Incontestable Trademarks

Federal trademark registration provides certain protections to businesses and other registrants who use and own trademarks and service marks to promote their goods and services. These protections are strengthened when a trademark becomes “incontestable” five years after its registration. Once a mark becomes incontestable, its validity cannot be challenged on a variety of grounds which often haunt other marks not deemed incontestable. Incontestable marks are immune to certain challenges, including that the mark is primarily merely descriptive and that it lacks secondary meaning. Therefore, a potential infringer of an incontestable mark cannot defend itself by claiming the mark is merely descriptive. Incontestable marks, however, are not truly “incontestable.” Such marks can still be canceled if the mark is abandoned, becomes generic, or was obtained or is used fraudulently.
To become incontestable, a mark must be registered with the United States Patent and Trademark Office (USPTO) and must have been used continuously for five years following the registration. The owner of the mark must also submit an affidavit to the USPTO, along with a fee, that lists the goods or services on which the mark is used and states that no dispute regarding the ownership rights of the mark is pending or decided in favor of an opposing party. This affidavit must be filed no later than one year after the end of the five year period of continuous use.
If you own a registered trademark, obtaining incontestability provides additional protection for your mark and your underlying brand. Should you require assistance managing your trademarks or have questions regarding registration or incontestability, the attorneys at Janssen Malloy LLP stand ready to assist.