TMEP 1605: Affidavit or Declaration of Incontestability Under §15 of the Trademark Act

This is the October 2015 Edition of the TMEP

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1605    Affidavit or Declaration of Incontestability Under §15 of the Trademark Act

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 or declaration 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 or declaration 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 or declaration of incontestability under §15 of the Trademark Act (“§15 affidavit or declaration”) is optional. An eligible registrant may choose to claim the benefits of incontestability and file an appropriate affidavit or declaration, 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 or declarations. Arman’s Sys., Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 n.2. (TTAB 1982). Rather, the USPTO reviews the affidavit or declaration 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 or declaration complies with the requirements of the statute and rules, the USPTO updates its records to acknowledge receipt of the affidavit or declaration and sends a notice of acknowledgment to the owner of the registration. 37 C.F.R. §2.167(i). Acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration 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 arises and is determined by a court if there is a proceeding involving the mark.

If the §15 affidavit or declaration does not comply with the statute and rules, the USPTO issues a written action notifying the owner of any inconsistency or error, but does not require correction. If the §15 affidavit or declaration is filed alone, the owner is given six months from the issuance date of the Office action to file a response. If it is filed as part of a combined affidavit or declaration under §§8 and 15 or §§71 and 15, and there are issues in the Office action relating to both parts of the combined filing, the owner must file a response within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) or §71(a), whichever is later. See TMEP §§1604.16, 1613.16. If the issues in the Office action relate only to the §15 affidavit or declaration, the owner is given six months from the issuance date of the Office action to file a response. If no response is received within the required time, the §15 affidavit or declaration will be abandoned. 37 C.F.R. §2.167(h). The USPTO does not update its records to acknowledge receipt of a noncompliant affidavit or declaration. The owner may file a new §15 affidavit or declaration, with a new filing fee. 37 C.F.R. §2.167(k)

A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. 37 C.F.R. §§2.6, 2.167(g). If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).

An owner may abandon a timely filed §15 affidavit or declaration that contains an inaccuracy by filing a petition to the Director under 37 C.F.R. §2.146(a)(3). 37 C.F.R. §2.167(j); see TMEP §§1605.03, 1704, 1707.

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 or declaration. 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.