A trademark gives its owner the right to protect it, for instance, if another person attempts to register an identical/similar trademark or produces goods/provides services under such a mark. When a trademark owner tries to protect their rights to a trademark, for example, by filing an opposition to the registration of another trademark, sending a cease and desist letter, or filing a lawsuit, the opponent builds its strategy to defend against the claims. For example, the opponent may base their defense position on the cancellation of the trademark. Therefore, the trademark owner should first consider the possible actions of the opponent before taking active steps to protect the trademark. Second, the owner may preliminarily strengthen its position by filing a declaration of incontestability.
Why File Declaration of Incontestability
Filing a declaration of incontestability is not a mandatory post-registration procedure, but it has some benefits. First, if the trademark gains the status of incontestability, the registration is conclusive evidence of the trademark’s validity.
This means that the trademark owner may save time and money in trademark infringement lawsuits because their opponent has fewer grounds to contest the validity of the trademark. It also gives the trademark owner more leverage in negotiations and settlements with potential infringers. Incontestability status adds more value to the trademark in negotiations with potential investors, buyers of business or trademarks, and potential franchisees.
As noted above, such a status does not confer absolute incontestability. However, such a trademark cannot be contested on the grounds of descriptiveness and priority. Considering that many disputes in the U.S. are priority-based (who used the mark first), obtaining this status can be a significant advantage for trademark owners.
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc. is a classic example of the benefits of such registration. The plaintiff was the owner of the registered ТМ Park ‘N Fly. After 6 years of continuous use, he filed a declaration of incontestability. When the plaintiff owner found that the other person was using ТМ Dollar Park and Fly, he filed a lawsuit for infringement of his trademark rights. The defendant used several strategies in his defense, one of which was that the TM is descriptive. But the court states that ‘the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive.’ Thus, the timely filing of the declaration helped strengthen and protect the trademark from counterclaims on cancellation of mere descriptive ground.
Requirement for Incontestability Declaration
The main requirement of filing an incontestability declaration is continuous use in commerce for five years after the trademark registration. The requirement of continuous use should be noted. For example, if a TM has been used for 4 years after registration, and after 4 years the owner of the TM changed the product concept, and temporarily withdrew all products under this TM for 3 months, they will no longer be able to file an incontestability declaration in a year. The 5-year term will be calculated anew after the resumption of production under the same TM.
Also, when submitting a declaration, the owner of the TM states that:
- there is no final decision adverse to the ownership of the mark;
- there is no proceeding involving these rights pending in the USPTO or in court.
Incontestability Declaration can be filed only for trademarks registered in the principal register but not for trademarks in the supplemental register. Foreign trademark owners registered trademarks in the U.S. by Madrid protocol, can use benefits of incontestability as well.
Filing and Recording Procedure
Such a declaration is filed with the USPTO. USPTO does not conduct an examination, but if the declaration meets formal requirements, USPTO updates its records that the trademark is incontestable. Such a record provides public information that a declaration of incontestability was filed and if the question of whether the registration is incontestable arises, it will be determined by the court.
Filing declaration requires paying fees calculated according to the class ($250 per each). In general, the amount of the fee is small compared to the costs that the trademark owner may incur if its trademark is challenged, so in many cases, it is a recommended procedure for strengthening a trademark.
The declaration must relate to those goods and services for which the TM has been used for more than 5 years. If, after some time, the owner of the TM has 5 years of continuous use for other goods and services for which the TM is registered, he or she may file a new declaration in respect of those goods or services. In other words, several such declarations may be filed in respect of one TM.
Such declarations can be filed separately or combined with maintenance declarations (8 or 71).
If you are thinking about filing a declaration of incontestability or have questions regarding this matter, you can contact Mariya Ortynska to get a consultation or request this service:
Email: m.ortynska@ortynskalaw.com
Phone: +1 (914) 703-5632