Contesting the incontestable

While doing my daily (well, most days) IP blog reading, I came across a post regarding an interesting forthcoming article from law professor Rebecca Tushnet. The article will cover incontestability in the trademark world, and, specifically, the process by which one obtains that status, what it means, and its problems. 

A brief explanation.

Incontestability is the status afforded to a trademark registration that makes challenging the validity of that mark much, much more difficult.

Let’s say you, or your business most likely, files to have a trademark registered with the USPTO. The registration goes through and all is good. Well, if you want to retain that trademark registration, which most trademark owners do, you have to file a section 8 declaration of use between the fifth and sixth year of registration. This is required to maintain the registration.

At the same time, the owner of the mark can file a section 15 declaration of incontestability. And here’s the thing, all you have to do is file it. In other words, the registration, after five years, can be found to be so distinct that it cannot be contested by a third party (mostly). This incredible tool simply requires that five years has passed.

So what’s the point? Again, let’s say you’ve registered a trademark with the USPTO, but forget the incontestability for now. Someone is infringing the mark, and you file suit over that infringement. The initial filings are all completed and it’s summary judgment time. The defendant claims that your mark is descriptive, was fraudulently obtained, shouldn’t have been registered because of a prior registration, or some other reason for why you don’t have rights in the mark.

The court is likely to go about its analysis of that allegation in two ways. First, is the mark incontestable? If so, many courts will find the plaintiff has rights in the mark. The court will review the defendant’s allegations, note that the mark is incontestable, perform some analysis, find the plaintiff has rights in the mark, and then move on to the question of infringement. Sure, infringement still needs to be proven, but by way of a simple filing you’ve overcome an important hurdle—especially if you’re mark isn’t very distinctive.

Alternatively, if the registration is not incontestable—i.e. you either haven’t made it to five years, or for some reason you didn’t file for incontestability— and the defendant has some decent arguments, the court will likely review the defendant’s allegations, and determine whether or not the trademark is valid and enforceable. If it isn’t, the case stops there, and good luck enforcing the mark against someone else.

Here’s the thing, all it takes to have a mark be considered incontestable, is for you to file the proper paperwork after five years. You already have to file the section 8 declaration, why not file the section 15 declaration with it? It’s a simple, cheap way to all but stop any third party from challenging the validity of your rights.

At this time, there appears to be a disconnect between the trademark office and courts regarding the meaning of incontestability as it relates to registrations. If a registration can obtain incontestability merely by existing for five years, why is it given so much weight by courts?

It looks as if professor Tushnet’s article will raise that question—and certainly do much more.

In my opinion, the current method for deeming a registration incontestable, in-and-of-itself, means nothing (well, not much). But while courts think it means something, you’d better file the paperwork to obtain it. Overlooking that simple filing could be costly.