A Section 15 Declaration of Incontestability, while not required, provides important legal defenses for your trademark, your ownership of the mark, and your exclusive rights to use it. A Declaration of Incontestability only needs to be filed only once in order to claim its benefits. The declaration must also be filed at the time of trademark renewal. §1065 permits a registrant to file an Affidavit whereby one's trademark rights become "incontestable" for the goods or services identified in the registration. A Section 15 affidavit (also known as an incontestability affidavit) relates to trademarks that have been federally registered pursuant to the Lanham Act.Specifically, it is a sworn statement which the trademark owner can file after five years of continuous use of the mark. Id. A Section 15 Declaration of Incontestability under the Lanham Act is not necessary to maintain a trademark owner’s rights. Basically, incontestability is the presumption that you’re using your trademark correctly in all legal cases. This Article is first a study of the rational basis for incontestability in American trademark … In order to have a trademark declared incontestable, the registrant must file a Section 15 Declaration of Incontestability, generally between the fifth and sixth years after registration. 39, 6o Stat. It is not mandatory to maintain your registration. I I2I (I964). If you don’t file Section 8 and 9 renewal filing your mark will get cancelled. Your Section 15 Declaration of Incontestability allows you to request the highest status of trademark protection under federal law. Trademark Electronic Application System: Madrid Protocol Forms – If you’re interested in an international trademark… If the USPTO accepts your Section 8 Declaration of Use or combined Declaration of Use and Incontestability, your trademark registration will remain valid for the remainder of the initial ten-year term. To protect your trademark even further, you might want to consider filing for an Affidavit of Incontestability. 15 U.S.C. 15 U.S.C. If you are able to, you should also file the Section 15 declaration which seeks incontestability for your trademark. The benefit of incontestability is that challenges against your trademark on the basis of "first to use" are significantly reduced. For a trademark registered on the Principal Register, the owner should also file a Section 15 statement of incontestable rights. When this is filed, the registration becomes “incontestable”. This form is the Section 15 Affidavit of Incontestability. Section 15: A per-class fee of $200 is required for trademark incontestability. US law permits the owner of a trademark registration to file what is called a “Section 15” filing under certain circumstances. Section 9 Renewal: Renewals have a per-class fee of $300. However, there are certain rules governing when one may be filed. Filing a Section 15 … Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks: REGISTRATION NUMBER: 3821849 REGISTRATION DATE: 07/20/2010 MARK: OHR (see, ) The owner, Baker Hughes Incorporated, a corporation of Delaware, having an address of PO Box 4740 Houston, Texas 77210-4740 United States 713-439-8600 713-439-8281 Why renewing a trademark registration is critical Trademark registrations can last forever – if renewed properly and if the mark is still in use. Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks: REGISTRATION NUMBER: 3739319 REGISTRATION DATE: 01/19/2010 MARK: STANDELLS (see, ) The owners, LAWRENCE TAMBLYN, a … The USPTO offers a combined Section 8 and 15 Form to achieve both the mandatory renewal under Section 8, and incontestability under Section 15. Although incontestability can provide some protection for trademark owners (e.g., incontestable marks cannot be challenged on the grounds that they are descriptive), it’s not an absolute shield. S1065. §1065. Incontestability. Once use has resumed and there have been five new years of continuous use, the trademark will again have the opportunity to become incontestable. '6 A trademark owner must meet the requirements set forth in section 1065 for the owner's mark to achieve incontestable status.17 Section … Once registered on the Principal Register, if a mark has been in continuous use for at least five consecutive years, the owner may submit a Declaration of Incontestability, also referred to as a Section 15 Declaration or Affidavit. §1065. Furthermore, as a matter of law, everytime Richard S. Vermut and/or Robin Sorensen (or others) subsequently file a maintenance (Section 8), renewal (Section 9), and incontestability status (Section 15) of an existing registration (Trademark Application) made AFTER "August 2002" under 18 U.S.C. Once your Section 15 Declaration is approved the USPTO, you are protected against many legal challenges that people or businesses might raise to contest your right to your trademark. While this filing is not required to preserve trademark rights, filing this declaration will unquestionably strengthen your mark. Incontestability - after a mark has been registered for five years on the Principal Register without opposition, a mark owner may file an Affidavit of Incontestability to make the registration incontestable under Section 15 of the Trademark Act (15 U.S.C. Which is where a Section 15 filing comes in. Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks: REGISTRATION NUMBER: 3739319 REGISTRATION DATE: 01/19/2010 MARK: STANDELLS (see, ) The owners, LAWRENCE TAMBLYN, a … A US federal trademark registration for which a Section 15 affidavit has been accepted after 5 years of continuous use, is said to be ‘incontestable.’ That is to say that ‘title has been quieted,’ with regard to prior users. the “Section 15 Filing”). In the U.S., a trademark must be used in commerce for the owner to obtain and maintain a federal trademark registration. Declaration of Incontestability of a Mark under Section 15 (15 U.S.C. US8) Recordal of Assignments at the USPTO -first mark per document 40 177 - for second and subsequent marks in the same document 25 77 15 U.S.C. Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks: REGISTRATION NUMBER: 3673588 REGISTRATION DATE: 08/25/2009 MARK: (Stylized and/or with Design) The owner, City of Moreno Valley, AKA MoVal, municipal corporation legally organized under the laws of California, comprising of City Attorney of the … A section § 15 declaration of incontestability and a fee is required to receive an incontestable registration. Note regarding incontestability: §15 Declarations for registrations issued under Section 69, 15 U.S.C. There is also a filing called a “Section 15” filing, by which a trademark registration may be made “incontestable”. 3. The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. Filing a Section 8 declaration of use keeps the registration alive until the next deadline at the 10-year anniversary discussed below. The registrant may also be blocked from making the usual declaration of incontestability under Section 15 after five years' use. specified ways. You may file a Combined Declaration of Use & Incontestability under Sections 8 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration. Under 15 U.S.C. A mark declared incontestable is immune from future challenge, except in instances where the mark becomes generic, the mark is abandoned, or if the registration was acquired fraudulently. Status Check: Trademark owners who use their mark in commerce are protected in their use by federal law. Section 15 permits an affidavit or declaration to be filed with the USPTO stating that the mark has been used continuously for the five years after the registration date to show incontestability. The appeals court also alluded to § 33, 15 U.S.C. In addition to choosing a mark that is strong and unique, over time you can also acquire the extra benefit and advantage of incontestability for your […] US law permits the owner of a trademark registration to file what is called a “Section 15” filing under certain circumstances. If possible, you should also seek an incontestable trademark. Affidavit of Incontestability (Sec. The USPTO Affidavit of Incontestability is located on the USPTO website. If, after five (5) years of continuous use in commerce, the registered mark meets certain legal requirements, the owner may file an optional Section 15 Declaration of Incontestability. After a mark is registered and in continuous use for five A federally registered trademark that’s been in use for five consecutive years after its registration date may become incontestable by filing a Section 15 Declaration of Incontestability (a “Section 15”). The post-registration Section 15 statement is what boosts the registration to incontestable status. However, there are certain rules governing when one may be filed. Are you renewing for your 5th-6th year or 9th-10th year anniversary? Trademark Renewals. Since the time for filing a Section 15 often coincides with the time for filing a Section 8, most registrants file a Combined Affidavit of Use and Incontestability. This is also the time to file a Section 15 declaration of incontestability, if your mark has been in continuous use for the five years since registration. It should be noted that a Section 8 Declaration of Continued Use is required to be filed around the same time you may file for a Section 15 Declaration of Incontestability. Section 8 Filing Requirements. The affidavit can be electronically filed on the USPTO’s Trademark … Update the postal address: Changes to the mailing address of a trademark holder must be made directly with the International Bureau (1B) of the scope of incontestable trademark rights,15 and a fourth section defines the rights of registrants in the absence of incontestabil-ity. The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark … §§1065 and 1115(b). While the latter section does not use the term, it refers to registration functioning as "conclusive evidence" of certain substantive rights. Incontestability is a nearly unique feature of American trademark law, with a unique American implementation. There are important reasons to file a Declaration of Incontestability. For more information on Section 9 filings check here. Declaration of Incontestability under Section 15. Incontestability is a nearly unique feature of American trademark law, with a unique American implementation. Incontestability is another perk of having a registered mark. §§ 1057, 1065 and 1115) I gave you instruction number [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6] that requires the plaintiff to prove by a preponderance of the evidence [that the trademark is valid and protectable] [and] [that the … This form is used by trademark holders who have used their marks continuously in commerce, as registered, for five years in a row at … 1058 & 1065) TEAS - Version 7.1 Contacts: For general trademark information, email or call 1-800-786-9199 For help in resolving technical glitches, email Include your phone number in your email, so we can talk to you directly, if necessary. Filing a Section 15 Declaration is optional. By: Sharon Urias, Esq. (15 United States Code, Section 1065.) Eligibility for incontestability status is not automatic, it requires the filing of a proper section 15 affidavit. Moreover, if your trademark has been registered for 9 years, it is again time to file a renewal - you have one year following your 9th year to renew. The declaration states that the trademark has been in use for at least five years after registration. The U.S. government fee to include incontestability (section 15) filing is $200/per classification. 1 As a note, a request for incontestability under Section 15 of the Lanham Act is typically made between the fifth and sixth year from the date of registration and generally includes a declaration showing use—this protection is only available to marks on the Principal Register. This gives you exclusive rights that prevent some other company from claiming to have used the mark before you did. § 1064, 1065, 1115(b) (1982). An Affidavit of Incontestability Under Section 15 is one such method. Incontestability (at 5 year renewal) Make your Principal Register trademark the strongest it can be! Declaration of Incontestability of a Mark under Section 15 (15 U.S.C. § 1065, a trademark owner can file a Section 15 declaration for incontestability of their trademark. The concept of incontestability allows a trademark registrant to overcome arguments that a symbol is merely descriptive of features or qualities of the registrant’s goods or services—for example, “Juicy” for apples. ? Section 15 of the Trademark Act, 15 U.S.C. §1065 Incontestability of right to use mark under certain conditions. Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks: REGISTRATION NUMBER: 4668291 REGISTRATION DATE: 01/06/2015 MARK: SUNSET OVERDRIVE Current: The owner, Insomniac Games, Inc., a corporation of California, having an address of 2255 N. Ontario Street Suite 550 Incontestability under Section 15 When you renew your trademark, you also have the coveted option of filing for something known as “ Incontestability .” Incontestability is lawyer-speak for presumptive evidence that you own the trademark exclusively and validly . 2 The filing of a fraudulent declaration of incontestability under Section 15 3 is an affirmative defense to theotherwise “conclusive evidence” of mark validity attaching to the resulting incontestable registration 4 and can even be fatal to the registration itself. Section 15 – Declaration of Incontestability: To claim that a trademark registered on Principal Register is now incontestable, you must file a Section 15 Declaration of Incontestability once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration. In a previous Legal Update, we discussed how COVID-19 would likely provide a basis for claiming excusable nonuse of a trademark. under Section 8 of the Act to maintain existing registrations. What is an incontestable trademark? An owner must file a Section 15 declaration within one year of a window in which the owner used the mark for five consecutive years. The declaration is typically filed in conjunction with the declaration of continuous use between the 5 th and 6 th year after registration. §1065. However, there are certain rules governing when one may be filed. Section 15 – Declaration of Incontestability: To claim that a trademark registered on the Principal Register is now incontestable, a trademark owner must file a Section 15 Declaration of Incontestability once the mark has been in continuous use in commerce … The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. We recommend filing a Declaration of Incontestability under Section 15 in conjunction with the initial maintenance filing. 440, as amended, 15 U.S.C. Here is how it works. A US federal trademark registration for which a Section 15 affidavit has been accepted after 5 years of continuous use, is said to be ‘incontestable.’ That is to say that ‘title has been quieted,’ with regard to prior users. Unlike the Section 8 and Section 9 Filings, the Section 15 Filing is not mandatory. Incontestability is a legal status for U.S. registered trademarks granted that provides conclusive evidence of certain aspects of the mark and its registration (15 U.S.C.
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