How "Incontestable" is an Incontestable Trademark?

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. 

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