Trademark Section 15
Maintaining a registered trademark is essential for long-term brand protection. One optional yet highly beneficial step that trademark owners can take is filing a Trademark Section 15 declaration. This filing is designed to further secure your trademark rights, making it harder for others to challenge the validity of your mark. In this post, we’ll break down Trademark Section 15, why it matters, and how to protect your mark before filing.
What is Trademark Section 15, Declaration of Incontestability?
Trademark Section 15 is an optional declaration that can be filed by the owner of a federally registered trademark on the Principal Register.
Filing under this section grants your trademark incontestable status, meaning it cannot be challenged on certain legal grounds after continuous use for five years. After the trademark has been in continuous use for five years, the owner has a one-year period to file the Section 15 declaration. If the owner does not file within this time frame, they lose the opportunity to claim incontestability for that mark.
While it might sound complicated, the benefits of securing your trademark through this filing are well worth considering for brand owners who want to strengthen their legal rights.
What Does Incontestability Mean?
Incontestability means that once your trademark meets the requirements of Section 15 and you file the declaration, your trademark rights are significantly bolstered. Essentially, this status prevents third parties from challenging the validity of your trademark, giving you added legal protection. Your trademark becomes nearly untouchable, which makes it more difficult for competitors to invalidate your registration or dispute your ownership.
In the event of legal disputes, the incontestable status serves as conclusive evidence that your registration is valid, and that you are the rightful owner of the mark.
Why File a Trademark Section 15 Declaration?
Filing a Section 15 declaration is optional, but many trademark owners find it crucial for enhancing their legal rights. By obtaining incontestability, you essentially fortify your brand’s position, making it nearly immune to legal disputes over its validity. This is particularly important for businesses that have invested in building a recognizable and valuable brand.
Here’s why you might want to file:
Strengthened Protection
Incontestability solidifies your exclusive right to use the trademark in commerce.
Increased Security
Competitors are less likely to challenge an incontestable trademark.
Ease of Enforcement
You’ll have a stronger legal footing in the event of trademark infringement.
For brand owners, these benefits can be vital in protecting their trademark assets, especially if the trademark is central to their business identity and customer trust.
Requirements for Filing a Trademark Section 15 Declaration
Continuous Use – The trademark must have been used continuously in commerce for five years after the registration date.
Filing Window – The owner has one year after the five-year period to file the Section 15 declaration.
No Legal Challenges – There must be no adverse legal rulings regarding the ownership or validity of the mark.
No Pending Legal Actions – There cannot be any pending lawsuits or disputes related to the trademark.
Along with these requirements, you’ll need to pay a filing fee of $200 per class and submit the proper documentation, including the registration number, a signed statement attesting to the continuous use, and confirmation that no legal disputes exist. Failing to meet these requirements can result in a rejection of the filing, so it’s important to ensure everything is in order.
Combined Trademark Filings: Sections 8 & 15
Trademark owners also have the option to file a Section 15 declaration in combination with a Section 8 filing. Section 8 is a mandatory filing that occurs between the fifth and sixth years after registration to prove that the mark is still in use. Since both filings can be submitted around the same time, many trademark owners choose to combine them for efficiency.
The combined filing allows you to update the USPTO on the continued use of your trademark (Section 8) while simultaneously claiming incontestability (Section 15). If you combine these filings, the total cost will be the sum of the individual filing fees. The filing fee for a Sections 8 & 15 Combined Declaration is $425 per class.
It’s important to note that while Section 8 has a grace period with an additional surcharge, Section 15 does not have such a grace period.
Combining Sections 8 and 15 filings saves time and simplifies the process, ensuring that you meet all the necessary requirements to keep your trademark protected and enforceable.
Trademark Section 15 Limitations
Section 15 provides powerful protections for trademark owners by granting incontestable status, but it does have limitations.
Here are some disputes that are not protected by Section 15:
Descriptive Misuse: Incontestability does not protect a trademark from challenges related to it becoming generic or losing distinctiveness over time. If the mark becomes the common term for the goods or services it represents (i.e., “genericide”), it can still be challenged.
Fraud in Registration: If it is proven that the owner committed fraud during the trademark registration process, such as intentionally providing false information, the registration can be canceled even after filing under Section 15.
Prior Rights of Others: Section 15 does not protect against earlier established common law or trademark rights held by third parties. If someone can prove that they used a confusingly similar mark in commerce before your registration, their prior rights would still take precedence.
Abandonment: Incontestability does not prevent a challenge if the trademark has been abandoned. If it can be demonstrated that the owner has stopped using the mark in commerce with no intention to resume use, the registration may be canceled.
While Section 15 makes a trademark much more secure, these limitations ensure that the incontestable status does not offer absolute protection.
The Importance of a Protective Trademark Search
Before filing for Section 15 and claiming incontestable status, it’s crucial to conduct a protective trademark search. This search helps identify any potential conflicts that could arise, ensuring your trademark’s safety and minimizing the risk of infringement.
A protective trademark monitoring search is a comprehensive review of potential infringements by conducting thorough searches across federal trademark, state trademark, and common law databases. This detailed investigation helps uncover any unregistered or newly registered marks that could potentially infringe on your trademark. By conducting this search before filing for Section 15, you can safeguard your trademark from potential legal disputes and avoid future challenges to its validity.
Ensuring that your trademark is free of conflicts before claiming incontestability strengthens your case and further protects your brand in the marketplace. It’s a critical step in the trademark protection process.
Conclusion
Filing a Trademark Section 15 declaration is a powerful way to enhance your brand’s legal standing and secure its future. By claiming incontestability, you shield your trademark from many potential challenges, ensuring that it remains protected and enforceable. However, before you file, conducting a protective trademark search is essential to safeguard against any hidden threats.
For those looking to file a Section 15 declaration or conduct a protective trademark search, TradeMark Express is here to help. We offer comprehensive trademark services to guide you through the process and protect your brand’s identity every step of the way. Reach out today to ensure your trademark is in safe hands!
Pingback: Trademark Section 8 & 15