Should I File as an Incontestable Trademark?

We know that a Federal Trademark Registration provides protection for your brand. But did you know there are additional steps that can strengthen that registration? One of those additional steps is filing for trademark incontestability. When your trademark is incontestable, you obtain even more advantages in the instance of a dispute.

What is an incontestable trademark?

An incontestable trademark is a mark that has been registered and in use for five (5) years. An the status of an incontestable trademark is conclusive evidence that the trademark registration is valid, and the registrant owns it.

What are the benefits of getting a trademark declared incontestable?

Incontestable trademark status means the markholder gets heightened protections against trademark disputes. Namely, this means that

  1. It is easier to prove that you are, in fact, the owner of the mark;
  2. You as the owner have the exclusive rights to that mark;
  3. Any infringer is limited in their ability to say the trademark is invalid or was issued improperly (in most cases); and
  4. A third party cannot challenge your mark or lack of distinctiveness or descriptiveness.

Taken together, this means that it’s a lot harder for someone to challenge your trademark, and it saves the markholder time and money in potential court proceedings.

How Do I obtain Incontestable trademark status?

Markholders can file for incontestability using the Sect. 15 filing, otherwise known as a “Declaration of Incontestability,” and pay the $200 filing fee. When filing the Sect. 15 filing/ Declaration of Incontestability, the markholder must swear to the following:

  1. The mark must be registered on the Principal Register (Supplemental marks must move to the Principal Register first before being declared incontestable);
  2. The trademark must have been in continuous use for at least five (5) consecutive years from the date of registration;
  3. The trademark must have been/ must be in use for each separate product or service claimed in the Declaration of Incontestability;
  4. There cannot be any pending legal actions or lawsuits opposing to the trademark owner’s claim of ownership over the trademark.

How is incontestability different than a trademark renewal filing?

Great question!

A trademark renewal filing (also called a Section 8 and/ or Section 9) is a mandatory filing due after year 5, year 10, and every 10 years thereafter to show that you’re still using the trademark. If you don’t file the renewal filings, your mark will be cancelled.

Filing for an incontestable trademark, called a “Declaration of Incontestability,” is an optional filing (also called a “Section 15”). You may file for incontestable status, but you don’t have to. Typically, it’s highly recommended. However, limitations like financial bandwidth or pivots in brand products or services can delay a filing for incontestability.

At your first renewal, you have the option to file a Section 8 (Renewal) and Section 15 (Declaration of Incontestability) together, which saves time and streamlines the process. The filing’s official name is the “Combined Declaration of Use & Incontestability under Sections 8 & 15

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