A Primer on What Incontestability is Good For, Eligibility and How to Get It

By Howard L. Hoffenberg, Esq.





On October 12, 2017, Oppendahl reported in his blog entitled Ant-like Persistence that [t]he majority of US trademark registrations lack incontestable status, because the owner of the registration has not filed Section 15 papers at the USPTO. A byproduct of this revelation is that the reason Section 15 papers were not filed is because the registration owner did not even know there was such a thing called a Section 15 affidavit/declaration to achieve something called incontestability. This article attempts to educated readers on Section 15 affidavits/declarations.


Burdens of Proof in a Lawsuit

As a prefatory point, many lawsuits are won/lost based on the burdens of proof. Who must prove what, by how much evidence and at what point in an analysis can make the difference in whether plaintiff or defendant prevails in a lawsuit. Some plaintiffs lose meritorious claims because they were stymied in gathering evidence. On the hand, other plaintiffs skate by because they did not bear a burden of production.


Rebuttable Presumptions Arising Out of a Registration that is Not Incontestable

A newly issued Federal Trademark Registration carries with it rebuttable presumptions (or also referred to as evidentiary presumptions effecting the burden of going forward (explained below.)) Two key rebuttable presumptions are that the registered mark is owned by the registration owner and that the mark is valid. These rebuttable presumptions (or presumptions effecting the burden of going forward) effectively mean that a trademark infringement plaintiff is relieved from making out a prima facea case of ownership and validity by simply introducing the registration certificate.

Thus, after a plaintiff introduces a registration (not made incontestable, as discussed below,) defendant is put in the precarious position of having to introduce proof sufficient to rebut the presumptions of ownership and validity. The practical reality in US courts is that the judge gets to decide how much evidence a defendant must introduce to rebut the presumption. The law is not uniform and there is decisional authority holding that a judge must afford the presumption substantial weight. If defendant cannot rebut the presumption, plaintiff wins on these two issues with the introduction of no more evidence than its registration.

If defendant introduces evidence that is sufficient to rebut a presumption, the ultimate burden of production, or simply called the burden of proof, always remained with plaintiff to establish ownership and validity by a preponderance of the evidence. That is, upon defendant introducing sufficient evidence to rebut a presumption of ownership and/or validity, the presumption disappears as if it never existed. The totality of the evidence introduce by plaintiff and defendant must preponderate (weigh 51% or more) in favor of plaintiff on ownership and validity for plaintiff to make out a claim. In more detail, if the evidence weighs 51% or more in favor of plaintiff on an issue, then plaintiff wins on that issue. Otherwise, the defendant wins on the issue.

In sum, without a registration and the presumptions carried by a registration, a trademark infringement plaintiff would carry both a burden of going forward and a burden of production to establish ownership and validity. The presumption flowing from a registration allows a plaintiff to satisfy burden of going forward by merely introducing the registrations; but, if a defendant rebuts the presumption, the burden of production/proof comes into play for plaintiff to establish ownership and validity by preponderance of evidence.


Irrebuttable Presumptions Arising Out of a Registration that is Incontestable


With the foregoing elaborate background in mind, the gravamen of incontestability can be understood. There is a Federal statute that upon the satisfaction of certain conditions allows for these rebuttable presumptions on ownership and validity to be transformed into irrebuttable presumptions with exceptions. An irrebuttable presumption means just that, irrebuttably presumed. Unless an exception applies, the registration owner is conclusively presumed to be the owner of the mark on the goods identified in the registration and the trademark is conclusively presumed valid, regardless of what evidence is introduced at trial, the actual truth or past legal errors in getting to an incontestable status.


The aforementioned statute is Title 15 of the United States Code, Section 1065 (15 USC 1065). Section 1065 is entitled Incontestability of right to use mark under certain conditions. In pertinent part the statute reads as follows:


Except on a ground . . . to cancel . . . under paragraphs (3) and (5) of section 1064 [discussed below] . . ., and except . . . to which . . . a mark . . . infringes a . . . right acquired under the law of any State . . . continuing from a date prior to the date of registration . . . the right of the owner to use such registered mark . . . which . . . 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: Provided, That--

(1) there has been no final decision adverse to the owners claim of ownership . . . or to the owners right to register . . . and

(2) there is no proceeding involving said rights pending in the . . . Trademark Office or in a court . . . and

(3) an affidavit is filed with the Director within one year after the expiration of any such five-year period . . . and

(4) no incontestable right shall be acquired in a mark which is the generic name for the goods . . .


In plain English, the status of incontestability involves: (i) eligibility conditions, (ii) a procedure to be followed and (iii) circumstances excepted from the irrebuttable presumptions.

In essence, for a registration to be eligible for incontestability status there must be a five-year period preceding the filing of an affidavit/declaration (discussed below) during which:

A.   the owner of the mark continuously used the mark; i.e., during these five years, there were no interruptions by the owner in selling the goods and/or services listed in the registration with the good and/or services being properly branded with the mark AND

B.   there were no legal proceedings challenging ownership and/or validity of the mark.


There is a procedure to be followed. The status of incontestability does not happen automatically. An affidavit, now a declaration, needs to be filed with the US Trademark Office, reviewed and approved. In the affidavit/declaration, the registration owner swears under the penalty of perjury to five years of continuous use and no legal challenges. Today, everything is done by the internet. The affidavit is prepared and electronically filed at the website for the US Trademark Office. For do-it-yourselfers, the links are, as may be applicable: https://teas.uspto.gov/postreg/s08n15 OR https://teas.uspto.gov/postreg/sect15 .


Lastly, there are exceptions to getting the irrebuttable presumptions that flow from incontestable status. These exceptions are as follows:

A. There is a senior common law user and only in the area of use at the time of registration by the senior common law user, as well a buffer zone for normal expansion;

B. The registration owner allows the mark to be genericized as the common name for a product or service; e.g., aspirin, escalator, thermos and perhaps, GOOGLE (GOOGLE being generic puts shivers in a spinal cord and a ruling by the United States Supreme Court is awaited (cert. granted);

C. The Registrant practiced fraud on the Trademark Office and/or used the mark in a manner to misrepresent the goods (i.e., paragraph (3) of Section 1064 with simplification) OR

D. The Registrant engaged in uncontrolled licensing and/or acquiescence of use by others so as not to maintain quality control (i.e., paragraph (5) of section 1064 with simplification.)




In conclusion, the conclusive presumptions that flow from incontestability can make the difference in winning on the issues of ownership and validity in an infringement lawsuit. If eligible, the cost-benefit analysis weighs in favor of troubling to file a Section 15 affidavit/declaration. There is a reported widespread failure by trademark registration owners to elevate their registrations to incontestable status because of ignorance by registration owners of incontestablity.


About the Author


This article was written by Howard Leslie Hoffenberg, Esq. of the IP and Business Law Offices of Howard L. Hoffenberg, Esq. (Los Angeles, California.) You are invited to call to 310-670-5825 to discuss the suitability of making an appointment with Howard Hoffenberg. For more information, visit howardhoffenberg.com, howardlhoffenberg, howardlesliehoffenberg and ipcounselor.com.