Gaining incontestability economically

The majority of US trademark registrations lack “incontestable” status, because the owner of the registration has not filed “Section 15” papers at the USPTO.  (I have blogged here about what “incontestable” status means and why a trademark owner might want to gain “incontestable” status.)  In this article I will talk about ways to gain “incontestable” status economically.

As a general matter, to claim that a mark registered on the Principal Register is now incontestable, the trademark owner must be able to point to a five-year period during which the trademark owner has been making continuous use of the mark in commerce in the United States.  This five-year period must commence after the date that the USPTO granted the registration.  The trademark owner may file the Section 15 papers at any time during a one-year period after the five-year period just mentioned.

From this, it may be appreciated that the earliest that a trademark owner could file Section 15 papers is five years after the date of registration.  This earliest opportunity to file Section 15 papers is available only in the particular case where the trademark owner has been making continuous use of the mark in commerce in the US continuously since the date the USPTO granted the registration.

From this, it will also be appreciated that there may be many opportunities during the life of a US trademark registration.  The five-year period of continuous use might happen (for example) starting 8½ years after registration and ending 13½ years after registration.  If such a five-year period of continuous use were to come into existence for the trademark owner, then the Section 15 papers could be filed during the one-year period that starts 13½ years after registration and ends 14½ years after registration.

What does it cost to carry out the filing of Section 15 papers?  A trademark owner may, if it wishes, carry out a Section 15 filing pro se.  This may be done by means of a paper filing, or my be done electronically here.  If the Section 15 filing is done on paper, it will incur a government fee of $300 per class.  If the Section 15 filing is done electronically, it will incur a government fee of $200 per class.

Most trademark owners that carry out a Section 15 filing do it with the assistance of US trademark counsel.  I’d guess that most US trademark practitioners charge a professional fee to carry out the Section 15 filing.  For the trademark owner, this leads to a total cost to gain “incontestable” status that is in two parts — the government fee and a professional fee.

Which brings us to the main point of this blog article.

The USPTO e-filing system (called TEAS) offers a way that a Section 15 filing can be done at the same time as some other filing such as a trademark renewal.  Let’s call this a “combined filing”.  If the trademark owner does a “combined filing”, then the US practitioner might charge only the professional fee for the renewal.  In other words, maybe the US practitioner would not charge any additional professional fee for the fact that the filing accomplishes two things (the renewal and also the Section 15 filing).

For a “combined filing”, it will thus be appreciated that the trademark owner may be fortunate enough to be able to accomplish the Section 15 filing very inexpensively.  With the “combined filing”, maybe the trademark owner will only need to pay the government fee for the Section 15 filing but will not need to pay any professional fee.

The opportunities for a “combined filing” are the following:

  • For an ordinary (non-Madrid) US trademark registration, a “combined filing” may be done at a 5-6-year renewal (“Combined declaration of use & incontestability under Sections 8 & 15”)
  • For a Madrid Protocol US trademark registration, a “combined filing” may be done at a 5-6-year renewal (“Combined declaration of use & incontestability under Sections 71 & 15 “)
  • For a Madrid Protocol US trademark registration, a “combined filing” may be done at a decade renewal (“Combined declaration of use & incontestability under Sections 71 & 15 “)

It will thus be appreciated that the opportunity for an inexpensive Section 15 filing happens only once in the life of a regular (non-Madrid) US trademark registration, namely between the fifth and sixth years after registration.

In contrast, for a Madrid Protocol US trademark registration, an opportunity for an inexpensive Section 15 filing happens many times during its life — once between the fifth and sixth years after registration, and again during each decade renewal window (between the ninth and tenth years after registration, between the nineteenth and twentieth years of registration, and so on).

7 thoughts on “Gaining incontestability economically

  1. Where do the rules say that a Section 15 can only be applied for between the 5th and 6th years of continuous use?

    • I’m not sure if I get your point. Maybe what you are reacting to is the fact that a Section 15 can only be applied for during a one-year period that follows a five-year period of continuous use. But you get to pick when the five-year period commences. See the place in the blog article where I say “The five-year period of continuous use might happen (for example) starting 8½ years after registration and ending 13½ years after registration. If such a five-year period of continuous use were to come into existence for the trademark owner, then the Section 15 papers could be filed during the one-year period that starts 13½ years after registration and ends 14½ years after registration.”

  2. I looked it up. TMEP 1605.03 does say that you have a year to file after any 5 year period of registration. But that is a silly way to put it. Effectively, you can file a section 15 at any time after 5 years of continuous use. I note that the Affidavit form does not require you to state the 5 year period you are relying on. So the Office must interpret your affidavit as the 5 year period before the application date. Which proves my point. As a corollary, your filing can never be late.

    • I used to think that the law was as you describe. But a careful reading of the law indicates it is more complicated. For example … continuous use begins on January 1, 2012 and ceases on January 2, 2017. Now it is October 15, 2017. No use has occurred during the past nine months. Can you legally file the Section 15 today? From your characterization of the law, maybe not. But the real situation is, yes you can legally file the Section 15 today, even though the mark has not been in use for many months.

  3. I would appreciate if anyone can share specific examples of a Sec 15 filed in the PTO more than 5 years after the US trademark registration date.

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