Defenses Against Incontestable Marks

Despite the label, incontestable marks can still be contested. An accused infringer can always argue that they are not actually infringing the mark at all due to the respective mark differences, the differences in use or commercial impression, etc. However, there are also a variety of ways that a challenger can invalidate the incontestable mark. One method of contesting these sorts of marks is through a functionality argument. A functionality argument states that the putative mark actually serves some functional purpose with regard to the good being sold, and that letting someone trademark the functional item puts competitors at a disadvantage.

Alleged infringers can also raise a genericness argument to the one presented above, if the mark has become generic at some point after it became incontestable. Another available argument is that the registrant has abandoned the mark since the mark attained its incontestability status by to keep using it in their trade or business for a period of three years. Lastly, an incontestable mark can also be challenged on the basis that the application for the mark was in some way fraudulent.

Therefore, while incontestable marks may present additional hurdles, there are instances in which an individual or business may be successful in overcoming challenges raised when dealing with registered marks that have achieve incontestable status.

Source: 15 U.S.C. § 1065

For more information on this topic, please visit our Trademark Protection service page, which is part of our Trademark practice.

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