“Incontestable” Marks

Most people do not spend time reviewing on a regular basis the Official Gazette, which is the official journal of the United States Patent and Trademark Office. The Gazette is published every Tuesday and it contains information regarding each 348a493e61cfae49154d887ed0ad3ccb_400x400patent granted and trademark published. And because most people do not review it weekly, a person can possibly miss out on the opportunity to bring an opposition to the registration within the required timeframe. Section 15 U.S.C. 1604 allows during the first 5 years of a mark’s registration for a person to bring forth a petition to cancel the mark if they believe that they injured by the mark’s registration.
After 5 years of continued use from the time of registration a mark can be declared “incontestable.” A mark can obtain this status if the owner of the mark files what is called a §15 Declaration. A §15 Declaration is a sworn statement claiming “incontestable” rights in the mark for the goods or services identified.
However, “incontestable” does not really mean that. It really means “more difficult to contest” because a mark can still be challenged after 5 years. If a person misses this 5 year window, the Lanham Act restricts the grounds on which a mark can be challenged. The policy behind this is that a registrant of a mark should have some confidence in their mark’s registration and be allowed to invest money and resources into using it. After 5 years the only challenges to a mark’s validity that are left are:
1. The mark has become generic;
2. The mark is functional;
3. The mark has been abandoned;
4. The registration was obtained through fraud;
5. The mark is deceptive, scandalous, or disparages a person or includes the name, likeness, or signature of a living person without their written consent, or of a deceased U.S. President without the written consent of his or her surviving spouse; or
6. The owner has made improper use of the mark or has failed adequately to police others’ use of it.
The ways to challenge a mark that “disappear” after 5 years are the mark is not inherently distinctive and lacks secondary meaning; the mark is confusingly similar to a mark or trade name to another’s mark; and the mark is dilutive of the challenger’s senior mark.

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