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.
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.
A Whistleblower Just Filed a Complaint Against Your Company: Here's What to Do Now
Few situations create more uncertainty than learning that an employee has filed a whistleblower complaint. Questions arise immediately: Is the allegation legitimate? Should the employee be placed on leave? Do we need to notify our insurance carrier? Are we now prevented from disciplining the employee if there are unrelated ongoing work related issues? There is […]
Assignment for the Benefit of Creditors: An Alternative to Bankruptcy for Distressed Businesses
When a business reaches the point where it can no longer service its debts or otherwise resolve its liabilities, management is often faced with a difficult question: is a bankruptcy filing necessary or is there another way to perform an orderly liquidation or sale of the business assets? While Chapters 7 and 11 of the […]
Breaking Down New Jersey’s “Mansion” Tax: What Buyers and Sellers Need to Know
For many years, the New Jersey Mansion Tax has been a significant consideration in high-value real estate transactions. Recent legislative changes, however, have substantially altered how the tax operates, including who is responsible for paying it and the amount owed in certain transactions. Whether you are purchasing, selling, or investing in New Jersey real estate, […]
Estate Planning for Digital Assets Under New Jersey Law
As our personal and financial lives increasingly move online, estate planning must evolve to address a new category of property: digital assets. From email accounts and social media profiles to cryptocurrency and cloud-stored business records, these assets often carry both financial and sentimental value. Yet, without proper planning, they can become inaccessible—or even lost—upon incapacity […]
The Role of Representation and Warranty Insurance in M&A Transactions
In today’s mergers and acquisitions market, representation and warranty (R&W) insurance has become a common feature of deal negotiations. Once used primarily in larger transactions, R&W insurance is now frequently incorporated into middle-market deals as buyers and sellers look for efficient ways to allocate risk and close deals. When structured properly, R&W insurance can help […]
You Just Received a Federal Grand Jury Subpoena in New Jersey: Now What?
Receiving a federal grand jury subpoena is not something most businesses or individuals anticipate. While it can be concerning, a federal grand jury subpoena does not necessarily mean that you are being accused of wrongdoing. It does, however, mean that a federal criminal investigation is underway and that federal prosecutors believe you may possess information […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
