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

Asked over 1 year ago - 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)

  1. Philip Leon Marcus

    Contributor Level 16

    8

    Lawyers agree

    Answered . 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-... more
  2. Frank A. Natoli

    Pro

    Contributor Level 20

    7

    Lawyers agree

    Answered . 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... more
  3. Clark AD Wilson

    Contributor Level 13

    4

    Lawyers agree

    Answered . 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... more
  4. Daniel Nathan Ballard

    Contributor Level 20

    2

    Lawyers agree

    Answered . 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... more
  5. Bruce E. Burdick

    Pro

    Contributor Level 20

    1

    Lawyer agrees

    Answered . 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... more

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