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: