October 10, 2019
Trademark Incontestability (19-10.2)
Gaining status of Incontestable is a great achievement as a trademark holder. Incontestability essentially establishes that your registered brand/mark is valid, you own it, and you have the exclusive right to use it in commerce for the kinds of goods or services for which it is classified. Most notably, once incontestability has been established, it is harder for the mark to be cancelled due to it being confusingly similar, even if it should not have been registered due to another similar mark already in use or registered. This may be especially important if your specific trademark might be descriptive, since those marks are usually more vulnerable to being cancelled before they become incontestable.
To get the Incontestable status, the trademark must be used continuously in commerce for at least five consecutive years, and file an affidavit with the PTO within one year of that five-year period. A couple of things that could prevent gaining incontestability might be things like decisions made against the ownership in the mark or the right to gain or maintain the registration, pending proceedings in the courts or the PTO pertaining to the mark, or the mark becoming generic.
Learn more: What Every Brand Owner Needs To Know About Filing a Trademark Application & Four Reasons Why Not Having a Registered Trademark Can Cost You Big Money
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About the Author
Randal Robinson is an intellectual property lawyer. Randal focuses his practice on the prosecution and litigation of trademarks.