A Section 15 Incontestability is a legal status that can be obtained by the owner of a registered trademark with the United States Patent & Trademark Office (USPTO). It is established under Section 15 of the Lanham Act, which governs trademark law in the United States.
In order to obtain incontestable status, the owner of a registered trademark must file a declaration with the USPTO, which must include a verified statement that the mark has been in continuous use in commerce for at least five consecutive years since the date of registration. The declaration must also be filed within the window of the fifth and sixth year of registration. Once the declaration is accepted, the mark will be entitled to incontestable status.
The main benefit of incontestable status is that it provides the owner with a number of legal presumptions, such as a presumption that the mark is valid, that the registrant has the exclusive right to use the mark in commerce, and that the registrant has the exclusive right to use the mark in connection with the goods or services listed in the registration. Additionally, it makes it more difficult for third parties to challenge the validity of the mark on certain grounds.
It is worth to notice that a Section 15 Incontestability can be combined with a Section 8 Declaration of Use, a requirement to show that the mark is still in use in commerce. To file a Combined Declaration, the owner must have used the mark in commerce for at least five consecutive years since the date of registration, and the mark must not be the subject of any pending litigation or opposition proceedings. The declaration must be filed within the window of the fifth and sixth year of registration.
As noted above, it is important to note that failure to file the required maintenance documents and fees by the deadline will result in the cancellation of the trademark registration. Additionally, USPTO sends out reminders to the owner of the trademark, or the trademark attorney of record, on the 5th year anniversary date of the trademark registration.