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Protecting Your Creativity: The Power of Incontestability

Posted by attorney Steven Rensch

Protecting Your Creativity: The Power of Incontestability

To this point, I have covered what a trademark is, how the public policy rationale influences the need for trademark infringement protection, the requirements for a mark to be registered, and the first of two major benefits to registration. Today I explain the second major benefit of registration—Incontestability.

Generally speaking, in a suit for trademark infringement, the person claiming infringement must first prove that the mark is valid, and that she is the rightful owner of the mark. After all, if the person claiming infringement is not the rightful owner of the mark, or if the mark is not a valid trademark, that person’s rights cannot be said to have been infringed.

However, if the owner of the mark registered the mark, the validity and ownership issues can become incontestable. How does the mark become incontestable you ask? First, once the application for registration is filed, five years of continuous use must pass without a challenge to the application. Second, after the five years of continuous use passes, an owner must then file an affidavit with the United States Patent and Trademark Office (USPTO). Once the affidavit is filed, the mark becomes incontestable. Again, an “incontestable mark" is one in which a person cannot challenge a mark’s validity or ownership.

A mark’s incontestable validity is the true golden nugget. Remember from the discussion about distinctiveness that one of the categories of distinctiveness included marks which were not inherently distinctive but which could acquire sufficient “secondary meaning" to make the mark sufficiently distinctive. Proving that a mark has acquired sufficient secondary meaning is always tough. However, if a mark has become incontestable, it alleviates the need to prove such secondary meaning. That is, because the mark is incontestably valid, there no longer is a need to prove sufficient distinctiveness.

Therefore, we have now examined the two major advantages to registration. Next, I take up the final topic in the trademark series- duration.

Steve Rensch and Zach Price

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