Bulletproof Trademarks: Why Brand Owners Should File A Section 15 Declaration Of Incontestability

Dunlap Bennett & Ludwig PLLC

Last fall, the maker of BLUE GOO pain relief products filed a trademark infringement lawsuit over a competitor’s GREEN GOO pain relief salve.[1] Trademark litigation can be long and costly. But the Court quickly dismissed this case, largely because the owner of the GREEN GOO mark had the trademark law equivalent of a bulletproof vest. Specifically, before the lawsuit began, the owner filed a Section 15 Declaration of Incontestability (“Section 15 declaration”). As a result, apart from a few exceptions, the owner’s right to use its GREEN GOO trademark was “incontestable” under federal law.

What are the benefits of Section 15 Incontestability?

Filing a Section 15 declaration makes the trademark owner’s right to use their mark “incontestable” under federal law.[2] Incontestability effectively gives the trademark owner a “bulletproof vest” if they are sued for trademark infringement and is also “conclusive evidence” that the registered mark is valid. [3] Even better, incontestability may deter third parties from suing in the first place.

“Incontestable” rights may still be challenged in some cases, including before the Trademark Trial and Appeal Board. For example, incontestability is not a defense to claims that a trademark is abandoned or was obtained fraudulently. Also, incontestability does not prevent the courts from placing geographic restrictions on the owner’s right to use their mark if a third party proves they were the first to use the mark (or a similar mark).[4] In one such case, the owner of incontestable rights to use a BOI NA BRAZA mark for restaurant services had to accept some geographic limits to their trademark registration after a challenge brought by a restaurant owner who used a CHURRASCARIA BOI NA BRASA mark first.[5]

Yet even in that case, filing a Section 15 declaration before being sued was invaluable. Specifically, the junior restaurant owner was never at risk of completely losing the ability to use BOI NA BRAZA on any restaurants because the owner’s right to use that mark had become “incontestable.”

What are the requirements for filing a Section 15 declaration? When can you file for a Section 15 trademark?

  • To file a Section 15 declaration, your trademark must be registered with the U.S. Patent and Trademark Office (USPTO) on the Principal Register.[6]
  • Your registered mark must have been continuously used for at least the last five years.
  • Finally, there must be no final legal judgment (or ongoing litigation) that negatively impacts your right to use or register the mark.[7] This is why it is important to file your Section 15 declaration before being sued.

Filing a Section 15 declaration is simple and relatively affordable. The declaration form requires you to declare under oath that you have satisfied the above requirements. The USPTO does not investigate Section 15 declarations but merely acknowledges receiving them. Third parties may, however, challenge a Section 15 declaration that contains false statements.[8] In terms of cost, expect to pay for approximately an hour or two of your attorney’s time plus the USPTO filing fees. This is a bargain compared to the potential cost of litigation, which is why trademark attorneys often strongly advise their clients to file the Section 15 declaration.

What is the difference between a Section 8 and a Section 15 trademark?

The Section 8 Declaration of Continuing Use is a form that trademark owners must file after the fifth and before each tenth anniversary of the registration date. Section 8 declarations must include evidence that the mark is still in use and is necessary to keep a trademark registration alive.[9] By contrast, a Section 15 declaration is an optional, one-time filing that is the only way to make the trademark owner’s right to use the mark “incontestable” under the federal Trademark Act.

Do I have to file a Section 15 declaration?

No, filing a Section 15 declaration is entirely optional. Your registered trademark is not toothless simply because you have not filed a Section 15 declaration. For instance, all trademark registrations on the USPTO’s Principal Register of Trademarks are legal evidence that the registered mark is valid and cannot be challenged in an ex parte proceeding (without the owner being present).[10] Additionally, regardless of incontestability, most trademark cancellation lawsuits cannot be filed against a registration that is at least five years old.[11] This rule effectively functions as a statute of limitations for all trademark cancellation actions except if the mark is abandoned, becomes generic, was obtained by fraud, or another exception outlined in Section 14 of the Trademark Act applies.[12]

What questions should I ask a trademark attorney?

After your trademark has been registered for at least five years, in addition to renewing the registration, ask a trademark attorney if you should file a Section 15 declaration to make your right to use your mark “incontestable.” While incontestability is not invincibility, it is a powerful legal tool that can help you win or prevent an infringement lawsuit against you. And remember to “bulletproof” your brand before you are accused of infringement. If you wait until your trademark is attacked, you might be too late.

[1] Garcoa, Inc. v. Sierra Sage Herbs LLC CV-21-4672 (PSG)(SPx) (C.D. Cal. October 4, 2022); see also John L. Welch, C.D. Cal. Dismisses “GREEN GOO” Infringement Action Due to Incontestability of Defendant’s Right to Use the Mark, The TTABlog (Oct. 7, 2022), http://thettablog.blogspot.com/2022/10/cd-cal-disimisses-green-goo.html.

[2] See 15 U.S.C. § 1065.

[3]15 U.S.C. § 1115(b).

[4] See, e.g., Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 307.02(a) (2023), https://www.uspto.gov/trademarks/ttab/tbmp-preface (briefly discussing partial cancellation petitions under Section 18 of the Trademark Act, 15 U.S.C. § 1068).

[5] See Boi Na Braza, LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, 110 USPQ2d 1386 (TTAB 2014).

[6] In the United States, stronger, more unique trademarks are registered on the Principal Register, while weaker, less unique marks are registered on the Supplemental Register. Because it is not yet considered to be a strong trademark, you cannot file a Section 15 declaration for a mark that is registered on the Supplemental Register. See also The Supplemental Register, Dunlap Bennett & Ludwig PLLC (Jun. 13, 2022), https://www.dbllawyers.com/the-supplemental-register/ (comparing and contrasting trademarks registered on the Principal versus the Supplemental Register).

[7] See 15 U.S.C. § 1065.

[8] See Great Concepts LLC v. Chutter Inc., No. 22-1212 (Fed. Cir. 2023), https://cafc.uscourts.gov/opinions-orders/22-1212.OPINION.10-18-2023_2207653.pdf.

[9] See Keeping Your Registration Alive, U.S. Patent & Trademark Office, https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive (last visited Sept. 15, 2023).

[10] See, e.g., In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016) (and cases cited therein), https://ttabvue.uspto.gov/ttabvue/ttabvue-86490930-EXA-8.pdf.

[11] See 15 U.S.C. § 1064.

[12] See 15 U.S.C. § 1064(3), (5), and (6).

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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