What is “incontestability”?

What does it mean for a US trademark registration to be “incontestable”? 

US trademark law offers what I call a “breathe easy” date that is five years after the grant of registration.  Under US law someone seeking to cancel a US trademark registration by means of a TTAB cancellation proceeding has a fairly long list of potential grounds for cancellation so long as the proceeding is filed within five years of registration.  (Let’s call this “the TTAB long list”.)  But the list of available grounds for cancellation by means of a TTAB cancellation proceeding gets much shorter after five years have passed.  (Let’s call this “the TTAB short list”.)  In colloquial terms the owner of the trademark registration gets to breathe easy once five years have passed, because the TTAB short list is a lot shorter than the TTAB long list.

Well, the owner gets to “breathe easy” as regards would-be cancellation proceedings before the TTAB.  But the TTAB is not the only place where a member of the public can try to get a registration canceled.  The other place is a US district court, where the list of grounds available to a member of the public that wants to try to get a registration canceled is generally the same as the TTAB long list.  This list of court grounds does not automatically get shorter at five years the way it does for a TTAB proceeding.

Which is where a Section 15 filing comes in.  US law permits the owner of a trademark registration to file what is called a “Section 15” filing under certain circumstances.  When this is filed, the registration becomes “incontestable”.  For a trademark registration that has become “incontestable”, the list of grounds available to a member of the public that wants to try to get it canceled in court is roughly the same as the TTAB short list.

Clearly for any owner of a US trademark registration that thinks there is some chance someone might seek to cancel its registration, it would be extremely helpful to arrange to be “incontestable”.

Not only that, any registration owner that thinks it might some day need to write a cease-and-desist letter would want to be “incontestable”, because it makes the letter scarier to be able to say this.

So why doesn’t every owner of a US trademark registration arrange to be incontestable?

One reason is that the Section 15 filing costs money, and the owner of the registration might not feel like spending the money.  One cost is the government fee cost, which is $200 per class.  Another cost, for an owner that hires a trademark practitioner, is the professional fee to carry out the Section 15 filing.

A second reason is that you can only (legally) do a Section 15 filing if you happen to be able to say that you have been using the mark continuously and exclusively for the past five years.  Not everyone could say such a thing.  It depends upon the facts of a particular trademark owner’s situation.

Back to the professional fee that a practitioner might charge for doing a Section 15 filing.  As it happens, the USPTO provides two convenient online forms in which a Section 15 filing is combined with something else that you might already file for a separate reason (namely a Statement of Use to maintain a registration in force).  For an ordinary US trademark registration this is a so-called “8 and 15 filing”.  For a Madrid Protocol trademark registration this is a so-called “71 and 15 filing”.  So the handy thing is that if a practitioner is attending to a Section 8 filing or a Section 71 filing for a client, it’s not much extra work for the practitioner to use the corresponding combined form instead.  This provides an economical way for a trademark owner to achieve incontestability.  (Here is a blog article about gaining incontestability economically.)