A trademark that has been registered on the Principal Register and in use in commerce consistently for five consecutive years is eligible to file for incontestability. This makes such trademarks immune from some of the most frustrating challenges from other trademarks and their owners.
First, the things that Incontestability do not immunize a trademark completely from are:
- Cancellation because of fraudulent procurement (either of the mark or of incontestability);
- Allegations of the mark being misrepresentative;
- Allegations that the mark is reserved or prohibited by federal trademark law;
- Allegations that the mark is merely an individual using their own name for business activities;
- Earlier use or registration;
- Antitrust violations;
- A bar due to the functional aspect of the mark; and
- Equitable principles such as acquiescence, laches or estoppel;
The benefits of filing for incontestability are that the mark cannot normally be challenged based on:
- The validity of the trademark;
- The distinctiveness of the trademark;
- The registration of the trademark; and
- The ownership of the trademark the exclusive rights of the owner of the mark to use the trademark on their goods and services.
So, while incontestability does not make your trademark permanently and completely invincible, it does confer some benefits on a trademark owner that can save a lot of time and money if there ever is a legal challenge. If you own a registered trademark that has been in use consecutively for at least five years, it is definitely worth it to file the appropriate documents with the USPTO to make that mark incontestable. Ideally, this is done at the same time as the first renewal, which is due between the fifth and sixth year after the trademark has been registered.
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