After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. An incontestable mark is immune from challenge except if it has become the generic term for the goods or abandoned for nonuse, or if the registration was acquired under fraudulent conditions. In order to achieve incontestability, a Declaration of Incontestability must be filed containing the requirements as provided in Section 15 of the Lanham Act. (15 United States Code, Section 1065.) This should be done sometime between the fifth and sixth anniversaries of a federal trademark registration.
A Section 15 Declaration is not required
A Section 15 Declaration is not necessary for maintaining ownership or rights under trademark law, and the failure to file the declaration does not result in the loss of any rights. However, the filing of the Section 15 Declaration is recommended because it expands trademark rights by making it more difficult to challenge the mark. A Section 15 Declaration form can be filled out and filed online at the U.S. Patent and Trademark Office (USPTO) website (www.uspto.gov). The Section 8 Declaration and Section 15 Declaration can be combined into one declaration, and a copy of this combined declaration can be filed online at the USPTO website (as described below).
What does incontestable mean?
When a mark has been in continuous use for five years after being placed on the Principal Register, it may be classified as incontestable, or immune from legal challenge. (37 United States Code, Section 1065.) Because of the fact that incontestability can be challenged on several grounds, the term “incontestable” really means “somewhat difficult to contest,” (as explained in more detail below).
A trademark owner seeking to make its mark incontestable must be able to demonstrate all of the following:
- No final legal decision has issued against the mark.
- No challenge to the mark is pending.
- A Section 15 Declaration describing the mark’s use was filed on a timely basis.
- The mark is not and has not become generic.
In essence, achieving “incontestability status” conclusively establishes ownership of the mark for the uses specified in the Declaration.
Learn more about Different Types of Trademarks.
When does the issue arise?
The issue of whether a mark is incontestable usually arises in a lawsuit for infringement where the party being sued attempts to defend by challenging the validity of the plaintiff’s mark. If the plaintiff can establish that the mark is incontestable, the mark will be presumed valid unless the defendant can establish one or more of the following:
- The registration or the incontestable right to use the mark was obtained by fraud.
- The registrant has abandoned the mark.
- The mark is used to misrepresent the source of its goods or services (for instance, use of the mark involves palming off).
- The infringing mark is an individual’s name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act.
- The infringing mark was used in commerce first—before the incontestable mark’s registration.
- The infringing mark was registered first.
- The mark is being used to violate the antitrust laws of the United States.
Even though an incontestable mark can still be challenged on these grounds, it is safe from attack on the otherwise common ground that it lacks distinctiveness. Thus, when Park ’N Fly, Inc. sued Dollar Park and Fly, Inc. for trademark infringement, the U.S. Supreme Court ruled that because the Park ’N Fly mark had obtained incontestability status, Dollar Park and Fly, Inc. could not allege as a defense that its rival’s mark is actually descriptive. (Park'N Fly v. Dollar Park and Fly 469 U.S. 189 (1985)).
How do you complete the Declaration?
- Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
- Choose 2. Declaration of Incontestability of a Mark Under Section 15 (unless you plan on filing a combination declaration including Section 8).
- You must supply your registration number, then answer questions as to who is filing the declaration
- You must provide information as to the entity that owns the mark
- You must execute the declaration affirming incontestability (see above).
- You must provide electronic signature
- You must pay for filing.