Once a trademark has been successfully registered, the owner is required to manage, maintain, monitor and enforce the mark. One step too few owners fully take advantage of is to have the mark deemed “incontestable” by the USPTO. An “incontestable” trademark means that the use of the mark in connection with the registered goods and services cannot be the subject matter of a court challenge nor raised as an affirmative defense in an infringement case.
A declaration of incontestability offers advantages to the trademark owners:
- certain assumptions about the registration may no longer be challenged, e.g., registration having been improperly granted in light of the existence of a registered trademark that is “confusingly similar”, or challenges to the ownership of the mark
- in infringement and other litigation, the defendant loses the affirmative defense that the plaintiff’s mark is “merely descriptive” of the goods or services, and the defendant also loses the ability to oppose a request for injunctive relief involving certain geographic issues .
The process: After registration for at least five years, the mark owner may file a declaration under section 15 of the Lanham Act (the federal trademark statute). The declaration states that the mark has been registered for five years and has been continually used by the owner during that five year period. The owner must also provide some evidence of use (e.g. a picture of the goods or advertising).
After this declaration is filed, the mark automatically becomes “incontestable.”
Some challenges are still available versus an incontestable mark: It may still be attacked on the grounds of abandonment, functionality, being “generic”, or fraud. In other words, careful policing of the mark is still necessary, even after it has become “incontestable.”