Incontestable Status: What it is and why trademark owners want it

Incontestable Status: What it is and why trademark owners want itAny time you claim rights in a trademark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may use the federal registration symbol “®” only after the USPTO has actually granted a federally registered trademark or service mark.[1] But even after obtaining a federal registration another critically important step exists: apply for incontestable status.

Importance of a Federally Registered Trademark

You do not need to have a federally registered trademark in order to have at least some trademark rights, but a federally registered trademark can and will provide significant benefits. See State vs. Federal Trademarks: Which is right for your business?

For example, obtaining a federal registration makes the trademark much stronger when litigated, and provides rights that extend throughout the entire United States and not just in the particular geographical area of use, as is the case with state trademarks. Furthermore, a federally registered trademark will bolster any claim that is made for any resulting potential consumer confusion.

To obtain a federally registered trademark, which is a very good idea for all businesses, you either (1) start using the slogan, name or logo in commerce (i.e., some kind of commercial use) and then subsequently file a trademark application; or (2) file an intent to use application, which will lock in your filing date but does not require immediate use.

After you obtain your federal trademark you are not done. You must continue to use the trademark in commerce, not allowing it to go abandoned. You must also police the trademark so that it continues to be associated with only your goods and products. You also must file additional paperwork with the USPTO periodically through the life of the trademark to allow the Trademark Office to know that you are still using the trademark and it remains in force.

Incontestable Status

One thing trademark owners are not required to do, but absolutely should do, is file for what is called incontestable status. Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which the exclusive right to use a registered trademark in commerce can become incontestable.  If the owner of the registration files an affidavit or declaration stating that the trademark has been in continuous use in commerce for a period of five years after the date of registration, the trademark can become incontestable.

The affidavit or declaration to obtain incontestable status must be filed within one year after the expiration of any five-year period of continuous use following registration or publication. See 37 C.F.R. 2.167(f). Generally speaking, trademark owners should docket five years after registration in order to file the required paperwork to obtain incontestable status.

Among other requirements for incontestable status, the trademark owner must certify that there has been no final decisions adverse to the owner’s claim of ownership in the trademark, 37 C.F.R. 2.167(d), and that there are no pending proceedings involving the trademark rights pending at the USPTO or in a court. 37 C.F.R. 2.167(e).

“To me, incontestable status is important as it removes the ability for the trademark to be cancelled by the Trademark Trial and Appeal Board for descriptiveness,” said attorney Mark Malek of Widerman Malek, the attorney who has represented IPWatchdog, Inc. relating to trademark matters.

Incontestable status, while valuable, does not prevent any and all challenges to a trademark.

“The use of the term incontestable is a bit misleading,” Malek explained.  “If incontestable status is granted, the trademark validity can still be challenged, but it is much harder for the challenger to prevail, but the trademark is not immune from possible cancellation.  A trademark can still be challenged as being generic, or having been abandoned, or if it can be proved that there has been fraud on the Trademark Office.”

Despite the fact that incontestable status does not make the trademark immune from all possible challenges, the most problematic challenges from a trademark owner’s perspective are gone. Proper policing will ensure that a trademark does not become generic,[2] and use ensures there cannot be an abandonment of the trademark. Therefore, as long as you do not commit fraud on the Trademark Office, a properly policed and used trademark becomes difficult, if not virtually impossible, to challenge.

Trademark owners should always apply for incontestability. IPWatchdog, Inc. owns three separate federally registered trademarks (Registration Nos. 4178707, 4178901, and 4178915), each of which have just been granted incontestable status.


[1] Generally speaking the term “trademark” relates to both trademarks (i.e., a mark associated with goods) and a service mark (i.e., a mark associated with services). The rules and regulations are the same, and for that reason I will use the term “trademarks” throughout this article to cover both trademarks and service marks.

[2] A trademark becomes generic if the mark becomes synonymous with the category of goods or services. For example, once upon a time “escalator” was a trademark, but the term became synonymous with all moving stairs and the trademark was lost. See TMEP 1209.01(c)(i).


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One comment so far.

  • [Avatar for John L. Welch]
    John L. Welch
    February 1, 2018 05:32 am

    “To me, incontestable status is important as it removes the ability for the trademark to be cancelled by the Trademark Trial and Appeal Board for descriptiveness.” Not so. First, trademarks are not cancelled, registrations are. Second, and more importantly, Section 14’s 5-year statute of limitations shields a registration from cancellation on descriptiveness grounds, regardless of whether a Section 15 “incontestability” declaration is filed.

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