T.M.E.P. § 1605
Affidavit of Incontestability Under ¤15
Executive summary:
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1605 Affidavit of Incontestability Under §15
Section 15 of the Trademark Act, 15 U.S.C. 1065, provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," if the owner of the registration files an affidavit stating that the mark has been in continuous use in commerce for a period of five years after the date of registration. To expedite processing, it is recommended that the owner file the §15 affidavit through TEAS, available at http://www.uspto.gov. See TMEP §1605.02.
Under §33(b) of the Act, 15 U.S.C. 1115(b), if the right to use the mark has become incontestable under §15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions. Sections 15 and 33(b) apply only to registrations issued on the Principal Register.
Filing an affidavit of incontestability under §15 of the Trademark Act ("§15 affidavit") is optional. An eligible registrant may choose to claim the benefits of incontestability and file an appropriate affidavit, or may elect to retain the registration without those benefits. The requirements for maintaining and renewing a federal registration are not affected.
The USPTO does not "accept" §15 affidavits. Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048, 1050 n.2. (TTAB 1982). The Post Registration examiner reviews the affidavit to determine whether it is consistent with the requirements of the statute and rules (e.g., whether it is signed, whether it was filed at an appropriate time, and whether the §15 claims are properly set forth).
When a §15 affidavit complies with the requirements of the statute and rules, the USPTO updates its records to acknowledge receipt of the affidavit and sends a notice of acknowledgment to the owner of the registration. Acknowledging receipt of the affidavit provides notice to the public that an affidavit of incontestability has been filed; it is not a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable is determined by a court in a proceeding involving the mark.
If the §15 affidavit does not comply with the statute and rules, the USPTO issues a written action notifying the registrant of any inconsistency or error, but does not require correction. The USPTO does not update its records to acknowledge receipt of a noncompliant affidavit. The registrant has the option of filing a new §15 affidavit, with a new filing fee.
A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. 37 C.F.R. §§2.6 and 2.167(g). If insufficient fees are included with the affidavit, the examiner will issue an Office action allowing applicant additional time to submit the required fees. 37 C.F.R. 2.167(g).
The limitation of grounds that a third party can raise in a petition to cancel a registered mark under 15 U.S.C. 1064 filed more than five years from the date of registration does not depend on the filing of a §15 affidavit. TMEP §1605.06.
See TMEP §1605.05 regarding a combined affidavit or declaration under §§8 and 15 of the Act, and TMEP §1216.02 regarding the effect of "incontestability" in ex parte examination.