Becoming Incontestable

Trademark incontestability is a status that provides an extra layer of protection to a registered trademark. If a trademark is declared incontestable, it becomes immune to certain challenges and can only be invalidated under limited circumstances. Obtaining incontestability for a trademark requires meeting certain requirements and following specific procedures.

person standing on a mountain or rock with their arms raised in success

Trademark incontestability is a status that provides an extra layer of protection to a registered trademark. If a trademark is declared incontestable, it becomes immune to certain challenges and can only be invalidated under limited circumstances. Obtaining incontestability for a trademark requires meeting certain requirements and following specific procedures.

What is Trademark Incontestability?

Trademark incontestability is a legal status that can be obtained for a registered trademark. It provides the trademark owner with additional protection against challenges to the validity of the trademark. Once a trademark is declared incontestable, it is presumed to be valid, and the trademark owner is no longer required to prove the validity of the trademark in court.

Incontestable trademarks are also immune to challenges based on descriptiveness, geographic significance, or other similar grounds. However, incontestability does not provide protection against challenges based on issues such as fraud, abandonment, or improper registration.

How to Obtain Incontestability for a Trademark

To obtain incontestability for a trademark, the trademark owner must meet certain requirements and follow specific procedures. These include:

  1. Continuous Use: The trademark must have been in continuous use in commerce for at least five consecutive years since its registration.

  2. Declaration of Incontestability: The trademark owner must file a Declaration of Incontestability (also referred to as a §15 declaration) with the USPTO. This declaration must be filed between the fifth and sixth years after the trademark registration date, and it is typically filed at the same time as the initial renewal/maintenance filing.

  3. Eligibility Requirements: The trademark must meet certain eligibility requirements, such as being in use and not being subject to any pending litigation or opposition proceedings.

  4. Fee: Just as with trademark maintenance, a fee must be paid to the USPTO at the time the Declaration of Incontestability is filed. Currently, the government charges $200 per class of goods and services for a Declaration of Incontestability. So, if you are filing a renewal + incontestability, that would presently end up costing $425 per class (not including any law firm legal fees should you file this using an attorney).

Once the Declaration of Incontestability is accepted by the USPTO, the trademark is granted incontestable status.

Benefits of Incontestability

Obtaining incontestability for a trademark provides several benefits to the trademark owner. These include:

  1. Increased Protection: Incontestable trademarks are protected from certain challenges to their validity, providing additional security to the trademark owner.

  2. Reduced Litigation Costs: Incontestable trademarks are presumed to be valid, reducing the need for costly litigation to prove the validity of the trademark.

  3. Stronger Trademark: Incontestability strengthens the trademark’s position in the marketplace, making it more valuable to the trademark owner.

In conclusion, obtaining incontestability for a trademark is a valuable tool for trademark owners looking to protect their brand. Incontestable trademarks provide additional protection against challenges to their validity and can be an asset in the marketplace. To obtain incontestability, trademark owners must meet certain requirements and follow specific procedures, including filing a Declaration of Incontestability and paying a fee to the USPTO.

Have questions? Contact us to learn more about trademark registration and renewals or how we can help you with your trademarks.