Eligibility for the Section 15 Declaration
Trademark registrants who have successfully navigated the initial hurdles of trademark registration are eligible to file a Section 15 Declaration of Incontestability. This declaration is available for trademarks that have been in continuous use in commerce for five years after the date of registration. It's important to note that not all trademarks automatically qualify for this status; they must be inherently distinctive and have maintained their distinctiveness over the years.
Legal Benefits
The primary legal benefit of filing a Section 15 Declaration of Incontestability is the strengthening of a trademark's legal standing. Once granted, this declaration serves as conclusive evidence of the exclusive right to use the registered mark in commerce. This means that the validity of the mark and the owner's exclusive rights to it are considered beyond question in court. Incontestability acts as a shield against many potential challenges to the trademark's validity, including claims based on descriptiveness or likelihood of confusion.
Furthermore, incontestable trademarks gain immunity from certain types of challenges, such as claims that the mark is merely descriptive or that it has become a generic term. This immunity can save trademark owners both time and resources that would otherwise be spent defending against such challenges.
Strategic Benefits
From a strategic standpoint, the Section 15 Declaration offers trademark owners multiple advantages that can enhance their market position:
Deterrence: An incontestable trademark sends a strong message to potential infringers and competitors that the mark's validity and exclusive rights are firmly established. This can discourage unauthorized use and reduce the likelihood of disputes.
Licensing and Franchising: Incontestability can make a trademark more attractive for licensing and franchising opportunities. Potential partners are likely to have greater confidence in a mark that has been granted this status.
Investment and Valuation: Incontestability can add significant value to a brand, making it more appealing to investors, lenders, and potential buyers. This can be especially beneficial in cases where the trademark is a valuable asset of the business.
Global Protection: Incontestability can also facilitate the process of obtaining trademark protection in foreign jurisdictions. Some countries may recognize the mark's status as incontestable and give it greater weight when assessing registration applications.
Trademark Enforcement: When pursuing legal action against infringers, the incontestable status simplifies the legal process and may lead to quicker resolutions, as the validity of the mark is already established.
Costs
For most clients, we typically file the declaration of incontestability when we are filing a trademark renewal. We charge an additional $99 and there are $200 in government fees. You will have the option of adding incontestability filing service to your trademark renewal order when we collect your payment information. The Declaration may be filed during either the 6th year or 10th year renewal.