After a trademark has been registered for at least five years, a trademark is eligible to become incontestable. However, do not confuse incontestability with unstoppable or untouchable. Rather, incontestable trademark registration provides owners with the fact that their registration can no longer be challenged based on priority or descriptiveness. Indeed, this is a huge win for trademark owners, whose marks are registered on the Principal Register.
How Does a Trademark Become Incontestable?
Overall, after five years of being registered, the owner files a Section 15 declaration. Specifically, the declaration includes
- The registration number and date of registration;
- The filing fee; and
- A signed declaration stating that:
- Continuous use in commerce for five years;
- That there have been no legal challenges to the mark by third parties; and
- There are no pending legal challenges to the mark.
How Can an Incontestable Trademark Be Challenged?
In particular, having an incontestable registration does not make your registration immune to challenge. Rather, it limits the two most common forms of challenges: priority and descriptiveness. Specifically, challenges to incontestable trademarks may be brought for:
- Generic marks;
- Falsely suggests a connection with a person(s), institution, beliefs, or symbols;
- Misrepresentation of the source of the goods; and/or
- The registration lacks the consent from a living person to use their likeliness.
Overall, trademark owners should always file a Section 115 declaration after five years of use. Specifically, by removing two of the most common challenges to a registered trademark, incontestable trademarks have a shield to fend off challengers. Setting a docket entry or calendar reminder is a great way to remind owners of this important deadline.