Trademark practitioners located in the United States and Canada, or those who work with counsel in these countries to obtain and enforce trademark rights, are likely to come across the concept of “incontestability” or the term “incontestable mark” at some point in their practice.
The intricacies of incontestable status, including how it is achieved and when it can be used to benefit a trademark owner, can prove elusive to some degree to trademark practitioners. Adding to the confusion is the fact that the word “incontestable” is actually somewhat of a misnomer, because an incontestable mark is not, in fact, immune from all challenges. Further, while legislation in both countries uses “incontestable” to describe certain registrations, the benefits afforded an incontestable mark in Canada are much more limited than those in the United States. Incontestability arises more frequently in connection with U.S. marks, as it is part of the post-registration process. By contrast, in Canada fewer practitioners or trademark owners are likely to have had experience claiming incontestability, as it arises only when a third party is challenging a registered mark based on the third party’s prior use of a confusing mark. As is discussed below, there is no “one size fits all” approach to incontestability. Instead, incontestability should be considered as part of an overall trademark strategy, rather than as a complete safeguard for shielding marks from successful challenges.
What are the requirements for achieving incontestability?
In the United States, a trademark registration becomes incontestable after the filing of a Declaration under Section 15 of the Lanham Act, 15 U.S.C. § 1065. In order to meet the requirements of Section 15, the mark must have been in continuous use for at least five consecutive years from the date of registration, and must still be currently in use in commerce. The Section 15 Declaration also requires verification that “there has been no final decision adverse to the owner’s claim of ownership of such mark for those goods or services, or to the owner’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the Patent and Trademark Office [USPTO] or in the courts.” Marks registered on the Supplemental Register are not eligible to achieve incontestable status; therefore, the USPTO will not accept Section 15 Declarations for these marks.
Because this time frame coincides with the deadline for filing the Declaration of Continued Use under Section 8 (15 U.S.C. § 1058), which is due between the fifth and sixth years of registration, a combined Section 8&15 Declaration can be filed as long as there has been no interruption in use. Keep in mind that there is no actual “deadline” for filing a Section 15 Declaration. Instead, it can be filed within one year after the expiration of any five-year period of continuous use that has occurred following registration.
If all of the above requirements are met, the USPTO will issue a Notice of Acknowledgment of the Section 15 Declaration and note it on the record. A Section 15 Declaration can be filed only once during the life of a U.S. registration.
In Canada, a trademark registration is considered incontestable five years after the date of registration pursuant to Section 18 of the Trademarks Act. By contrast with the United States, in Canada there are no statutory filing requirements.
What are the benefits of incontestable status, especially when enforcing a mark?
If a Section 15 Declaration has been filed in conjunction with a U.S. registration, it can no longer be cancelled by the USPTO Trademark Trial and Appeal Board on the ground that the mark is descriptive. An incontestable registration can also be used as the basis for injunctive relief in an infringement action before the U.S. courts. In addition, incontestability status is considered to be conclusive evidence of the following rights (subject to certain limitations):
1. The validity of the registered mark;
2. The registration of the mark;
3. The owner’s ownership of the mark; and
4. The owner’s exclusive right to use the mark with the registered goods and services.
These are valuable enforcement tools in a trademark owner’s arsenal and provide persuasive language to include in a cease and desist letter. Furthermore, the owner of a mark that may be vulnerable to cancellation based on descriptiveness may be wise to file the Section 15 Declaration sooner rather than later to secure the benefits of incontestability status.
In Canada, after the expiration of five years from the date of registration, no trademark registration can be expunged, amended or held invalid on the ground of the previous use or making known of a third party’s confusing trademark, subject to the exception discussed below. This is the sole benefit of an incontestable registration in Canada.
Is registration necessary to claim incontestability?
In the United States, registration is necessary to obtain incontestable status, and only the filing of a Section 15 Declaration provides conclusive evidence of the rights enumerated above. However, regardless of whether a Section 15 Declaration is filed, Section 14 of the Lanham Act, 15 U.S.C. § 1064, provides that a cancellation action against a registered mark may be filed only within five years from the date of registration, except for those grounds that can be brought “at any time.” These include that the registered mark has become generic, is functional, has been abandoned, was obtained fraudulently, and others—but not that the mark is descriptive—effectively resulting in the registrations becoming incontestable.
In Canada the concept of an incontestable mark applies only to a registered mark.
Are there defenses to incontestability, and if so, when can they be used?
Section 33 of the Lanham Act, 15 U.S.C. § 1115, enumerates several defenses to incontestability in the United States. These include fraudulent registration, abandonment, misuse of the mark to misrepresent the source of goods and services, and that the mark is functional. In addition, U.S. courts are split as to the weight that should be accorded an incontestable registration when examining the strength of a mark for purposes of determining likelihood of confusion. Some courts have treated incontestability as an indication of strength, while others have held that it is relevant only to the validity of the registration and not as a measure on the distinctiveness continuum.
In Canada, an incontestable registration can be challenged for prior use or making known of a third party’s confusing trademark only if the third party can prove that the registrant adopted the registered mark with knowledge of the third party’s mark. As will be appreciated, proving that the registrant had actual knowledge of a third party’s mark can be quite difficult, so a party challenging a registration based on prior use of a confusing trademark should try to commence an action before a registration becomes incontestable. Conversely, an owner who is seeking to enforce a registration may want to delay sending a cease and desist letter or filing a court action if the registration is close to but has not yet reached the fifth-year anniversary date of the registration.
Are there traps for the unwary in claiming incontestability?
In the United States, the trademark practitioner not only should verify with the client that all of the statements in the Section 15 Declaration are true, but also should take care to confirm that the mark has been used continuously for five consecutive years on all of the goods and services in the registration. If not, the Declaration cannot properly be filed for those particular goods or services.
As there are no statutory filing requirements in Canada and a registration automatically becomes incontestable five years after the registration date, there are no issues surrounding achieving incontestability in Canada.
What is the biggest misconception about incontestability?
As it affects U.S. practice, the biggest misconception is that incontestability prevents all challenges to a mark. As explained above, the protections afforded an incontestable mark are nevertheless a valuable enforcement tool for U.S. trademark owners. It is also important to remember that an incontestable mark may still be attacked on grounds such as abandonment or genericness. Therefore, a trademark owner should always be mindful to use its mark properly and of its obligation to police others’ uses of the mark to prevent loss of rights.
In Canada, the use of the term “incontestable” is quite misleading, as the benefit of an incontestable registration relates only to challenges based on prior use or making known of a third party’s trademark. All other types of challenges against registrations that have not yet become incontestable can also be made against incontestable registrations.
In sum, the term “incontestable trademark” may sound more formidable than it actually is, and, indeed, such status does not provide a complete bar to challenge of the mark by others. The requirements for achieving incontestable status, as well as the way in which the doctrine is applied, differ greatly in the United States and Canada. Therefore, while trademark owners may be aware of the potential benefits for having an incontestable registration in one country, they should also be aware that those same benefits do not apply to registrations in both countries. These differences highlight the need to work with local practitioners to understand the nuts and bolts of incontestability in the particular jurisdiction in which the mark is registered.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2014 International Trademark Association