Last week I posted in my blog an article that talked about the different levels of trademark protection one may obtain here in the United States. The levels of trademark protection, from lowest to highest were:
In this article I will be taking a closer look at highest level of protection -- that of a trademark registered in the federal principle register with incontestability status.
First I want to make it clear that just because your trademark is incontestable doesn’t mean it cannot be contested. Like so many other areas of the law there are exceptions. So the word “incontestable” is actually somewhat of a misnomer and there are a number of grounds where an incontestable trademark may be attacked. But before we get into that let us look at the benefits provided by incontestability that are above and beyond what is provided by registration on the principle register.
However, incontestability does not shield your trademark from the following kinds of attacks that all trademarks are susceptible to:
Some would argue that incontestability does not provide much of an advantage over a trademark that is registered on the principle register. However I have found that telling a potential infringer that your mark is incontestable provides quite a punch to your cease and desist letter and encouraging the potential infringer to come to terms.
To claim incontestability status for your trademark you must prove that:
There are many levels of protection you may seek for your trademark and it can be confusing at times to know which will be best for your mark or the advantages or one over the other. In this post I review each of the five levels of protection to help you determine what will work best for your mark and business goals.
Common-law Rights: Common-law trademark rights are the lowest level of right you may give your trademark. As soon as you start using your mark in commerce it is entitled to common-law rights. In common-law the first to use a mark in commerce has automatic senior rights over subsequent similar marks used in commerce. Advantages of common-law marks include:
However there are some disadvantages such as:
I don't recommend using this level of protection for important marks such as the name of your business, slogan, or key products.
State Trademark Rights: The next step above common-law rights are state rights. You may file an application with your state to protect your mark at the state level. This will extend the geographical scope of your mark from the immediate vicinity of your business to the entire state. Advantages of state level marks include:
Just as with common-law rights, I do not recommend filing for a mark at the state level. If you are going to go through the trouble of filing at the state level might as well spend the necessary money and file for a federal mark as there are so many benefits obtained from a federally registered mark.
Federal Trademark Rights (Supplemental Register): A federally registered mark that is on the supplemental register gains some important advantages over a state registered marks such as:
Federal Trademark Rights (Principle Register): A federally registered mark that is on the principle register has all of the advantages found with a mark registered on the supplemental register plus the following:
Federal Trademark Rights (Principle Register and Incontestable): This is the highest level of protection you may obtain for your mark. There are requirements that must be met in order to file for incontestable status but once filed the privileges remain with your mark for the life of your mark with a few exceptions. The advantages of an incontestable mark include:
I hope that this has been helpful. Please leave a comment below and I will try my best to respond with an answer.