INCONTESTABLE TRADEMARKS FORTIFY YOUR POSITION
So, you have been granted a registered trademark from the United States Patent and Trademark Office – well done. Fortunately, (or unfortunately, depending on your perspective) trademark law has adopted the undeniably important maxim, “If you don’t use it, you lose it.” Thus, the USPTO wants to make sure that the trademark applicant not only used the trademark in commerce at the time of receiving its trademark registration; the trademark holder has to continue to use the trademark in commerce.
Why is the five-year anniversary of your trademark registration a particularly noteworthy milestone? Perhaps most importantly, your first trademark renewal is due where you will need to both affirm that your mark is still in use in commerce and submit a specimen which illustrate its use in commerce. But beyond that, and for the purposes of this article, your trademark is eligible to become an “incontestable mark” at the five-year mark, provided you’ve been using it on a consistent basis.
The incontestable trademark is an important status that should be aspired by every trademark owner when their marks are due for renewal.
WHAT IS AN INCONTESTABLE TRADEMARK?
Generally speaking, an incontestable trademark gives your trademark heightened protections against trademark disputes. In order to enjoy all of the benefits of an incontestable trademark, the owner must maintain the use and distinctiveness of the trademark in the United States. When does the period of “incontestability” begin?
As outlined in TMEP 1904.11:
Under §73 of the Trademark Act, 15 U.S.C. §1141m, if a holder files an affidavit that meets the requirements of §15 of the Trademark Act, a registered extension of protection to the United States may become “incontestable”. The period of continuous use on which an affidavit of incontestability may be based may begin no earlier than the date of issuance of the registered extension of protection, unless the holder owns a prior U.S. registration of the same mark for the same goods/services/collective membership organization. 15 U.S.C. §1141m-n. See TMEP §§1605 et seq. regarding the requirements for an affidavit of incontestability under §15 of the Trademark Act.
There are additional nuances and details about how incontestable trademarks are defined, but for the purposes of this article, the basic definition given is sufficient.
It should be mentioned that the term “incontestable” is a bit of a misnomer as it gives the impression of an iron-clad trademark that cannot be challenged by anyone, ever. That’s not exactly true as we’ll see later in the article.
WHAT ARE THE ADVANTAGES OF AN INCONTESTABLE TRADEMARK
Once a trademark has incontestable status, the owner of that mark enjoys a series of presumptions including the following:
- The trademark is registered and valid.
- The stated owner of the trademark is indeed the owner.
- The owner of the mark has the exclusive right to use it with any goods or services.
Here’s an example for clarification:
Imagine that a company owns “PowerUp Protein Powder” as a trademark. After five years, the company renews the trademark, and filed for (and received) incontestability status for the mark.
A year later, PowerUp, notices a new protein powder one the marked called “PoweredUpside Protein.”
With an incontestable trademark in hand, PowerUp can demand that their competitor (who is using a mark which may very likely trigger a “Likelihood of Confusion” concern), stop using the name.
The courts will see the incontestable trademark as conclusive proof that PowerUp has the valid trademark and the exclusive right to use that trademark with its registered product.
This is important for two reasons:
- It saves time and money. Without an incontestable trademark, PowerUp would likely have to invest a tremendous amount of resources to satisfactorily prove that the mark is, in fact, theirs. However, with an incontestable trademark, they can quickly and definitively prove they are the rightful owners of the trademark.
- It deters potential infringers. Most competitors would rather change the name of their product than take up a legal battle with a company that owns an incontestable trademark.
Like insurance, Incontestable trademarks simply make your life easier if the need ever arises.
WHAT ARE THE REQUIREMENTS FOR OBTAINING INCONTESTABILITY STATUS?
Incontestable status has powerful benefits, but it’s not easy to gain the distinction. A trademark must meet the following requirements in order to be considered incontestable:
- The trademark must have been in continuous use for at least five consecutive years from the date of registration and must still be currently in use.
- The mark must have been in use for each separate item claimed in the Declaration of Incontestability. For example, let’s say PowerUp started selling protein powder in 2010, then started making protein bars in 2012. PowerUp can only include the protein powder when applying for incontestable trademark status in 2015. Or, they could wait until 2017 and include both products in the application.
- There must be no final or pending decisions in opposition to the trademark owner’s claim of ownership before the United States Patent and Trademark Office (USPTO) or U.S. courts.
- A mark must be registered on the Principal Register (those marks which are descriptive and therefore registered on the Supplemental Register are not eligible).
HOW IS A TRADEMARK RENEWAL DIFFERENT FROM FILING FOR INCONTESTABILITY STATUS?
Quite simply, they serve different purposes and provide different protections. Filing the necessary Trademark Renewal documents simply satisfy the statutory duty of showing continued use in commerce. However, filing for incontestability increases the actual weight and power of the trademark in any given future dispute.
A trademark owner is required to renew his or her trademark between the fifth and sixth year following the original date of registration. The mark owner must then continue to renew the trademark every ten years after that. Failure to renew will result in the trademark being canceled
On the other hand, a Declaration for Incontestability is not required. You can file for incontestable trademark status on, or any time after, the five-year anniversary of the original date of trademark registration. You need only file one time for incontestable status. No renewals required
SO, SHOULD I FILE FOR INCONTESTABILITY STATUS?
Like most answers provided by your attorney, the answer is, “it depends”. Do you think your mark may be the subject of a pending infringement by an aggressive competitor? Filing your trademark as an incontestable trademark doesn’t make it bulletproof, but it’s a powerful part of an overall strategy to protect your trademark and make your life easier if you ever find yourself in court.
Still, determining if your trademark is eligible for incontestability and subsequently filing the requisite paperwork is an involved process and should be done in concert with a trademark attorney. Have questions? We want to know!