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Will the COVID-19 Pandemic Impact Your Ability to Secure an “Incontestable” Trademark?

April 28, 2020

Section 15 of the Lanham Act, subject to certain specified exceptions, provides that the right of an owner “to use [a] registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable.” See 15 U.S.C. § 1065 (emphasis added). This affords the owner of a registered mark valuable benefits, including, subject to certain express exceptions, a bar on others challenging:

The validity of the mark, including any challenge that the mark is defective on the grounds of mere descriptiveness. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 105 S. Ct. 658, 661 (1985).

The registration of the mark.

The ownership of the mark.

The owner’s exclusive right to use the mark in connection with the registered goods and services.

See 15 U.S.C. § 1115(b).