After 5 years of registration, a trademark on the principal register at the USPTO is eligible to receive “incontestable” status.

What is incontestable status?

  • The incontestable rights are provided under the law in Section 15 of the Lanham Act (15 U.S.C. Sect. 1065).
  • An incontestable mark cannot be challenged unless
    • it has become generic,
    • it has been abandoned, or
    • it was obtained by fraud.

How do I get incontestable status?

  • A registered mark can file for incontestable status after 5 years of registration.
  • The owner must sign a declaration stating that has been continually used by the owner during that five year period.
  • The registration must not be subject to a legal challenge or decision against it.

Why does this matter?

An example: when Park ‘N Fly, Inc. sued Dollar Park and Fly, Inc. for trademark infringement, the Supreme Court ruled that because the Park ‘N Fly mark had obtained incontestability status, Dollar Park and Fly, Inc. could not claim that its rival’s mark is descriptive and weaker. (Park’N Fly v. Dollar Park and Fly 469 U.S. 189 (1985))

In short, having an incontestable trademark registration could save tens of thousands or dollars – not to mention the hours and headaches – in a trademark dispute. It is an added layer of insurance for the investment in your trademark and your brand.

TIP: While filing a declaration of incontestability is not required, it is advisable. When a trademark has been used and registered for five years, the owner has already invested quite a lot in the brand. Generally, the investment to make the registration incontestable provides a good value.

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