TMEP 1216.02: Effect of "Incontestability" in Ex Parte Examination

October 2017 Edition of the TMEP

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1216.02    Effect of "Incontestability" in Ex Parte Examination

Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which a registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become incontestable. See TMEP §§1605–1605.06 for information about the requirements for filing an affidavit of incontestability under §15.

In Park ‘N Fly v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985), 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 In re Am. Sail Training Ass’n, 230 USPQ 879 (TTAB 1986), 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, and the identical part of the applied-for mark would not be considered generic. 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." Id. at 880.

For determining likelihood of confusion, "the fact that opposer's federally registered trademark has achieved incontestable status means that it is conclusively considered to be valid, but it does not dictate that the mark is 'strong.'" Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1036 (TTAB 2010). Moreover, although "an incontestable registration may not be challenged as invalid for mere descriptiveness," incontestability does not preclude a finding that, in terms of conceptual strength, the mark is descriptive for purposes of determining the inherent strength of a mark as a factor relevant to likelihood of confusion. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476-77 (TTAB 2014); see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016) (noting that registrant’s mark was "presumptively distinctive" under Trademark Act §§7(b) and 33(a), but finding that the evidence showed that the mark was "nevertheless weak as a source indicator" for purposes of determining likelihood of confusion).

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. See In re Save Venice N.Y. Inc., 259 F.3d 1346, 1353, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001) (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 Merrill Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services); In re Bose Corp., 772 F.2d 866, 873, 227 USPQ 1, 6–7 (Fed. Cir. 1985) (incontestable status of registration for one speaker design did not establish nonfunctionality of another speaker design with shared feature); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (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 Best Software Inc., 63 USPQ2d 1109, 1113 (TTAB 2002) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude examining attorney from requiring 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., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring disclaimer of "BEST" in applications seeking registration of BEST! SUPPORTPLUS and BEST! SUPPORTPLUS PREMIER for the same and additional services); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) (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 BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (examining attorney could refuse registration of BANK OF AMERICA under §§2(e)(1) and 2(e)(2), despite applicant’s ownership of incontestable registrations of same mark for related services); see also In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (finding 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).