Incontestable Trademarks: Part 1

What Are Incontestable Trademarks?

In the United States, a trademark registration becomes incontestable after the filing of a Declaration under Section 15 of the Lanham Act, 15 U.S.C. § 1065. In order to meet the requirements of Section 15, the mark must have been in continuous use for at least five consecutive years from the date of registration, and must still be currently in use in commerce.

The Section 15 Declaration also requires verification that “there has been no final decision adverse to the owner’s claim of ownership of such mark for those goods or services, or to the owner’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the Patent and Trademark Office (USPTO) or in the courts.”

Marks registered on the Supplemental Register are not eligible to achieve incontestable status; therefore, the USPTO will not accept Section 15 Declarations for these marks.

Sec. 15 Declaration: Incontestable Trademarks

If a Section 15 Declaration has been filed in conjunction with a U.S. registration, it can no longer be cancelled by the USPTO Trademark Trial and Appeal Board on the ground that the mark is descriptive. An incontestable trademark registration can also be used as the basis for injunctive relief in an infringement action before the U.S. courts. Incontestability status is considered to be conclusive evidence of the following rights (subject to certain limitations):

1. The validity of the registered mark;

2. The registration of the mark;

3. The owner’s ownership of the mark; and

4. The owner’s exclusive right to use the mark with the registered goods and services.

Source: 15 U.S.C. § 1065

For more information on this topic, please visit our Trademark service page.

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