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Understanding Incontestability Declarations for Federal Trademark Owners

Understanding Incontestability Declarations for Federal Trademark Owners

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What is an Incontestability Declaration? 

An incontestability declaration is a legal statement filed by a trademark owner under Section 15 of the Lanham Act (15 U.S.C. §1065). This declaration asserts that the trademark has been in continuous use in commerce for five consecutive years following its federal registration and that there are no pending legal challenges against it. Although not required, if filed and once accepted, the trademark gains “incontestable” status, providing stronger protection against certain legal challenges. 

Why is an Incontestability Declaration Useful? 

Incontestability is useful for a number of reasons. Here are a few: 

  1. Enhanced Legal Protection: An incontestable trademark is immune from certain legal challenges, such as claims that the mark is merely descriptive or lacks distinctiveness. This status significantly strengthens the trademark owner’s rights and reduces the risk of costly legal disputes.
  2. Increased Market Confidence: Businesses and consumers often view incontestable trademarks as more reliable and established. This perception can enhance brand reputation and consumer trust.
  3. Deterrence of Infringement: The incontestable status serves as a powerful deterrent against potential infringers, as it signals robust legal protection and the likelihood of successful enforcement actions.

When to File an Incontestability Declaration?

To file an incontestability declaration, the trademark must meet the following three criteria:

  1. Continuous Use: The trademark must have been in continuous use in commerce for at least five consecutive years following its federal registration.
  2. No Legal Challenges: There must be no pending legal proceedings or adverse decisions against the trademark’s validity.
  3. Timely Filing: The declaration must be filed within one year after the expiration of any five-year period of continuous use following registration.

Examples of Incontestability Declarations 

Imagine a company, “EcoTech Solutions,” registered its trademark for eco-friendly cleaning products in 2018. By 2023, the trademark has been in continuous use for five years, and there are no legal challenges against it. EcoTech Solutions files an incontestability declaration with the USPTO. Once accepted, their trademark gains incontestable status. If a competitor argues that “EcoTech Solutions” merely describes the type of products offered (eco-friendly technology solutions), they might claim the mark is descriptive and not eligible for trademark protection without proof of secondary meaning. EcoTech Solutions can confidently defend its mark, knowing it has the enhanced legal protection of incontestability status. 

Now, consider another company, “GreenWave Innovations,” which registered its trademark for renewable energy solutions in 2018. By 2023, although the trademark has been in continuous use, GreenWave Innovations decides not to file an incontestability declaration. In 2024, a competitor challenges the trademark, claiming it is merely descriptive. Without the incontestable status, GreenWave Innovations faces a more challenging legal battle to defend its trademark and will potentially incur higher legal costs. This is because descriptive marks can only gain trademark protection if they acquire a secondary meaning, meaning that consumers associate the mark with a particular source over time. Without this secondary meaning, the mark remains descriptive.  

Conclusion 

Filing an incontestability declaration is a strategic move for federal trademark owners. It provides enhanced legal protection, boosts market confidence, and deters potential infringers. By understanding the requirements and benefits of incontestability, businesses can better protect their valuable trademarks and maintain a strong brand presence in the market. 

If you need assistance with your incontestability declaration, request a call from the Off the Mark team.

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