You’re doing what you set out to do…
Successfully running your business.
And you’ve been using your mark continuously in commerce for the last 5 years. You’ve proven beyond a doubt this is your brand and your mark.
It makes sense that you would want to protect it as much as possible.
So maybe you’re thinking about filing a Section 15 Declaration of Incontestability so you can officially own an incontestable trademark.
But what does “incontestable” really mean?
And how can it benefit you when you already have a federally registered trademark?
**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Section 15 Declaration of Incontestability
A Section 15 Declaration of Incontestability is a signed declaration that indicates you claim incontestable rights in a trademark and:
- have been – and are still – using the mark continuously in commerce for five years following the date of registration for ALL of the goods and/or services listed in the registration, AND
- there hasn’t been a final legal decision adverse to your claim of ownership of the mark or to your right to register the mark or to keep the registration, AND
- there isn’t any pending legal proceeding involving the mark in the USPTO or in a court of law.
The only “catch” to note:
If you’re going to file a Section 15 Declaration re Incontestability, you must do so within one year of the expiration of any period in which there were five consecutive years of continuous use.
You’ll notice I said, “If you’re going to.”
And that’s because you don’t have to file a Section 15 Declaration of Incontestability to keep your trademark rights – but because it expands the rights you’re entitled to, it may be worth your time to do so.
The benefits of incontestable status
Incontestability, in the context of trademark law, refers to a legal status granted to a registered trademark that provides extra advantages and protections to its owner.
Once your trademark is incontestable, certain aspects of the registration actually can’t be challenged by third parties.
- The validity of the registered mark.
The incontestable status of a trademark creates a legal presumption of its validity, making it easier for the trademark owner to defend against challenges to its registration.
- The owner’s ownership of the mark.
In court proceedings, incontestable trademark registration is considered conclusive evidence of the trademark’s ownership.
- The owner’s exclusive right to use the registered mark in commerce.
Incontestability provides a defense against certain grounds of cancellation, such as claims of descriptiveness or likelihood of confusion.
And it can have a deterrent effect against potential infringers, as it signals the trademark owner’s enhanced legal protection.
Why incontestability matters
Obtaining incontestability status is a strategic decision for trademark owners.
If your mark is incontestable, and someone infringes your rights so that you have to sue – all you have to do is present your trademark registration to the court.
You can skip the part where you invest your time and money proving to the court that your trademark is valid, you are the owner of the trademark, or that you have the exclusive right to use that mark.
Your incontestability proves all of that in one fell swoop.
And the infringing party can’t claim otherwise.
But is incontestability a misnomer?
A federally registered trademark with incontestable status provides you with the broadest protection possible.
But “incontestable” might be more accurate (albeit more of a mouthful) if they called it what it really is – “more difficult to contest.”
Because even if your trademark is incontestable, it is not automatically immune to all challenges or invincible in some way.
In fact, incontestability won’t protect your mark from the following potential claims that ALL trademarks are susceptible to, such as:
- Fraud on the Trademark Office
- Misrepresentation of the goods or services for which the mark was obtained
That said, the scope of challenges available to third parties is significantly narrower for an incontestable trademark compared to non-incontestable trademarks.
Obtaining your incontestable trademark status
Claiming incontestable status for your federally registered trademark offers you a lot of advantages, including:
–Stronger legal protection
–Enhanced brand reputation
–Streamlined licensing opportunities
–Better deterrence against infringement
–Efficient brand monitoring and enforcement
And these benefits can definitely help you maintain your competitive edge in a crowded online market
If incontestable trademark status is in your future, reach out.
We’ll make sure incontestability is the right move for your brand and get started with your application.
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