Section 15 Declarations of Incontestability vs. Standard Trademark
What is an incontestable mark? What is a declaration of incontestability? Should I declare my mark incontestable?
Let’s start with the basics: what exactly is a trademark, anyway? A trademark is “[a] word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.” [1] While you acquire certain rights to a mark when the mark is first put into use, registration “[p]rotects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.” [2]
You can only protect your trademark on a national scale by registering your mark with the United States Patent and Trademark Office (“USPTO”)—absent registration, your mark may only be protected in your geographic area. What this means is that if you sell calculators under the registered trademark AweSum calculators, you can prevent others from selling similar products under a similar mark nationwide; however, you likely cannot prevent an antique automotive appraisal service from using a similar mark, since the product is a service rather than a good, and since the service falls into a different “class” than the product you are offering.
A mark may be registered on one of two federal registers as determined by the USPTO: the Principal Register or the Supplemental Register. The Principal Register provides greater protection for marks that have the requisite distinctiveness—this includes marks that are fanciful, arbitrary, suggestive, or inherently distinctive. The Supplemental Register provides less protection and is for marks that have not acquired the distinctiveness requisite to placement on the Principal Register. A mark placed on the Supplemental Register may be moved to the Principal Register once the mark can be shown to be distinctive.
| Strong Trademarks | |||||
|---|---|---|---|---|---|
| Fanciful | Invented words. They only have meaning in relation to their goods or services. For example, Exxon® for petroleum or Pepsi® for soft drinks. | ||||
| Arbitrary | Actual words that have no association with the underlying goods or services. Think of the term "apple." If an apple orchard tried to register the word "apple" as a trademark for the type of apples they grow, that trademark wouldn't be registerable. But, Apple® has been registered as a trademark for computers. Apple® for computers is unique. | ||||
| Suggestive | Words that suggest some quality of the goods or services, but don’t state that quality of the goods or services outright. Consider Coppertone® for sun-tanning products. The trademark gives the impression that using Coppertone® suntan oil will make your skin shimmer like copper. | ||||
| Weak Trademarks or Non-Trademarks | |||||
| Descriptive | Merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. They’re only registrable in certain circumstances, such as your trademark gaining secondary meaning through extensive use in commerce over many years. | ||||
| Generic | Merely the common, everyday name for your goods or services. As such, they do not indicate source and cannot function as trademarks. Therefore, generic trademarks are not federally registrable. | ||||
| Source: [3]. | |||||
Trademarks—even if on the Principal Register—may have their validity contested legally. Such challenges are often a response to a cease-and-desist letter: that is, a letter requesting that someone using a mark similar to or the same as yours cease using the mark in a way that infringes on your exclusive rights. To protect against legal challenges, the owner of a mark on the Principal Register may file a Section 15 Declaration of Incontestability. [4] An incontestable registration “is conclusive evidence (subject to certain statutory defenses) of the validity of the registered mark and its registration; the registrant’s ownership of the mark; and the registrant’s exclusive right to use the registered mark in commerce.” [5]
Continuous use of a mark for five years is required before a declaration of incontestability may be filed. Among other requirements, a Section 15 Declaration of Incontestability “must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods or services, or to the owner’s right to register or maintain registration of the mark[, and] must also state that there is no proceeding involving these rights pending in the USPTO or in a court.” [6] A fee of $200 per class of goods or services must be paid, as well.
The importance of a Section 15 Declaration of Incontestability for trademark owners is that the Declaration creates a presumption of a mark’s validity: in other words, the burden in a court proceeding will be on the other party to demonstrate that your particular trademark is invalid. This presumption may serve to expedite the resolution of—or altogether avoid—claims of invalidity in response to a cease-and-desist letter. At minimum, a Declaration puts the owner of a mark on more solid legal ground to defend against claims of invalidity.
Do you have intellectual property in need of protection? Have you received a challenge to your use of a particular brand or product name? Contact us here to set up a quick call with one of our attorneys.
[1] USPTO, Patent, Trademark, or Copyright.
[2] USPTO, Patent, Trademark, or Copyright.
[3] USPTO, Strong Trademarks.
[4] See 15 U.S.C. §§ 1065, 1115(b).
[5] LexisNexis, Trademark Registrations: Maintenance and Renewal.
[6] LexisNexis, Trademark Registrations: Maintenance and Renewal.