What Does a Section 15 Declaration of Incontestability Give You?

A registration on the Principal Register is prima facie evidence that your mark is valid and that you own it. A Section 15 declaration of incontestability upgrades that to conclusive evidence, and takes the single most common defense, that your mark is merely descriptive, off the table for good. It costs one filing and a fee, it is available after five consecutive years of continuous use following registration, and most owners file it alongside their first Section 8 declaration. CLP’s trademark maintenance and Section 15 filing team recommends it for nearly every registration that qualifies. The word “incontestable” promises more than the statute delivers, though, so it is worth knowing exactly where the protection stops.

Requirements for a Section 15 declaration of incontestability

Section 15 of the Lanham Act sets five conditions:

• The mark is registered on the Principal Register. Supplemental Register marks do not qualify.
• The mark has been in continuous use in commerce for five consecutive years after the registration date, for the goods and services named in the declaration.
• There has been no final decision adverse to your ownership of the mark or your right to register or keep it.
• No proceeding involving those rights is pending in the USPTO or a court.
• The mark is not, and has not become, the generic name for the goods.

The declaration must be filed within one year after the end of any five-year period of continuous use. If you file at year six, the five years counted are years one through five, or any later five-year stretch. If use was interrupted, the clock restarts, and you file once a new five-year run is complete. The filing is per good and service: claim incontestability only for the items that were in continuous use the whole time.

What incontestability changes

Under Section 33(b), an incontestable registration is conclusive evidence of the validity of the mark, your ownership and your exclusive right to use it for the registered goods. The practical effect, confirmed by the Supreme Court in Park ‘N Fly v. Dollar Park and Fly, is that a defendant can no longer argue the mark should never have registered because it is merely descriptive and lacks secondary meaning. For a mark that sits near the descriptive line, that is the attack most likely to succeed, and incontestability removes it.

The effect carries into TTAB proceedings as well. After the fifth anniversary, a petition to cancel cannot rest on descriptiveness or likelihood of confusion with a prior mark, a shift we describe in our post on trademark cancellation grounds. Incontestability does not create that five-year cutoff, but it locks in the result in litigation, where a court could otherwise still reach the question.

What it does not protect against

Section 33(b) lists the defenses that survive, and the list is long:

• The registration or the incontestable status was obtained by fraud.
• The mark has been abandoned.
• The mark is being used to misrepresent the source of the goods.
• The defendant’s use is a descriptive fair use of its own name or of a term in its ordinary meaning.
• The defendant adopted and used the mark before your registration, in a limited area where it continues to use it.
• The mark is functional.
• Equitable defenses such as laches, estoppel and acquiescence.

Genericness is also fully available, because a generic term cannot be a mark at all. And incontestability says nothing about infringement. It establishes that your mark is valid; it does not establish that the defendant’s mark is confusingly similar, and it does not turn a weak mark into a strong one for that analysis. A court weighing the likelihood of confusion factors will still treat a descriptive-leaning mark as commercially weaker than an arbitrary one.

Finally, it does not change the renewal schedule. A Section 8 declaration is still due between years nine and ten and every ten years after that, as covered in when a Section 8 declaration is due. An incontestable registration that misses a renewal is cancelled like any other.

Timing and combined filings

The convenient moment is the first Section 8 window, between the fifth and sixth anniversaries, because the use evidence you gather for the Section 8 is the same evidence that supports the Section 15. The USPTO accepts a combined declaration under Sections 8 and 15 in one submission. If use was not continuous for the full five years at that point, file the Section 8 alone and submit the Section 15 later, once any five-year stretch of continuous use is behind you. There is no deadline for the Section 15 itself as long as the registration is alive and the one-year window after a qualifying five-year period is met.

Registrations obtained through the Madrid Protocol under Section 66(a) can also file a Section 15 declaration once they meet the same five-year use requirement in U.S. commerce.

Mistakes that undermine the filing

The most damaging one is claiming five years of continuous use for goods that were dropped for a season and relaunched, or for an entire goods list when only the core product sold continuously. A false Section 15 declaration can be attacked as fraud, which risks the whole registration rather than just the incontestable status. Second is filing while a cancellation petition or an infringement suit is pending; the declaration is improper and will be refused or later challenged. Third is filing in the wrong owner’s name after an unrecorded assignment, which we see often in companies that reorganized without updating USPTO records.

Owners who are enforcing a mark should also read the statute’s limits before leaning on incontestability in a demand letter. Our trademark enforcement and TTAB team sees letters that announce an incontestable registration as if it ended the argument, when the recipient’s actual defense is abandonment of part of the goods list, which incontestability never touched.

If your registration has reached five years of continuous use, Capitol Law Partners can confirm which goods qualify and file the Section 15 declaration with your Section 8 so the two filings support each other. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our trademark maintenance and incontestability page or schedule a consultation.