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Contesting an “Incontestable” Mark

One of the benefits of registering a trademark with the federal government is that after a certain period of time a mark becomes “incontestable.” That sounds like a powerful benefit. No one wants to be sued by someone with a mark that the government has labeled as beyond contestation. Yet, the name is actually something of a misnomer. There are many ways to contest a so-called incontestable trademark. Incontestability merely removes one major line of attack against a registered trademark, and it provides some potential procedural benefits.

What Incontestability Means

A mark becomes eligible for incontestability five years after its initial registration. At that five-year point, the owner must file a special form, known as a Section 15 Declaration, and meet several qualifications. The qualifications are that there are no final judgments or pending actions against the mark. Additionally, the mark must not have become generic within the five years since its registration. That means that the trademark must not have entered common use for the name of the good, such as the word trampoline, which used to represent a company, but now means any manufacturer’s trampoline.

If a mark qualifies for incontestability, then it can no longer be challenged on the grounds of descriptiveness. Descriptiveness is a legal argument made by an alleged infringer that the accuser’s trademark merits less protection because it describes an important quality of the goods, so it would be unfair to give the markholder a monopoly on the use of the word or words. As an example, the leading case on this issue arose when the company Park ‘N Fly sued the company Dollar Park and Fly. Dollar wanted to argue that Park ‘N Fly was merely descriptive of the line of business as an airport parking lot, but they were prevented from doing so because Park ‘N Fly’s mark had acquired incontestable status.

Defenses Against an Incontestable Mark

Despite the label, incontestable marks can actually be challenged in a variety of ways. First, an accused infringer can simply argue that they are not actually infringing the mark. However, there are also a variety of ways that they can still invalidate the incontestable mark. One method of contesting these sorts of marks is through a functionality argument. A functionality argument states that the putative mark actually serves some functional purpose with regard to the good being sold, and that letting someone trademark the functional item puts competitors at a disadvantage. Alleged infringers can also raise a genericness argument to the one presented above, if the mark has become generic at some point after it became incontestable. Another available argument is abandonment, which arises if the markholder lost their rights to use the mark after failing to keep using it in their trade or business. Finally, an incontestable mark can also be challenged on the basis that the application for it was in some way fraudulent.

Trademarks are increasingly being recognized as an important part of businesses’ marketing strategy. If you are currently involved in a trademark dispute, contact a Florida intellectual property attorney at Pike & Lustig, LLP today.

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