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US Companies Can Make Their Trademark Incontestable


April 10, 2018
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Is Your Company’s Trademark Incontestable?

Is your company’s trademark incontestable? While US business owners generally understand the benefits of federally registering their trademarks, many are unaware that you can go one step further in protecting your intellectual property rights.

Is Your Company's Trademark Incontestable?

Photo courtesy of Dan Schiumarini (Unsplash.com)

Benefits of Federal Trademark Registration

Most US businesses have a brand name, slogan or logo that distinguishes their products or services from everybody else. Over time, trademarks can become one of your most valuable assets.

In the US, businesses can establish legal rights in a trademark based on use of the mark in commerce without seeking registration with the U.S. Patent and Trademark Office (USPTO). However, it is advisable to take the time to file a formal registration. The benefits of federal trademark registration include a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, as well as the ability to bring an infringement action and use it as evidence in federal court.

Section 15 Declaration

After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. While trademark owners need not pursue a Declaration of Incontestability, it does afford greater legal protection.

Pursuant to Section 15 of the Trademark Act, 15 U.S.C. §1065, the owner of the registration must file an affidavit or declaration stating that the trademark has been in continuous use in commerce for a period of five years after the date of registration. The specific requirements of the Section 15 Declaration include:

  • The Section 15 Declaration must specify the goods, services, or nature of the collective membership organization recited in the registration on or in connection with which the mark has been in continuous use in commerce for the five-year period after the date of registration and is still in use in commerce.
  • The Section 15 Declaration must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods, services, or collective membership organization, or to the owner’s right to register the mark or to keep the mark on the register. It must also state that there is no proceeding involving these rights pending in the USPTO or the courts. 
  • The Section 15 Declaration must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20by the owner of the registration or a person properly authorized to sign on behalf of the owner of the registration.  A “person who is properly authorized to sign on behalf of the owner” is: (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner. 

If the right to use the mark has become incontestable under Section 15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce. Of course, it is important to highlight that an incontestable trademark is not completely ironclad. An incontestable mark that becomes generic or has been abandoned may be canceled at any time. Other potential legal challenges include allegations that a trademark is being used to misrepresent the source of the goods or services in connection with which it is used, or it was obtained fraudulently.

When seeking to make your trademark incontestable, it is advisable to work with an experienced New York intellectual property attorney who can walk you through the process. Contact us to find out how we can help.

If you have any questions about your company’s trademark, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Bill Samuels, or the Scarinci Hollenbeck attorney with whom you work at 201-806-3364.

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