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Trademark Guide: What is an ?Incontestable? Trademark?

By Stephanie Robinson

Once a business has successfully registered a trademark, that mark must also be managed and maintained. One of the best ways to protect a valuable mark is to have it declared incontestable by the USPTO. After a mark has been registered for at least five years, the mark owner may file a declaration under section 15 of the Act. This declaration will state that the mark has been registered for five years and has been continually used by the owner during that five year period. After this declaration is filed, the mark automatically becomes ?incontestable.? A declaration of incontestability offers many advantages to the trademark owners. When a trademark becomes incontestable, a third party may no longer challenge certain things about the registration. For instance, a third party may no longer claim that the mark was improperly registered or challenge the ownership of the mark. With an incontestable mark, a third party loses the affirmative defense that the mark is merely descriptive of the goods or services. In litigation over an incontestable mark, a defendant may not oppose a request for injunctive relief even if the mark has not yet been used in a particular geographical area. But even an incontestable mark is still open to some challenges. An incontestable mark may still be attacked on the grounds of abandonment, functionality, genericness, or fraud. Accordingly, careful policing of the mark is still necessary, even after it has become ?incontestable.?

Full post as published by Business and Technology Law on February 19, 2008 (boomark / email).