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My trademark is up for renewal, should I file a Declaration of Incontestability or will a Declaration of Continued Use be fine?

Fairfield, CT |

My trademark is up for renewal, should I file a Declaration of Incontestability or will a Declaration of Continued Use be fine? I understand that the Declaration of Incontestability is something that is receommended but funds are a bit tight right now, and I don't see there being any struggles with the name on the horizon. If I don't file a Declaration of Incontestability now, would I still be able to file one at a later time? Thanks in advance!

Attorney Answers 5

Posted

The Declaration of Incontestability is only a $200 government fee. If that is too much, then you will have to wait. If it is not, then there is really no reason not to file it.

This comment is NOT LEGAL ADVICE. The question asker and any third-party reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to confirm the accuracy of this comment.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Being able to file a Sect. 15 is one of the primary reasons to obtain a Federal trademark/servicemark registration. Delay is risky not only for the client but for the attorney, as it's arguably malpractice.

Posted

If you do not file the Continued Use with its fee then you will eventually be cancelled for abandonment. Do not let that happen.

The other form can wait until you have more money.

Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.

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Bruce E. Burdick

Bruce E. Burdick

Posted

I really think the Declaration of Incontestability [ "Section 15" or "Section 1065" or "15" or "1065"] is not one a lawyer should ever recommend can wait. The benefits of filing and are just too significant not to file it as soon as possible. The main benefit is that a 15 removes 15 USC 1052(d) [third party priority of use] as a basis for cancellation of your mark. A 15 thus cuts off and extinguishes prior uses as doing anything except perhaps getting a concurrent reg. There is no acceptable excuse in my view to delay in doing that. The attorney who recommends delay and then sees his client's registration cancelled by some third party prior user who comes out of the woodwork despite 5 years of continuous post registration use by the client will be thinking, and rightly so, about possibly defending a potential malpractice claim by the ex-registrant client. I recall an ex- partner of mine ("we called him the snake oil salesman with a law degree") getting hit for five figures on such a claim, and the word quickly spreading around St. Louis about the "big buffoon". I don't want to let that be any of my Avvo colleagues!!

Posted

Hi,

Consider your trademark an investment and think just how foolish you would feel if some mark holder was able to support a petition to cancel because no Section 15 was filed.

A declaration of incontestability offers many advantages to the trademark owners. When a trademark becomes incontestable, a third party may no longer challenge certain things about the registration. For instance, a third party may no longer claim that the mark was improperly registered or challenge the ownership of the mark. With an incontestable mark, a third party loses the affirmative defense that the mark is merely descriptive of the goods or services. In litigation over an incontestable mark, a defendant may not oppose a request for injunctive relief even if the mark has not yet been used in a particular geographical area.

Is it likely you will have a problem? No, I would say probably not. Is it possible? Yes, of course.

If your funds are very tight this may not be a priority right now, but I think it is a very valuable threshold to cross regards to your trademark's integtrety and you should certainly make certain you get to it.

Best regards,
Frank
Natoli-Lapin, LLC
(see Disclaimer)

The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Well put. I think delaying a Sect. 15 would likely be malpractice, and actionable malpractice if the client loses a registration as a result of such delay.

Posted

Q: "If I don't file a Declaration of Incontestability now, would I still be able to file one at a later time?"
R: Yes. A Section 15 Declaration of Incontestability can be filed within one year after any five-year period of continuous use of the mark.

So: You use a mark for five years and within the next you can file a Section 15 Declaration of Incontestability [that is, within year 6]. If you don't file, and if you use the mark for antother five years [ten total] you can still file within a year after that five-year period of use [that is, within year 11]. You may NOT file during any other year.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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Bruce E. Burdick

Bruce E. Burdick

Posted

What? That last sentence is just flat wrong. A section 15 Decl. can be filed anytime after 5 years of continuous post registration use. You file it in year 6, 7, 8, 9, 10, etc. or anywhere in between provided you have 5 years continuous post registration use to declare. See TMEP 1605.03 which expressly states ". . . This may be any five-year period after the date of registration. . ." I have separately filed dozens of Section 15 Declarations during years other than 6 or 11 without problem.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

You're right Bruce. A Section 15 Declaration can be filed after any period of 5 year use.

Bruce E. Burdick

Bruce E. Burdick

Posted

Thanks.

Posted

Yes, you can file a Sect. 15 anytime, starting year six following registration, if you have 5 years of continuous use to declare. You should reconsider your decision and file that 15 the first chance you can. It is a very valuable document that significantly strengthens your registrations. If you get challenged you will rue the day you decided not to file that Dec. You do not know when the challenge is coming generally, so realize you are taking a legal risk if you delay.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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