Trademark Incontestability. Trademark Series: Part 2

In Part 1 of our trademark blog series (click here), we discussed the status of trademark incontestability. Trademark Incontestability seems like a sure thing- the registrant has exclusive right to use the registered mark in commerce. But, with all things legal, there are exceptions.

 

Many people hear the word “incontestable” and think that incontestability protects against all challenges and claims against a mark. In truth incontestability is somewhat of a misnomer since there are ways to legally challenge an incontestable trademark. Some of the grounds are:

 

Abandonment;

  1. Genericness;
  2. Fraud/misrepresentation; and
  3. Lapse in registration.

 

Let’s talk in detail on the four most common reasons why trademark incontestability can be contested.

 

When a trademark owner ceases to use his or her trademark in commerce and has no intention to resume in the future, that trademark can be challenged on the grounds of abandonment. If you’re not actively using your mark, then you risk losing registration.

 

A trademark’s generic nature is equally important in ensuring the long life of a mark.

Genericness occurs when a court has decided that the mark has lost its inherit distinctiveness required to obtain a trademark. What is a mark’s distinctiveness? Distinctiveness is how consumers recognize a company’s mark. For example, Pepsi’s signature logo, the tri-colored red, white, and blue circle, has acquired distinctiveness to consumers. Once a mark loses its uniqueness, then that mark’s incontestable status has the potential to be challenged.

 

The incontestable status can be lost when the trademark owner has misrepresented material facts to the USPTO.

 

Lapse in registration can be easily avoided, but is a common mistake. Once your trademark is federally registered, you have ten (10) years after the application date before your registration lapses. If you don’t renew your registration, then someone else could potentially contest your mark.

 

All this is to say do not avoid filing for incontestability simply because it can be contested. Incontestability can be a valuable tool to enforce your trademark.

 

For more information regarding trademarks or incontestability, call us at: 919-335-5291 or email john@mathesonlawoffice.com

 

 

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