While most people realize that they need to file trademark maintenance documents after the fifth year of registration, many fail to take advantage of the opportunity at that time to gain heightened protection for their mark by having the mark acknowledged as “incontestable.” The incontestable designation enhances ownership status and serves as a greater deterrent to infringers. Marks registered but not acknowledged as incontestable are presumed to be distinctive (a requirement for trademark registration and enforcement) in a court of law, but this presumption can still be challenged. Marks that carry the “incontestable” designation carry greater weight because the registration itself is deemed conclusive evidence without more. This translates on a practical level into savings of time and money on proof of ownership issues in the event of litigation.

In order to be acknowledged as incontestable, a mark must meet the following criteria:

• There have been no final legal decisions against the validity of the mark or registration.
• There are no pending challenges to the registration.
• A declaration meeting the requirements of §15 of the Lanham Act has been filed.
• The mark is not generic.
• The mark has been in continuous use in commerce for five years.

While there are still some types of challenges that can be made to an incontestable mark, incontestability provides immunity from being challenged on the basis of descriptiveness, which is one of the two most common objections to trademark registrations.

If you’d like more information regarding the incontestable designation, please contact us at (248) 477-6300 or info@wrightbeamer.com. We’d love to help!