Part I: Trademark Incontestability
After federally registering your trademark you might think that you’re done dealing with the United States Patent and Trademark Office (USPTO), but, unfortunately, think again. You still have one more deadline to abide by if you want to permanently strengthen your registered rights.
As the proud owner of a federally trademarked name or design you receive nationwide protection for the mark and have exclusive rights to use the registered mark in connection with the goods and services specified in the registration. The next step to fully protect your registered mark is to read up on incontestability.
A trademark registration can become “incontestable” five years after the registration date (Lanham Act § 15, 15 U.S.C.A. § 1065). What does this mean? A federally registered trademark that has been in continuous use for five years can be classified as incontestable. Incontestability further protects the registered mark by making it more difficult to challenge the trademark.
The positives of an incontestable status:
- An incontestable registration can be used for injunctive relief in an infringement action.
- The USPTO Trademark Trial and Appeal Board cannot cancel a registered mark based on descriptiveness or other, prior ownership.
- Conclusive evidence of the following:
- Validity of registered mark;
- Registration of the mark;
- Ownership of the mark; and
- Exclusive right to use the mark.
Lawyers or trademark savvy people often reference a “Section 15 Declaration,” which basically means that the owner of a mark is filing for incontestability by submitting an affidavit to the USPTO. The affidavit can be electronically filed on the USPTO’s Trademark Electronic Application System (TEAS). You only need to file a Section 15 Declaration once per registered mark.
The requirements are straightforward: (1) the mark must have been in continuous use for at least five consecutive years and (2) the mark must currently be in use. An important requirement to note is that there must be no adverse final decision to the owner’s claim of ownership and no legal proceedings involving the owner’s rights to the mark.
Is there a time frame to file a Declaration of Incontestability? You just need to file the Declaration within one year after the five-year period of continuous use.
For more information regarding trademarks, incontestability, or really anything law/beer related, call us at: 919-335-5291 or email email@example.com