What Is A Declaration Of Incontestability Under Section 15?

Trademark incontestability is a crucial concept for businesses and brand owners who want to strengthen and protect their trademarks. In simple terms, incontestability is a status a registered trademark can achieve, offering stronger legal protections and making it much harder for others to challenge the trademark’s validity. This status is governed by Section 15 of the Trademark Act (15 U.S.C. § 1065). Let’s explore what incontestability means, how it can be obtained, its benefits, and its limitations.

The Importance of Achieving Trademark Incontestability

When a trademark becomes incontestable, the owner’s exclusive right to use the trademark in connection with the goods or services it covers cannot be easily disputed in court. This elevated status is not automatically granted; it must be earned by meeting specific legal requirements. The concept of incontestability is designed to provide greater security to trademark owners, ensuring their brands remain protected from frivolous or unjustified legal challenges.

The Process of Obtaining Trademark Incontestability

To achieve incontestable status, the trademark owner must file a “Section 15 Declaration” with the United States Patent and Trademark Office (USPTO). The declaration must confirm several key points. First, the trademark must have been in continuous use in commerce for at least five consecutive years following its registration. This means the trademark has been actively used in the sale or advertising of the goods or services listed in the registration. Second, there must have been no final legal decision against the owner’s right to use the trademark. This includes decisions from courts or the USPTO that would adversely affect the owner’s claim to the trademark. Third, there should be no ongoing legal proceedings challenging the owner’s right to use the trademark. This means that at the time of filing the declaration, there are no unresolved disputes over the trademark’s validity or the owner’s rights.

Once these conditions are met and the Section 15 Declaration is filed, the USPTO will record the declaration without examining its merits. It’s important to note that the USPTO’s acceptance of the declaration does not constitute a determination that the trademark is incontestable. Instead, it means the declaration has been officially recorded.

Benefits of Trademark Incontestability

Incontestable status provides several trademark benefits to trademark owners. One primary benefit is stronger legal protection. Once a trademark is incontestable, it becomes much more difficult for others to challenge its validity on the grounds of descriptiveness or lack of distinctiveness. This added layer of protection can be invaluable in maintaining the integrity and exclusivity of a brand. In legal disputes, an incontestable trademark is presumed valid. This presumption shifts the burden of proof to the challenger, who must provide compelling evidence to overcome this presumption. This can deter potential challengers and reduce the likelihood of costly and protracted legal battles.

Incontestable status also enhances the ability to enforce trademark rights. Trademark owners can use the incontestable status to secure injunctions and other legal remedies against trademark infringers. This can be particularly useful in preventing unauthorized use of the trademark and protecting the brand’s reputation. Additionally, an incontestable trademark can significantly increase the value of a brand, providing a stronger foundation for business growth and expansion.

Limitations and Exceptions to Incontestability

Despite its robust protection, incontestability is not absolute. There are specific grounds on which an incontestable trademark can still be challenged. One such ground is genericness. If a trademark becomes a common term for the goods or services it represents, it can lose its distinctiveness and be challenged as generic. Fraud is another ground for challenging an incontestable trademark. If it is proven that the trademark was obtained through fraudulent means, such as providing false information in the trademark registration process, the incontestable status can be revoked.

Abandonment is also a valid ground for challenge. If the trademark is not used for an extended period, it can be considered abandoned, and the incontestable status can be lost. Misrepresentation is another exception. If the trademark is used in a misleading way that damages another’s reputation, it can be challenged. This includes using the trademark in a manner that confuses consumers or creates false associations with other brands.

Case Examples and Legal Precedents

Several court cases highlight the impact and importance of incontestability in trademark law. In the landmark case of Park ‘N Fly v. Dollar Park & Fly, Inc., the Supreme Court upheld that an incontestable trademark could not be challenged on the grounds of descriptiveness. This decision reinforced the strength and significance of incontestability, providing trademark owners with a powerful tool to protect their brands. Another notable case is In re Am. Sail Training Ass’n. In this case, the Trademark Trial and Appeal Board (TTAB) ruled that an examining attorney could not require a disclaimer of part of an incontestable trademark. This ruling illustrated how incontestability protects against certain types of challenges and reinforces the trademark owner’s rights.

In contrast, the case of In re Cordua Rests., Inc. demonstrated that incontestability does not protect a trademark from all challenges. The court found that the Board did not err in declining to consider the alleged incontestability of a prior registered standard-character word mark in evaluating the genericness of the stylized form thereof in connection with the same services. This case underscores the limitations and exceptions to incontestability.

Practical Considerations for Trademark Owners

For trademark owners, achieving incontestable status is a strategic move that can significantly enhance the protection and enforcement of their trademarks. It is essential to ensure that the trademark is continuously used in commerce and that all legal requirements for filing the Section 15 Declaration are meticulously followed. Maintaining accurate records of the trademark’s use and promptly addressing any legal challenges can help in achieving and retaining incontestable status.


Trademark incontestability provides significant advantages to trademark owners by making it more difficult for others to challenge their trademark rights. By understanding the process to achieve incontestable status and the protections it offers, businesses can better secure their brand identity and enhance their legal position in the marketplace. If you own a registered trademark, consider the benefits of making it incontestable to strengthen your brand’s legal defenses. With the right strategies and legal support, achieving incontestable status can be a powerful asset in protecting and promoting your brand.  Please do not hesitate to contact our law firm for trademark assistance.

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