What Are Incontestable Trademarks?

Incontestable trademarks are trademarks that under normal circumstances are immune from being challenged. To be declared incontestable, a trademark must not have been acquired fraudulently, and must have been in consistent use for five consecutive years. At this point, the trademark owner can file a Declaration of Incontestability under the Lanham Act, Section 15 between the fifth and sixth anniversary of registering the trademark.

What Is a Section 15?

A Section 15 is simply a sworn statement you file which is placed on the Principal Register and declares your rights on the mark to be incontestable. Not only is it recommended that trademark owners file a Section 15, it's easy to do and can be done online at the USPTO Website. It can be combined with a Section 8 Declaration and the two can be treated as one during filing.

Note that Section 15 declarations cannot be filed for trademarks on the Supplemental Register. There is a six-month grace period after the six-year anniversary during which a Section 15 can be filed, but this carries an extra $100 fee per class of registration. Thus, if you are filing a combined Section 15 and Section 8, it would cost $200.

What Is a Section 8?

A section 8 declaration is a Declaration of Continued Use, which asserts that your mark is currently being used in commerce. It is required if the mark has not been used in commerce for five continuous years, and must be filed between the ninth and tenth years of registration, as well as on each successive tenth anniversary thereafter (or within the six-month grace for an additional fee). Failing to file a Section 8 will result in cancelling the registration.

Do I Have to File a Section 15?

You do not have to file a Section 15 declaration to keep the rights to your trademark. A declaration is only necessary to have your mark declared incontestable, which can be a big help in reducing the number of lawsuits and defenses you have to mount against those who challenge your mark.

Why Should I Consider Using a Declaration of Incontestability?

Using a Declaration of Incontestability provides what is called prima facie evidence of your trademark's validity, your ownership of it, and your exclusive rights. This status protects you across the entire nation, even if you only use the mark in two or three states, strengthening your rights and control over the mark.

Any lawsuit involving a challenge to your trademark benefits from the automatic assumption that it is valid, distinctive, or has a strong secondary meaning. This makes it very difficult for a defendant accused of infringing your mark to make a case that it is invalid.

Specifics of Incontestability

The specific things that become incontestable after filing a Section 15 include:

  • The trademark's validity

  • The mark's registration

  • The ownership of the trademark

  • The exclusive rights of the owner to use the mark in conjunction with the goods and services it represents

Incontestability and Cancellation Actions

It's important to remember that while incontestability is related to the statute of limitations against cancellation actions, it is a separate and distinct concept and action. The Lanham Act, Section 14, disallows cancellation of trademarks on grounds like descriptiveness. Such protections remain in effect regardless of Section 15 protection.

No registration dispute for a mark that is more than five years old can result in the cancellation of a trademark, regardless of the existence of a Section 15 declaration. The filing of such a declaration provides extra protection in the form of a presumption of validity which extends to offensive as well as defensive purposes, meaning it helps when you file a lawsuit against someone else for infringing your trademark.

Borniquen Biscuit Corp v. M.V. Trading Corp

This First Circuit Court decision from 2006 illustrates how important incontestable trademarks can be. In this case, Borniquen, who manufactures crackers and cookies called galletas in Puerto Rico acquired the trademark "Rica" from a prior company. The mark had been in existence for 37 years, but no Section 15 was ever filed.

M.V. Trading Corp launched a product in 2003 called Nestle Ricas, and Borniquen filed suit for trademark infringement. A preliminary injunction was granted, but in the end it was determined that since no Declaration of Incontestability was filed, the mark could be contested. Without such a declaration, while the trademark is presumed to be distinctive, this presumption is not conclusive and can be challenged.

In the end, M.V. failed to demonstrate that the term was descriptive rather than distinctive, but had Borniquen filed a Section 15, the case could have been resolved much more quickly and lots of time and legal expenses saved.

What Does It Mean to Have an Incontestable Trademark?

A mark that is declared incontestable is simply immune to legal challenge under normal circumstances. It can be considered conclusive establishment of the mark's ownership and carries great weight in court. However, there are grounds to challenge the incontestability status.

In order to be declared incontestable, a mark must meet the following criteria:

  • There has not been a finalized legal decision issued against the trademark.

  • There has not been a final decision against the owner's right to register or keep the trademark.

  • There are no pending challenges to the mark.

  • A Section 15 Declaration has been filed.

  • The mark is not generic.

  • The mark has been in use for five consecutive years, and continues to remain in use.

Incontestability and the Strength of a Mark

Strong marks are those which are going to be very rarely used by those other than the trademark owner, whereas weak marks may or will often be used by other people. The strength of a trademark is often related to its distinctiveness.

While incontestability encourages producers of goods and services to cultivate goodwill connected to their mark, it only addresses the validity of the mark, its entitlement to protection, and its ownership by the registrant. It does not in any way address the mark's strength.

In a case challenging the mark, the owner may still have to defend its strength. They might have to prove, for example, that there is a likelihood of confusion between the incontestable mark and one accused of infringement.

Challenges to Incontestability

Even after a Declaration has been filed, there are still grounds under which the mark's validity can be challenged. In order to issue such a challenge, at least one of the following conditions has to be proved:

  • The trademark itself was obtained under fraudulent pretenses.

  • The incontestability of the trademark was fraudulent.

  • The mark has been abandoned.

  • The mark is misrepresentative of the source of the services or goods it represents.

  • The mark is reserved or prohibited under the Lanham Act.

  • The mark is simply an individual using their own name for business practices.

  • Someone else used the mark before it was registered.

  • Someone else registered the mark first.

  • The mark is used in violation of U.S. antitrust laws.

  • The mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion.

  • The mark is functional in nature.

  • Any equitable principles apply, including acquiescence, estoppel, or laches.

Incontestability does provide immunity from being challenged on the basis of distinctiveness or descriptiveness.

Cancellation Proceedings

Cancellation proceedings are the means by which an incontestable trademark is challenged. These hearings are held before the Trademark Trial and Appeal Board, or TTAB. During these hearings, the challenger must prove one of three things.

The first of these is that the trademark is generic — that it has become so associated with the associated goods or services in the eyes of the public, that people use the term to describe the product instead of the actual name. Once upon a time, for example, the term "escalator" was a trademarked company name. That trademark was cancelled when the name became synonymous with the device.

Secondly, the challenger can allege that the trademark has been abandoned, meaning that the owner not only has ceased to use the mark, but they intend no further use of the mark in the future. In order to prove this, the mark generally has to have been in non-use for at least three years.

The third common argument to cancel a trademark is misrepresentation. If it is in some way misrepresentative of the source from where the goods and services come, it creates confusion in the marketplace and so is invalid. Consider if a soft drink company issued a beverage called "Popsi" and used a blue can with a red circle and white text to dress it. People could easily mistake it for Pepsi. It's misrepresenting its product source.

Important Case Decisions

The range of important cases that have helped to define incontestability, the circumstances under which it can be challenged, and the circumstances under which a registration can be refused include:

  • An incontestable mark cannot be challenged based on the grounds that it is descriptive in nature (In Park 'N Fly v. Dollar Park & Fly, Inc.)

  • Owning an incontestable trademark does not allow the owner the right to register the mark for other goods or services. (In re American Sail Training Association)

  • Registered marks are only incontestable in the form in which they are registered, and for the specific goods and services claimed in the registration (In re Save Venice New York, Inc.)

  • The registration of incontestable status for a specific design does not create a status of non-functionality for another design that has shared features (In re Bose Corp.)

  • An examiner can refuse registration on the grounds that a mark is misdescriptive in primarily geographic terms, even if the applicant owns the same incontestable mark for a related product. (In re Loew's Theatre's, Inc.)

  • When similar but different goods file applications, or when filing for additional services, the ownership of an incontestable mark does not preclude the requirement for a disclaimer (In re Best Software, Inc.)

  • An examiner can refuse registration based on the mark being a surname even if the same incontestable mark is owned for unrelated services or goods (In re Industrie Pirelli Societa per Azioni)

  • Registration can be refused for computerized data processing services despite ownership of incontestable marks for related services (In re BankAmerica Corp.)

  • Incontestable marks are not automatically held to be strong and can still be held to create brand confusion (Pebble Beach Co v. Laub America Corp.)

  • Geographic descriptions, even if incontestable, are not considered to be strong (First Keystone Federal Sav. Bank v. First Keystone Mortg., Inc., and Long Island-Airports Limousine Service Corp. v. New York Airport Services Corp.)

Process to File a Declaration of Incontestability

To file a basic Section 15 (without dual-filing a Section 8), you will first locate the form on the USPTO website's forms archive. Next, you'll supply the registration number of your trademark and answer questions about yourself and the person or entity that owns the mark (if it's someone other than you).

You will then execute the Declaration of Incontestability, e-sign the document, and pay the filing fee.

Incontestable Trademarks and Legal Representation

A Section 15 Declaration of Incontestability, while not required, provides important legal defenses for your trademark, your ownership of the mark, and your exclusive rights to use it. It is highly recommended that if you have been using your mark consistently for five years, you file this declaration.

Regardless of your goals or experience, whenever you are dealing with intellectual property laws it is always advisable to have the services of an outstanding intellectual property attorney in your area. These laws can be complex, and even those that appear straightforward can involve hidden pitfalls that a lawyer can help you avoid.

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