What is incontestability? An "incontestable" trademark is a trademark (MUST BE ALL OF THESE):

  • That is registered on the Principal Register (does NOT apply to Supplemental Register);
  • Has been in continuous use in commerce for a period of five (5) years after the date of registration (or date of publication under § 12 (15 U.S.C. § 1062) );
  • Is still in use in commerce.

Why is incontestability important? Additional benefits of incontestability (Section 15 Declaration) come from an incontestable registration. An incontestable registration is conclusive evidence of:

  • The validity of the registered mark;
  • The registration of the mark,
  • The owner's ownership of the mark; and
  • The owner's exclusive right to use the mark with the goods/services.
  • The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 15 U.S.C. §§1115(b).

Trademarks-keeping a registration (


A §15 Declaration is a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming "incontestable" rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

What is the difference between an incontestable trademark and an incontestable registration? A trademark registered on the Principal Registration for 5 years may be declared incontestable by use of a §15 Declaration.  The filing of a §15 Declaration is not required. A trademark owner may choose to claim the additional benefits of incontestability by filing a §15 Declaration or may elect to retain the registration without those benefits.  

Note: However, the USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods.  

Are There Five Year (and Plus) Benefits That Are Available Even If A §15 Declaration Is Not Filed?

The unavailability of certain grounds for cancellation under Section 14 is not dependent on the incontestable status that arises from the registrant's filing of an affidavit under Section 15. This is because Section 14 and Section 15 serve different purposes: Section 14 is a five-year time limit barring certain attacks on a registration, whereas Section 15 provides that a registrant can obtain incontestable rights of use under certain circumstances. As the Board explained, "once a registration has been in existence for five years the grounds on which a cancellation action may be brought under Section 14 are limited regardless of whether Section 15 incontestability has been invoked." Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309, 1311 (TTAB 1990). See also Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) ("a registration that is over five years old may be cancelled solely on the grounds set forth in Section 14(c), irrespective of whether or not the owner of the registration has filed an affidavit under Section 15.").


Well, no. Nonuse by others (a non-conflicting mark) and inherent distinctiveness are what make a trademark strong. Incontestability, or an incontestable trademark does not mean that a mark is a strong trademark.

 “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980)

The U.S. Supreme Court in Park Fly, Inc v. Dollar Park and Fly, Inc, 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985), found that the “incontestability provisions provide a means for the registrant to quiet title in the ownership of his mark.” . . .”The opportunity to obtain incontestable status by satisfying the requirements of § 15 thus encourages producers to cultivate the goodwill associated with a particular mark.”

But, incontestability only addresses whether a mark is valid, entitled to protection, and owned by a plaintiff. A declaration of incontestability does not mean that a mark is a strong trademark. First Keystone Federal Sav. Bank v. First Keystone Mortg., Inc., 896 F.Supp. 456, 461 (E.D.Pa. 1995).

[M]any courts have held that while incontestability precludes a defendant from arguing that a mark is merely descriptive, incontestability does not render a mark strong. For example, in Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., the Fourth Circuit observed that although "the alleged infringement of an incontestable trademark cannot be defended on the ground that the trademark is merely descriptive ... incontestability alone does not establish that the trademark is strong and therefore likely to cause the consumer confusion necessary for a finding of trademark infringement." (citations omitted). 43 F.3d 922, 934 (4th Cir.1995); see also Miss World (U.K.) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1448-49 (9th Cir.1988) ("incontestable status does not alone establish a strong mark"); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir.1986) (incontestable status does not preclude defendant from arguing that mark is weak), cert. denied, 481 U.S. 1069, 107 S.Ct. 2462, 95 L.Ed.2d 871 (1987); Majorica S.A. v. Majorca Int'l, Ltd., 687 F.Supp. 92, 97 (S.D.N.Y.1988) (incontestability does not relieve registrant of requirement of proving likelihood of confusion).

Michael Caruso & Co. v. Estefan Enterprises, 994 F.Supp. 1454 (S.D. Fla., 1998).


Declaration of Incontestability of a Mark under Section 15 (15 U.S.C. § 1065): To claim that a mark registered on the Principal Register is now incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. (Section 15 does NOT apply to marks on the Supplemental Register). You may file this declaration within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c). NOTE: Because the time for filing a Section 8 declaration coincides with the time for filing a Section 15 declaration of incontestability for many applicants, a combined §§ 8 & 15 form exists.

Combined Declaration of Use and Incontestability Under Section 8 and 15 (15 U.S.C. § § 1058 & 1065): 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. You must file the Combined Declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth anniversary date). If you have NOT continuously used the mark in commerce for five (5) consecutive years, you must still file a Section 8 Declaration. You must subsequently file a Section 8 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period). FAILURE TO FILE THE SECTION 8 DECLARATION WILL RESULT IN CANCELLATION OF THE REGISTRATION. NOTE: Because the time for filing a ten-year Section 8 declaration coincides with the time for filing a Section 9 renewal application, a combined §§ 8 & 9 form exists.


Incontestability applies only to the type of trademark  registered and for the goods or services claimed and is subject to the eight defenses below. The type of trademarks are either Word Marks (standard character format);or Design Marks (stylized format, 2- or 3-dimensional); or Composite of Words & Design (words in stylized format protected only as shown with a design). An incontestability in one type does not crossover to another type.


  • (1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
  • (2) That the mark has been abandoned by the registrant; or
  • (3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
  • (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or
  • (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to
  • (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title,
  • (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or
  • (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or
  • (6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or
  • (7) That the mark has been or is being used to violate the antitrust laws of the United States; or
  • (8) That the mark is functional; or
  • (9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.



The Supreme Court held that the owner of a registered mark may rely on incontestability to enjoin infringement, and that an incontestable registration, therefore, cannot be challenged on the ground that the mark is merely descriptive.

In Park ‘N Fly v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985)

The Trademark Trial and Appeal Board held that an examining attorney could not require a disclaimer of “TALL SHIPS” in an application for registration of the mark RETURN OF THE TALL SHIPS, where the applicant owned an incontestable registration for the mark TALL SHIPS for the identical services. This would be a collateral attack on an incontestable registration. However, this applies only where both the marks and the goods or services are identical. In American Sail Training, the Board noted that the matter required to be disclaimed was “identical to the subject matter of applicant’s incontestable registration,” and that “the services described in applicant’s application are identical to those recited in the prior incontestable registration.” 230 USPQ at 880. Ownership of an incontestable registration does not give the applicant a right to register the same mark for different goods or services, even if they are closely related to the goods or services in the incontestable registration.

In In re American Sail Training Association, 230 USPQ 879 (TTAB 1986)

Applicant’s ownership of incontestable registration of the word mark SAVE VENICE for newsletters, brochures and fundraising services did not preclude examining attorney from refusing registration of a composite mark consisting of the phrases THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark for different goods; “[a] registered mark is incontestable only in the form registered and for the goods or services claimed.”

In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001)

Incontestable status of registration for one speaker design did not establish non-functionality of another speaker design with shared feature.

In re Bose Corp., 772 F.2d 866, 873, 227 USPQ 1, 7 (Fed. Cir. 1985)

Examining attorney could properly refuse registration on ground that mark DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars.

In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985)

Applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring a disclaimer of “BEST” in applications seeking registration of BEST! IMPERATIV HRMS “for goods which, although similar, are nevertheless somewhat different.”

In re Best Software Inc., 63 USPQ2d 1109, 1113 (TTAB 2002)

Applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring a disclaimer of “BEST” in applications seeking registration of BEST! SUPPORT PLUS and BEST! SUPPORT PLUS PREMIER for the same services plus additional services.

 In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001)

Examining attorney could properly refuse registration on the ground that a mark is primarily merely a surname even if applicant owned incontestable registration of same mark for unrelated goods.

 In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989)

Examining attorney could refuse registration of the mark BANK OF AMERICA for computerized financial data processing services under §§2(e)(1) and 2(e)(2), despite applicant’s ownership of incontestable registrations of the same mark for related services.

In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986)

Case involving “incontestable” geographically descriptive marks: Holding that plaintiff has failed to prove that the mark "Pebble Beach" is strong or that defendant's use of the words "Pebble Beach" on softgoods or souvenirs was likely to cause confusion with the famous California golf resort and tournament owned by plaintiff

 Pebble Beach Co. v. Laub America Corp., 1985 WL 5584, *35 (N.D.Cal. Dec.27, 1985) as quoted in Hbp, Inc. v. American Marine Holdings, Inc., 290 F.Supp.2d 1320 (M.D. Fla., 2003)

Case involving “incontestable” geographically descriptive marks: Holding that the word "Keystone" in plaintiff's mark, although incontestable, was not strong because it is a geographic description for Pennsylvania, the "Keystone State," and is used by many third-parties.

 First Keystone Federal Sav. Bank v. First Keystone Mortg., Inc., 896 F.Supp. 456, 461 (E.D.Pa.1995) as quoted in Hbp, Inc. v. American Marine Holdings, Inc., 290 F.Supp.2d 1320 (M.D. Fla., 2003)

Case involving “incontestable” geographically descriptive marks: Holding that a New York limousine service using the appellation "Long Island" in its title was not entitled to a preliminary injunction preventing a Connecticut competitor from using "Long Island" on its limousines.

Long Island-Airports Limousine Service Corp. v. New York Airport Services Corp., 641 F.Supp. 1005 (E.D.N.Y.1986) as as quoted in Hbp, Inc. v. American Marine Holdings, Inc., 290 F.Supp.2d 1320 (M.D. Fla., 2003)

Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.

We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We don’t stop here but this is a good start!

Our rates are very reasonable. We can provide each step individually or as a trademark registration package. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate.

We can provide a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We can help.

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For more information from Not Just Patents, see our other sites:      

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Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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