Section 15 of the Trademark Act, 15 U.S.C. §1065 permits a registrant to file an Affidavit whereby one's trademark rights become "incontestable" for the goods or services identified in the registration. A registrant may file an Affidavit of Incontestability five years after the trademark registration date if certain criteria are met. In order to file the Affidavit (1) there can be no final decision adverse to the registrant's claim of ownership or right to register the mark; (2) there can be no court action or Board Proceeding (TTAB Proceeding) pending involving the trademark; (3) the mark cannot be generic; and (4) it must be filed within one year of any five year period subsequent to registration where there has been consecutive and continuous use of the trademark. This means that all the goods and services listed in the registration must have been in continuous use over the past five years and certain goods and services must be excluded from the Affidavit, if the use for those goods and services were not in consecutive use.
This filing is optional and not mandatory. Typically, practitioners recommend that clients file an Affidavit of Incontestability because it is a persuasive tool used in Cease & Desist demands. If an alleged infringer receives an attorney's letter that states that the subject mark is a federally registered trademark that maintains "incontestable" status, it is possible that the recipient of the demand may cease using the similar trademark based on the language used in the demand correspondence.
There are significant benefits to acquiring incontestable status. Once an Affidavit of Incontestability is filed the registration shall be conclusive evidence of the validity of a registered mark, the registrant's ownership of the mark, and the registrant's exclusive right to use the mark in commerce. However, the name of the Affidavit is misleading. It sounds as if the registration will not be able to be disputed for any reason. This is not the case.
The status of incontestability protects the registrant against challenges of descriptiveness. Once the Affidavit is filed the registration can not be challenged any longer due to the claim that the trademark is merely descriptive of the goods or services, that the mark is a geographic place that will convey a goods-place or a service-place association in the consumer's mind and lastly the mark cannot be challenged for being primarily merely a surname.
Other grounds for challenging a registration will be available even if the trademark acquires incontestability status. Some of these grounds include: (1) fraud; (2) abandonment; (3) false suggestion of a connection; (5) functionality; (6) genericness etc. There is another provision of the Trademark Act (Section 14) that eliminates certain grounds for challenging a trademark registration at the United States Patent & Trademark Office once the registration is five years old. See our web page entitled, Challenging Trademark Mark Rights After Five Years of Registration for more details on this subject.
Often, there is confusion between these two sections of the Trademark Act. Section 14 of the Trademark Act eliminates the two most common grounds for challenging trademarks, likelihood of confusion and descriptive grounds. Sections 14 & 15 of the Trademark Act (The Lanham Act) operate independent of each other. The difference between the two sections is that Section 14 of the Trademark Act applies in cancellation actions before the Trademark Trial and Appeal Board (the "Board" or "TTAB") and not in federal court actions. To be able to assert the defense of incontestability in federal court actions, a registrant must file an Affidavit of Incontestability under Section 15 of the Trademark Act.
It should be noted that trademarks on the Supplemental Register are not entitled to file Affidavits of Incontestability. Moreover, if the mark you wish to cancel is on the Supplemental Register, than there are no restrictions pertaining to the grounds that can be used to challenge the mark. If you have questions pertaining to filing an Affidavit of Incontestability or questions regarding the grounds available to challenge a trademark, kindly contact our firm to schedule a courtesy consultation to discuss your trademark matter.