In the United States, businesses are granted exclusive rights to their brand identifiers by trademark law. One of the most powerful tools available to trademark owners is the Section 15 Declaration, which can bestow “incontestable” status upon a trademark pursuant to 37 CFR § 2.167. This blog post considers what a Section 15 Declaration is, why incontestability is vital, what presumptions it provides, how you can still challenge an incontestable trademark, and other key maintenance filings you need to know about, such as Sections 8 and 9.

What Is a Section 15 Declaration?

A Section 15 Declaration, filed under the Lanham Act, is a sworn statement that says a federally registered trademark has been in use for at least (5) five consecutive years after registration and has not been abandoned. While this declaration is optional, it is typically filed along with the Section 8 renewal. It can only be filed within one year of any five year period after registration assuming the use has been consecutive and continuous of all goods and services listed in the description. It offers significant benefits and allows a trademark owner to bolster its legal standing in a way that makes it far less vulnerable to challenges.

What Is Trademark Incontestability?

When a trademark reaches incontestable status, it is no longer open to challenge in certain respects. Those challenges might have been brought by a competitor, say, who wanted to use a similar mark—and they would have claimed that the mark was merely descriptive and lacked distinctive character. But at this point, defending the mark in court becomes easier for the holder and more difficult for the challenger.

Rights and Benefits of an Incontestable Trademark

A trademark that is incontestable provides the owner with some very important legal presumptions, among them:

• Presumption of ownership and exclusive rights to use the mark in trade for the specified goods or services.
• Presumption of registration and validity of the trademark.
• Improved safeguards against particular legal challenges, wherein being descriptive or undistinguished are prohibited claims.
• Enhance the credibility of enforcement actions, allowing us to stop unauthorized use by our competitors.

After five years of registration, the grounds on which a trademark may be challenged (or cancelled) become more restricted. For example, you can no longer argue that the trademark is merely descriptive in connection with the goods and services; or that it is simply a geographic place associated with the goods/services, or that it is primarily merely a surname. Significantly, a prior common law user could not be able to cancel an incontestable trademark on the basis of likelihood of confusion. But the senior common law use can still possibly serve as a defense.

How Can an Incontestable Trademark Be Challenged?

Even with the strong protections provided by incontestability, some grounds for contesting a mark still exist under Section 14(3) of the Lanham Act. These are:

1. Genericness: The brand has turned into the name for the goods or services that it stands for.
2. Functionality: The mark has a function; it does something. Or, more accurately, it does what a visual mark is supposed to do: identify something. It identifies something in a very specific way.
3. Abandonment
4. Fraud: Obtaining registration through deception.
5. Misuse: the registrant misrepresents the source of the goods or service, possibly misleading consumers regarding the true origin of the products.
6. The registration of the mark contravened various sections of the Lanham Act. These sections relate to the registration of marks that are immoral, deceptive, or scandalous; disparaging; or that falsely suggest a connection with persons, institutions, beliefs, or national symbols. Also contravened are sections pertaining to the use of the flag or coat of arms of the United States, any state, or foreign nation. Or the mark was registered in violation of provisions to certification and collective marks.
7. Without the consent of a living person, the mark has the name, portrait, or signature of that individual, which is a simple violation of trademark law unless express permission is obtained.

Trademarks on the Supplemental Register

Marks on the Supplemental Register cannot achieve incontestable status. They never become that, because they are not trademarks that can be registered on the Principal Register, and they are not trademarks that can achieve the status of “incontestable” (which is, in effect, the status of a trademark where it is a kind of presumption of validity, and it is not challengeable except on very limited grounds).

Other Important Trademark Maintenance Filings: Sections 8 and 9

Owners are required to satisfy regular renewal and preservation conditions in order to ensure that they have federal trademark protection.

• Section 8 Declaration (Declaration of Continued Use): A required filing between the fifth and sixth year after registration, necessitating the proprietor to prove that the trademark is still being used in commercial channels.
• Section 9 Renewal: A renewal request is required for every ten years to keep the trademark registration from becoming “inactive”. The Section 9 is filed in conjunction with the Section declaration of continued use at the ten-year mark. Failing to file either will lead to cancellation or your registration.

Conclusion

A powerful strategy for reinforcing and securing brand identity is the powerful tool of filing a Section 15 Declaration to obtain an incontestable trademark. Yet, as with any trademark, vigilance is the price of liberty: simply obtaining an incontestable trademark via a Section 15 Declaration does not guarantee that the trademark will be maintained or even be valid. There are several reasons for this, but only the most relevant to the trademark owner will be mentioned here.

For assistance with Section 15 filings and registering and enforcing trademarks, as well as maintaining them, reach out to Cohen IP Law Group to ensure your brand is safely secured.