When you have something worth protecting with a trademark, why stop there? If your trademark meets certain eligibility requirements, you may be able to make it “incontestable.”
A declaration of incontestability is a legal status granted to a registered trademark by the United States Patent and Trademark Office (USPTO). Essentially, it provides the trademark owner with a higher level of legal protection and certainty regarding the validity and enforceability of their mark. When a trademark is declared incontestable, it becomes a lot more difficult for third parties to challenge the mark’s validity in court.
What makes a trademark eligible for incontestability?
Not all trademarks are eligible for a declaration of incontestability. To qualify, a trademark must meet specific criteria, including:
- The trademark must have been registered with the USPTO for five consecutive years.
- The trademark must have been in continuous use for the five-year period following its registration.
- During the five-year period of continuous use, the trademark must not have been the subject of legal decisions that adversely affect your rights.
- You, as the trademark owner, must have properly filed and maintained the trademark registration throughout the five-year period.
- You must file a Section 15 declaration declaring your right to the mark between the trademark’s fifth and sixth anniversaries (with the possibility of a six-month grace period for late filing).
The advantages of incontestable status for a trademark can be significant. Once you have it, your trademark has a presumption of validity, which means it becomes immune to legal challenges based on the idea the mark is merely descriptive, generic or has no secondary meaning. This can broadly deter legal challenges and make it easier to defend against any that do arise. It can also make it easier for you to enforce your trademark against anybody who infringes upon it.
A declaration of incontestability can enhance trademark protections and give you additional peace of mind, but trademark law is incredibly complex. Even though it can be easier and more straightforward to defend your mark, trademark actions are never “do-it-yourself” kinds of situations. You will almost certainly benefit from seeking legal assistance when you are trying to make sure that your trademarks are properly protected.