You may see several indicators of trademarks in the wild. Either ™, ℠, or ®. ™ and ℠ indicate trademarks and service marks, respectively. These marks alert the public — and one’s competitors — of your trademark claim, regardless of any application or registration for federal trademark protection. The ® mark can only be used when the United States Patent and Trademark Office has granted you a federal trademark or service mark registration. However, achieving federal trademark registration is not the last step in fully protecting your brand. Indeed, you should apply for incontestable status when eligible.
Why Have a Federal Registration
There are common law trademark rights available to brand owners who don’t have a federal registration. Nonetheless, federal registration provide significant benefits that brand owners cannot find with a mere common law trademark.
Specifically, a federal registration gives a trademark much more strength and protection in the case of litigation, and provides that strength throughout the entire nation.
Even still, achieving a federal trademark registration is not the end all be all. Indeed, you must continue to use the trademark in commerce to retain the benefits of registration; you must police the trademark and ensure competitors don’t start using it; and you must file renewal paperwork with the USPTO every so often, to let the USPTO know that the trademark is still being used.
Incontestability
However, owners of federal trademark registration are not required to file for incontestable status. Even though it’s not a requirement, a trademark owner absolutely should file for this status when eligible. 15 U.S.C. § 1065 provides the ability to convert a registered trademark into an incontestable trademark. If a trademark owner files an affidavit or declaration stating that they have been using the trademark continuously for five years since the registration date, the trademark can become incontestable.
This affidavit must be filed within a year after the expiration of any five-year period of continuous use, after the registration/publication. In practical terms, this affidavit should be filed when the trademark owner filed for their first 5 year renewal.
There are some caveats to achieving incontestability status, however. For instance, the trademark owner must declare that no final decisions adverse to the trademark owner has been rendered, and that no such proceedings are pending in court or before the USPTO. See 37 C.F.R. 2.167(d)–(e).
So, what does this all mean? It means that it is impossible for the Trademark Trial and Appeal Board to cancel a trademark registration on the basis of descriptiveness.
However, this status does not prevent all potential challenges to a trademark’s registration. Indeed, the validity of even an incontestable trademark can be challenged and potentially invalidated on the basis that is is generic, abandoned, or that fraud was committed on the USPTO.
Nevertheless, incontestable status removes the major headaches from the trademark maintenance process. If an owner is vigilant and properly polices its mark, it can ensure that the mark doesn’t devolve into being generic, and continuous use ensures that the trademark will not go abandoned. Thus, so long as a trademark owner doesn’t commit fraud on the USPTO and properly polices its trademark, post-registration, it becomes much, much, much more difficult for an incontestable trademark to be invalidated or cancelled.
This is why it’s very important that trademark owners apply for incontestability when eligible. If you need help obtaining a federal trademark registration or incontestable status, you can contact the professional attorneys at Law Offices of John D. Gugliotta, P.E., Esq., LPA. Our trademark attorneys can help you secure the federal trademark registration and incontestable status. Contact us today here, or call us at (888) 298-8580.
*The Law Offices of John D. Gugliotta, P.E., Esq., LPA publishes this blog for educational purposes only, not to provide specific legal advice. By using this blog site you indicate that you understand there is no attorney-client relationship between you and the Law Offices of John D. Gugliotta, P.E., Esq., LPA. This blog should not be used as a substitute for obtaining legal advice from a licensed attorney. In addition, statements made on this blog represent the viewpoints of the individual authors, and do not necessarily reflect the views of Law Offices of John D. Gugliotta, P.E., Esq., LPA or any of our clients.
