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:

1. Common law (unregistered trademarks)​
2. State registered trademarks
3. Trademarks registered in the federal supplemental register
4. Trademarks registered in the federal principle register
5. Trademarks registered in the federal principle register with incontestable status.

​​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. 

• The owner of the trademark needs to file for incontestability only once in the life of the trademark.  There is no need to renew the trademark’s incontestability status.
• Rather inexpensive with government fees at $200 to $300 per class.
• The trademark is immune to challenges based on descriptiveness such as (i) the trademark merely describes the goods or services, (ii) the trademark is primarily merely a surname, and (iii) the trademark is a geographic place name that will immediately convey a goods-place or services-place association in the minds of consumers.  This immunity applies both to challenges filed in the administrative courts at the trademark office as well as in federal court.
• Potential infringers, upon seeing that your mark is incontestable, are more likely to respond favorably to a cease and desist letter.  This may be quite beneficial in reducing potential legal fees.

However, incontestability does not shield your trademark from the following kinds of attacks that all trademarks are susceptible to:

1. Genericness;
2. Functionality;
3. Abandonment;
4. Fraud on the trademark office;
5. Immorality, deception, or scandalousness;
6. Disparagement;
7. False suggestion of a connection;
8. Geographical indications on wines or spirits meeting certain requirements;
9. Representation of a flag or coat of arms of any nation; or
10. Representation or name of a living person without his or her consent or of a deceased president without the consent of his widow.

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:

• Your trademark has been in continuous use for at least five consecutive years from the date of registration;
• Your trademark is currently being used in commerce;
• Your trademark has been registered on the principle register;
• There has been no final decision adverse to your claim of ownership or right to register the trademark;
• There is no proceeding adverse to your claim of ownership or right to register the trademark that is pending;
• It is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration; and
• The mark has not become generic. 

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:

• Effective immediately upon use in commerce.
• No governmental filings are needed.
• No fees are required to be paid.

However there are some disadvantages such as:

• ​Enforcement is difficult
• Enforcement limited to the geographical area or the owner's sphere of influence.
• Scope of protection may be eroded by the filing of identical marks at the state or federal level.
• You may NOT use the ® symbol in association with your mark.

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:

• Lower filing fees than federally registered marks.
• It is easier to register a mark at the state level than the federal level.
• Expands the geographical reach of your mark to the entire state.
• Easier to enforce than a common-law mark.

Disadvantages include:

• Enforceability ends at the boundaries of your state.
• Marks registered at the federal level will have superior rights over your state registered mark.
• You may NOT use the ® symbol in association with your mark.

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:

• Entry into the federal database of registered marks.  A mark in the federal registry is searchable and gives constructive notice that your mark is a registered mark across all 50 states.
• The examination process by the trademark office is rigorous.  If the trademark office accepts your application then that may be used in court to support the validity of your mark.
• A federally registered mark is effective across all 50 states.
• You may use the ® symbol in association with your mark.
• You receive a certificate that may be effective in cease and desist letters.

Disadvantages include:

• Your mark is not presumed to be valid in a court hearing.  Although examination by the trademark office is helpful in proving validity, you still must take that step in court.
• Your mark may be promoted from the supplemental register to the principle register but you must go through the entire application process again.

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:

• Eligible for incontestability protection of mark after 5 years.

• Statutory presumption of validity.
• Statutory presumption of ownership.
• Statutory presumption of distinctiveness or inherently distinctive.
• Statutory presumption of exclusive right to use the mark in commerce.
• Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods.
• Ability to bring federal criminal charges against traffickers in counterfeits.
• Use of the U.S. registration as a basis to obtain registration in foreign countries.  So called "international trademark".

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:

• It is more difficult for the trademark office to cancel an incontestable mark as opposed to other marks.
• The statutory presumptions of a mark on the principle register that is also incontestable are stronger.

I hope that this has been helpful.  Please leave a comment below and I will try my best to respond with an answer.