The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark incontestable. The Section 15 Declaration may only be filed if (1) the mark is registered on the Principal Register (not the Supplemental Register), (2) the mark is still in use in commerce, and (3) the mark has been in continuous use for five consecutive years subsequent to the date of registration. Once the USPTO acknowledges the Section 15 Declaration, the trademark owner’s right to use its mark in commerce in connection with the products/services listed in the registration becomes incontestable.
What are the Benefits of an Incontestable Trademark?
Once a registered mark has become incontestable, the trademark registration is considered conclusive evidence of (1) the validity of the registered mark, (2) the owner’s ownership of the mark, and (3) the owner’s exclusive right to use the registered mark in commerce. What does this mean from a practical standpoint? Well, it means that if the owner of an incontestable trademark ever needs to sue someone for trademark infringement, all the owner needs to do is present its trademark registration to the court. The owner doesn’t have to spend considerable time and money actually proving to the court that the trademark is valid, that it is the owner of the trademark, or that it has the exclusive right to use the trademark. And the best part is that the defendant cannot claim otherwise.
As you can see, the Section 15 Declaration of Incontestability provides the trademark owner with significant power and leverage over an alleged infringer. As such, I always recommend that the owner of a registered trademark file the Section 15 Declaration as soon as the mark becomes eligible for incontestable status.
Other Requirements for Filing the Section 15 Declaration
Besides the requirement of continuous use over five consecutive years, the Section 15 Declaration may only be filed if (1) there has been no final decision adverse to the owner’s claim of ownership in the mark or the owner’s right to maintain registration of the mark, and (2) there is no pending legal proceedings in a court or in the USPTO that involves the owner’s claim of ownership in the mark or the right to maintain registration of the mark. In other words, if a third-party has filed a trademark infringement lawsuit or trademark cancellation against the owner of the trademark registration, the owner may not file the Section 15 Declaration until such legal proceeding has been resolved and the owner has successfully defended its rights to the trademark. If a court or the USPTO rules against the owner, then the owner is precluded from filing the Section 15 Declaration.
Furthermore, the Section 15 Declaration must be filed within one year of the expiration of any period in which there was five consecutive years of continuous use. So, for example, let’s say that the registration date of your trademark is January 15, 2005. You sporadically (not continuously) used your trademark between the registration date and March 5, 2008 (a little over three years). Then, beginning on March 5, 2008, you continuously used your trademark for five consecutive years (March 5, 2013). You now have until March 5, 2014 (one year) in which to file the Section 15 Declaration. If you don’t file the Section 15 Declaration within that year, then you have to wait to file the Declaration until you have another period of five consecutive years of continuous use.
Finally, you may only file the Section 15 Declaration if the mark was in continuous use for five consecutive years in connection with ALL of the products/services listed in the registration. So, for instance, if your trademark registration covers “shirts” and “hats,” but you only have continuous use of your mark for five consecutive years in connection with “shirts,” then you must (1) not include “hats” in the Section 15 Declaration, or (2) wait to file the Declaration until you have continuous use of your mark for five consecutive years in connection with both “shirts” and “hats.”
Questions About the Section 15 Declaration?
I’m US trademark attorney Morris Turek. If you have questions about the Section 15 Declaration of Incontestability, or perhaps need some assistance with properly preparing and filing the Section 15 Declaration, please contact me at your earliest convenience. You can reach me via email (firstname.lastname@example.org), by phone at (314) 749-4059, or by using my contact form at the bottom of this page. I look forward to speaking with you soon.