FOR LAWYERS

Incontestable Trademark

By
Lia Kopin-Green
/
September 1, 2022

What is an Incontestable Trademark?

An incontestable trademark is a mark that is generally immune from being challenged. After five years of consecutive use from the date of federal registration with the United States Patent and Trademark Office (USPTO), a trademark becomes eligible for incontestability. Incontestable trademarks are typically immune as long as they have not become the generic term for the goods, the mark has not been abandoned for nonuse, and the registration was not acquired on fraudulent grounds.

You can request federal incontestability by filing a Declaration of Incontestability between the fifth and sixth anniversary of the federal trademark registration.

Key Takeaways

  • Incontestable trademarks are usually immune from being challenged.
  • Five years after a trademark is registered with the USPTO, it becomes eligible for incontestability.
  • You can apply for federal incontestability by filing a Declaration of Incontestability with the USPTO.

Understanding Incontestable Marks

The term "incontestability" may give the impression that a trademark is invincible, but what it actually means is that it is simply much more difficult to challenge. A trademark owner may try to prove incontestability in infringement cases. If he or she can prove that the mark is incontestable, it will be deemed valid unless the opposing party can establish a variety of circumstances, including but not limited to:

  • Fraud was involved in obtaining the registration or the incontestable right to use the mark.
  • The mark has been abandoned since its registration.
  • The mark misrepresents or is deceptive regarding its product or service.
  • The mark contains immoral or scandalous matter
  • The mark is being used to violate United States antitrust laws.

Advantages of Incontestable Marks

In the event of a lawsuit regarding trademark infringement, holding an incontestable status provides significant advantages. Some of its benefits include:

  • Saving Time and Money: if someone files a lawsuit involving an incontestable trademark, the defendant does not need to waste unnecessary time and money proving that he or she owns the trademark. Obtaining incontestable status allows one to quickly prove that they own the rights to the trademark.
  • Deterrence: Incontestable trademarks are considered stronger in status than traditional trademarks. Competitors may tread carefully to avoid entering a legal battle involving an incontestable mark.
  • Immunity: It is true that incontestability does not entitle a mark to immunity from all types of challenges, but it does provide protection against challenges to its distinctiveness or descriptiveness, for example.

Bottom Line

Once your trademark reaches its fifth birthday, you may want to consider filing a Declaration of Incontestability. As long as the mark fulfills the requirements for incontestability according to federal intellectual property law, you will be granted immunity from a variety of legal challenges.

Whenever you are dealing with intellectual property laws, it is advisable to hire an excellent intellectual property attorney in your area. Oftentimes, even straightforward laws can have hidden requirements or consequences. A professional attorney will help you avoid any issues you may run into while dealing with intellectual property.

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