Posts Tagged ‘Declaration of Incontestability’

Section 15 Declaration of Incontestability

Sunday, October 18th, 2020

The last two articles discussed the §8 Declaration of Use affidavit and the §9 Application for Renewal affidavit. Both of these documents must be filed within the timeline given and are necessary in order to maintain federal trademark status. This post will discuss the §15 Declaration of Incontestability document, which unlike the other two, is not necessary, but beneficial.

As discussed, prior, the §8 must be filed between every fifth and sixth anniversary of the trademark registration. During the first anniversary deadline, the trademark owner may choose to file a §15 Declaration of Incontestability. After five years of consecutive use, an owner may file a §15, which declares the trademark may be incontestable. When a mark becomes incontestable, it means that the mark is immune from challenge. In order to maintain this status, the owner must continue to file all of the proper paperwork within the allotted time, because a generic mark or a mark abandoned for nonuse may not be declared incontestable.

Simply, when a mark is declared incontestable, it means that it is immune from legal challenge, yet a situation may arise where grounds for legal challenge are allowed. This will be discussed below. When a trademark owner is seeking incontestability, he must be able to show that (1) no final legal decision has been issued against the mark; (2) there is no challenge pending against the mark; (3) the §15 was filed within the deadline (between the fifth and sixth anniversary of the mark’s trademark registration) and (4) the mark has not been deemed generic.

For a mark that has achieved incontestability, the registration can only be challenged for invalidity on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud; (2) the registrant abandoned the mark; (3) the mark is used to misrepresent the source of its goods or services; (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act; (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration;  (6) the infringing mark was registered first;  (7) the mark is being used to violate the antitrust laws of the United States; (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion; (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches.

It is imperative that throughout the life of the registration, the owner must continue to enforce his/her registration rights. Just because the mark has been declared incontestable, does not mean that the owner may neglect to file the appropriate documentation in a timely manner. Even with the §8, §9 and §15 a mark may still be canceled if the owner fails to keep up with the post-registration maintenance for the mark.

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