Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on it being invalid? Can you file anything to strengthen your trademark registration against invalidation? The answer is YES! if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). This means that it is less burdensome to prove the invalidity of a trademark registration. For example, under U.S. trademark law, a petition for cancellation may be filed at any time to challenge the trademark registration as being invalid. For trademark registrations within five years, the grounds for cancellation of a trademark registration include the likelihood of confusion, abandonment, dilution, deceptiveness, and whether the mark is merely descriptive or has become generic or functional. See 15 U.S.C. §1064.
Is there anything that the trademark owner can do to make it more difficult for a trademark registration to be invalidated? Yes, the owner of a trademark registration on the Principal Register may file for “incontestable” status if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
Under 15 U.S.C. § 1115(b),
“[t]o the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” (Emphasis Added).
For example, under U.S. trademark law, for trademark registrations older than five years, a petition for cancellation may be filed based on the grounds enumerated in Trademark Act § 14, 15 U.S.C. §1064, which provides for cancellation of a trademark registration as being invalid any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This means that it is more burdensome to provide invalidity of a trademark registration that is incontestable than for one that is not. Therefore, an owner of a trademark registration on the Principal Register should file a Section 15 Declaration of Incontestability if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
For a Section 15 Declaration, the owner must not only declare that the mark has been in continuous use for five consecutive years after the date of registration but also declare that there is no final decision adverse to the owner’s claim of ownership of the mark or to register the same or keep the same on the register and no proceeding involving the trademark rights pending and not finally disposed of either in the United States Patent and Trademark Office (“USPTO”) or in a court. What if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court?
Preferably, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed. If the Section 8 declaration has already been filed and, if there is no proceeding that is pending with either the USPTO or the court, the Section 15 declaration should be filed immediately. However, if there is a proceeding that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals.
Can the trademark registration be invalidated for fraud if the Section 15 declaration is filed when a proceeding involving the trademark rights is pending with the USPTO or the court? In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), Great Concepts, LLC v. Chutter, Inc., 2022-1212 (Decided October 18, 2023), the CAFC held that Section 14 of the Trademark Act does not permit the USPTO to cancel a reg. ration due to the owner filing a fraudulent Section 15 declaration to acquire incontestability of a registered mark. In Great Concepts, Great Concepts, LLC, the owner of the trademark registration, filed a Section 15 declaration declaring “there is no proceeding involving the trademark rights pending and not finally disposed of” either in the USPTO or in the courts, which was a false statement because there was both a cancellation proceeding in the USPTO and an Eleventh Circuit appeal pending. Chutter, Inc. subsequently petitioned the USPTO for cancellation of Great Concepts, LLC’s trademark registration. The USPTO issued a decision finding that the Section 15 declaration was fraudulent and cancelling the trademark registration under Section 14 of the Trademark Act. Great Concepts, LLC appealed to the CAFC, which found that Section 14 only applied to fraud in procuring a trademark registration or renewal and thus did not apply to cancel a trademark registration for a fraudulent Section 15 declaration. However, the CAFC emphasized that nothing in this opinion should be read to mean that the USPTO is powerless to address fraud committed solely in conjunction with the filing of a Section 15 declaration including sanctioning an attorney or criminal prosecution.
In summary, after the trademark has been registered, U.S. trademark registrations can be cancelled based on a likelihood of confusion, abandonment, dilution, deceptiveness, and if the mark is merely descriptive or has become generic or functional within five consecutive years subsequent to the date of registration. However, after the trademark has been in continuous use for five consecutive years subsequent to the date of registration, the owner of the trademark registration may file for “incontestable” status by filing a Section 15 declaration. As a practice tip, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed if there is no proceeding that is pending with either the USPTO or the court. However, if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals. If the trademark registration becomes incontestable, a third party may only petition for cancellation of the trademark registration based on the registered mark becoming generic, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This will make it more difficult for a trademark registration to be invalidated.