such marks, their filing, and benefits of owning an incontestable mark are elaborated below.

How to Obtain the Status of Incontestability for Your Mark

Incontestability makes a trademark remarkably strong and very difficult to challenge. To obtain this status, an “Affidavit of Incontestability” must be filed which requires that the following requirements be fulfilled.

1. The affidavit can only be filed five years after the registration of the mark at the USTPO. The filing must be done within one year once this period ends.

2. During the five-year period, the mark must be in continuous use and must not be abandoned at any point. If any products or services had been discontinued during that period, they must be specifically omitted from the affidavit.

3. There must be no decision or ruling that opposes the applicant’s ownership of the mark, his or her right to register the mark, or filing of the affidavit.

4. There must be no pending proceeding in the TTAB or pending court action.

5. The mark must not be nonspecific or generic.

6. The owner of a mark that is on the Supplemental Register cannot file this affidavit.

The Advantages of Owning an Incontestable Mark

Obtaining incontestability status is non-compulsory, but it is highly recommended by all trademark counsels including the ones here at Trademark Counsels. Some of its benefits are as follows.

1. It proves that the mark is valid and registered with the USPTO.

2. It shows that the registrant is the rightful and exclusive owner of the mark, and the right to use it resides only with him or her.

3. It is an effective tool in having your cease-and-desist demands taken seriously. If your mark is incontestable, your counsel can write a more forceful cease-and-desist letter. In this letter, the mention of incontestability can add a lot of persuasiveness to the demand. The entity that is allegedly infringing upon your trademark rights might decide to stop its operation as a result of this single letter.

The Immunities Possessed by an Incontestable Mark

If a mark is incontestable, it is safe from any challenge made on the following grounds.

1. Descriptiveness: Since the mark was registered prior to obtaining incontestability, any challenge that the mark or its elements are descriptive, is meaningless.

2. Geographical Location: If the mark contains the name of a geographical location that implies an association between the goods/services and that location, it is considered geographically descriptive. Such marks are challengeable if they are ordinary marks, but not if they are incontestable ones.

3. Surname: Marks that are surnames cannot be challenged if they have acquired the status of incontestability.

If the mark to be canceled is on the Supplemental Register, it is not immune to challenges on the aforementioned grounds.

The Vulnerabilities of an Incontestable Mark

Even the marks that have acquired this legal status are not entirely unchallengeable. Such marks can still be opposed under certain circumstances the most common of which are as follows.

1. Fraud: The mark is owned by a fraudulent company or was intended to be used for defrauding consumers.

2. Abandonment: The use of the mark was discontinued by its owner at some point.

3. False Suggestion: The mark falsely implies an association with a person, another company, or an organization.

4. Functionality: The mark or any of its parts represent an essential function of the product.

5. Genericness: The mark is nonspecific, and its incontestability imposes restrictions on competition in the market.

The Laws Regarding the Incontestability of Trademarks

The incontestability status is mentioned in Section 15 of the Lanham Act that allows the mark to become incontestable through the filing of an affidavit by its owner. Section 14 of the same act eliminates descriptiveness and likelihood of confusion (most often due to resemblance) as grounds for challenging the mark. You might become confused between the two, but they are actually very different. Section 14 allows for cancellation of registration during a proceeding at the TTAB, and not during court actions in federal courts. Section 15 lets registrants file an affidavit so that they can later defend their stand on the basis of incontestability in federal courts.

Please consider contacting our professionals at Trademark Counsels to have any questions related to this topic answered. We would be happy to assist you with the trademark prosecution process, and even give you a courtesy consultation.