What is Trademark Incontestability and Why Does it Matter?

Although incontestability does not mean invincibility, it's still recommended that business owners apply after five years of continuous and exclusive use.

A Section 15 declaration of incontestability is a signed statement that is generally submitted to the U.S. Patent and Trademark Office (USPTO) around five years after an individual first registers their mark.

In this statement you will claim incontestable rights to a particular trademark on the grounds that you've used the trademark continuously and exclusively for at least the past five interrupted years.

Or, as noted in in federal law, the right of a trademark owner to use the mark in commerce shall be deemed incontestable after five consecutive years of use subsequent to the date of registration, provided that:

(1) there has been no final decision adverse to the owner’s claim of ownership of such mark for such goods or services, or to the owner’s right to register the same or to keep the same on the register; and

(2) there is no proceeding involving said rights pending in the United States Patent and Trademark Office or in a court and not finally disposed of; and

(3) an affidavit is filed with the [U.S. Patent and Trademark Office] within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) hereof; and

(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.

15 U.S. Code § 1065. Incontestability of right to use mark under certain conditions

Once a trademark becomes incontestable, various aspects of your trademark's registration become incontestable in court, meaning that they cannot be challenged by third parties.

Put another way, when your mark becomes incontestable, your registration becomes conclusive evidence of the validity of the mark, as opposed to the prima facie evidence provided by normal trademark registration.

Or, in more common terms:

1. Regular trademark registration acts as prima facie evidence of your rights to the trademark, meaning that courts will assume you have rights to the mark in the event of an infringement lawsuit or similar legal matter.
2. Successfully filing for an incontestable trademark registration means that you have conclusive evidence of the validity of your mark. This means that courts will take your ownership of the mark as an indisputable fact in the event of an infringement lawsuit or similar legal matter.

Specifically, to the extent that the right to use the registered mark has become incontestable as described above, the registration itself counts as conclusive evidence of (1) the validity of the registered mark and of the registration of the mark, (2) the registrant's ownership of the mark, and (3) the registrant's exclusive right to use the registered mark in commerce.

In the event that a business infringes on such an incontestable trademark, the law limits their case to be subject to only the following defenses and/or defects:

1. That the registration or the incontestable right to use the mark was obtained fraudulently; or
2. That the mark has been abandoned by the registrant; or
3. That the registered mark is being used, by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
4. That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or
5. That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, that this defense or defect shall apply only for the area in which such continuous prior use is proved; or
6. That the mark whose use is charged as an infringement was registered and used prior to the registration under this Act or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, that this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or
7. That the mark has been or is being used to violate the antitrust laws of the United States; or
8. That the mark is functional; or
9. That equitable principles, including laches, estoppel, and acquiescence, are applicable.

For example, an incontestable mark cannot be challenged on the grounds that it is merely descriptive (as is common for trademark registrations without incontestable status).

Similarly, it cannot be challenged on the grounds that the larger, infringing brand is "more recognizable" and thus more deserving of the mark, as the very nature of incontestability precludes such defenses from ever appearing in court.

Applying for incontestability status is relatively easy, and can be completed in one of two ways:

1. Visit the USPTO website and navigate to the forms titled "Registration Maintenance/Renewal/Correction Forms."
2. Choose either (1) Combined Declaration of Use and Incontestability under Sections 8 & 15 (the recommended option), or (2) Declaration of Incontestability of a Mark Under Section 15 (if, for some reason, you want to delay filing to some later period after the initial 5-year mark).
3. Fill out all of the required form fields and questions and provide information as the entity that owns the mark.
4. Electronically sign the form and pay for the filing.

Although incontestability does not mean invincibility, it's still highly recommended that all business owners whose trademarks meet the requirements at least consider incontestability after five years of continuous and exclusive use.

Remember, however, that assessing whether a mark is eligible for incontestability can sometimes be a complex undertaking.

For this reason, it's recommended that you speak with an attorney about your application before you submit it to the USPTO.

If you have any questions about trademark law or IP law in general, please feel free to call our office at (804) 477-1720 to speak with an attorney today.