In our previous articles (part one, part two and part three), we discussed ways in which trademarks are maintained and protected through filings that are mandatory and which filings would result in abandonment or cancellation if not timely submitted.
There are also optional filings a trademark owner can take advantage of to optimize and secure its rights under a U.S. trademark registration. An Affidavit of Incontestability Under Section 15 is one such method. Once registered on the Principal Register, if a mark has been in continuous use for at least five consecutive years, the owner may submit a Declaration of Incontestability, also referred to as a Section 15 Declaration or Affidavit. Incontestability offers several advantages. Specifically, third parties can no longer challenge either registrant’s ownership of the trademark or the validity of the mark itself on the basis that it is merely descriptive of the goods or services or was improperly registered.
One may file a Section 15 Declaration any time after the five-year continuous use. While the Affidavit may be filed separately, it is commonly combined with the six-year Declaration of Continued Use under Section 8. The United States Patent and Trademark Office (“USPTO”) does not acknowledge a Section 15 Affidavit unless a use affidavit is pending or has been accepted. The USPTO confirms that the Section 15 filing is facially sufficient and then updates the registration record to reflect receipt of the Section 15 Declaration. It does not review Section 15 filings for substantive issues. Therefore, whether the registration is actually incontestable is determined only if the mark is challenged in a court or administrative proceeding before the Trademark Trial and Appeals Board (“TTAB”).
The Section 15 Affidavit (or declaration) must be filed along with a filing fee (currently $200), and submitted by the owner of a trademark registration after the mark has been in continuous use in commerce for at least five consecutive years after the date of registration. It must specify the goods or services with which the registered mark has been in continuous use for at least five consecutive years after the date of registration. If some but not all of the associated goods qualify at the time of filing, the trademark owner can file more than one Section 15 Affidavit at different times to cover different goods or services, The declaration must state:
- The mark is still in use in connection with those goods or services,
- There has been no final decision adverse to the owner’s claim of ownership of the mark for the covered goods or services; and
- There is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of.
If you have any questions about trademark or patents, please feel free to contact us.