Filing for Trademark Incontestability

Trademark incontestability offers stronger legal protection for valuable, existing trademarks. The USPTO certifies trademarks as incontestable upon request, but there are some specific requirements. Understanding how trademark incontestability works, as well as what its benefits include, can help you decide if your trademark is in need of this kind of protection.

When and How Can a Trademark Become Incontestable?

After your trademark has been registered for five years, you can request that the USPTO certify it as incontestable.

How should you proceed if you are ready to request incontestability? When your trademark has been registered for five years you must file both a Declaration of Use and a Declaration of Incontestability.

To simplify matters, you may desire to file a combined declaration. According to 15 U.S.C. § 1058 and 1065, “You may file a Combined Declaration of Use & Incontestability under Sections 8 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration. You must file the Combined Declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration.” For an additional fee, you can also file the Declaration of Use within a six-month grace period following the sixth anniversary date.

What are the Benefits of Trademark Incontestability?

If your trademark becomes certified as incontestable, its validity cannot be questioned. This creates a stronger legal protection for the mark if a company ever infringes your trademark. As an example, if your trademark is incontestable, a third party can no longer claim the mark was not registered properly or challenge its ownership.

Still, incontestable marks are not immune to all attacks. They may still challenged on the grounds of fraud, abandonment, genericide and functionality. For this reason, even incontestable marks need to be carefully policed.

If you need help with any parts of the trademark process, whether it is registering your trademark for the first time, requesting incontestability or policing a mark, I would be happy to assist you. Please feel free to contact me anytime.

Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.