Section 15 Incontestability Not Applicable to Cancellation Proceeding



As stated in section 1216.02 Effect of "Incontestability" in Ex Parte Examination of the Trademark Manual of Examination Procedure:

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 et seq. 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 American 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. In American Sail Training, 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." 230 USPQ at 880.

For determining likelihood of confusion, the fact that a 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 Investments, Inc., 94 USPQ2d 1031 (TTAB 2010).

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 New York Inc., 259 F.3d 1346, 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 n.5, 227 USPQ 1, 7 n.5 (Fed. Cir. 1985) (incontestable status of registration for one speaker design did not establish non-functionality 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 the examining attorney from requiring a 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 a disclaimer of "BEST" in applications seeking registration of BEST! SUPPORT PLUS and BEST! SUPPORT PLUS PREMIER for the same services plus additional services); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff'd, 883 F.2d 1026 (Fed. Cir. 1989) (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 the mark BANK OF AMERICA for computerized financial data processing services under §§2(e)(1) and 2(e)(2), despite applicant's ownership of incontestable registrations of the same mark for related services).

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  • Section 15 of the Act allows for a registrant's exclusive right to use (not the registration of) a mark in commerce on or in connection with the goods or services covered by the registration to become incontestable.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • Concerning applicant's argument regarding its ownership of the incontestable '151 registration, it is of course true that under Section 15 of the Act 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. Section 15 provides, in part, as follows: Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 1064 of this title… the right of the registrant to use such 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…" Thus, the statute clearly states that the incontestability provided applies specifically to the use of the registered mark, rather than registration.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • A review of the relevant legal authorities makes this clear, as well as the fact that even the ownership of an incontestable registration does not allow an applicant to obtain, by that fact alone, another registration for the same or similar mark for somewhat different goods or services.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • Also, in In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), the Court stated that, "The benefits of incontestability are no more than that ‘the registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark in commerce.' …The only thing that becomes incontestable is the right of the registrant to use the mark for the goods or services for which it is registered (emphasis added)." The Court recognized that "ownership of a registration does not of itself authorize the grant of another registration for different goods. Each application for registration must be considered on its own merits." Id. at 1142.
  • Case Finding: The owner of a registered mark may rely on the incontestable status of its registration under Section 15 to enjoin infringement by a third party, and that an incontestable registration cannot be challenged by a party on the ground that the mark is merely descriptive.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • In Park 'N Fly, supra, the owner of an incontestable registration for the mark PARK 'N FLY sued an alleged infringer who was using the mark DOLLAR PARK AND FLY. The defendant argued that the mark PARK 'N FLY was merely descriptive and therefore unenforceable. The Supreme Court disagreed, holding that the owner of a registered mark may rely on the incontestable status of its registration under Section 15 to enjoin infringement by a third party, and that an incontestable registration cannot be challenged by a party on the ground that the mark is merely descriptive.
  • The incontestable status of a prior registration does not alter the analysis for registrability in a later application for a similar mark.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • The Board, when faced with the issue of incontestability in appeals, has generally held that the incontestable status of a prior registration does not alter the analysis for registrability in a later application for a similar mark.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • However, the Board disagreed and affirmed the refusal, saying, "This Office cannot and should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods or services… The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated." Id. at 875-76, and cases cited therein.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • And in In re Best Software, supra, at 1317, the Board earlier dealt with applicant's arguments concerning its ownership of this same registration, which was five years old at the time of decision but for which the Section 15 affidavit or declaration had not yet been processed. The Board relied on much of the same authority discussed above, and also cited In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994)("The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated…. Section 20 of the Trademark Act…gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not be delegated by adoption of conclusions reached by Examining Attorneys on different records. Suffice it to say that each case must be decided on its own merits based on the evidence of record. We obviously are not privy to the record in the files of the registered marks and, in any event, the issuance of a registration(s) by an Examining Attorney cannot control the result of another case.") See also In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 7 n. 5 (Fed. Cir. 1985)(incontestable status of registration for one speaker design does not establish non-functionality of another speaker design with shared feature); and In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) (Examining Attorney may refuse registration on the ground that a mark is primarily merely a surname even if applicant owns incontestable registration of same mark for unrelated goods). Compare In re American Sail Training Association, 230 USPQ 879, 880 (TTAB 1986), where the Board held that an Examining Attorney may not require a disclaimer of "TALL SHIPS" in an application for registration of the mark RETURN OF THE TALL SHIPS, where applicant owns an incontestable registration for the mark TALL SHIPS covering identical services. There, the Board stated 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."
  • Ownership of an incontestable registration does not give the applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incontestable registration.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • In sum, ownership of an incontestable registration does not give the applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incontestable registration.
  • Case Finding: Each application must be evaluated separately, and the incontestability statute did not provide a right ipso facto to register a mark for additional goods when items are added to a company's line or substituted for other goods covered by a registration.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • In In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985), the applicant claimed that its incontestable registration for virtually the same mark ("DURANGOS" vs. "DURANGO") for closely related goods (cigars vs. chewing tobacco) precluded a refusal of its subsequent application as primarily geographically deceptively misdescriptive. The Court disagreed, holding that each application must be evaluated separately, and further stating that the statute did not provide "a right ipso facto to register a mark for additional goods when items are added to a company's line or substituted for other goods covered by a registration."
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • And in In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001), the Court recently rejected an argument that registration should be permitted because of applicant's ownership of an incontestable registration, saying, at 57 USPQ2d 1783: "A registered mark is incontestable only in the form registered and for the goods or services claimed. See In re Merrill Lynch…(holding applicant's incontestable registration of a service mark for "cash management account" did not automatically entitle applicant to registration of that mark for broader financial services); In re Bose Corp., 772 F.2d 866, 873, 227 USPQ 1, 6-7 (Fed. Cir. 1985). A registered mark on goods other than those previously registered carries no presumption of distinctiveness. In re Loew's…(holding incontestable mark DURANGO for cigars insufficient to establish distinctiveness of DURANGO for chewing tobacco). Here, the proposed composite mark is an entirely different mark from SAVE VENICE standing alone, and is used on entirely different goods from those services previously registered under the SAVE VENICE mark. Because the incontestable service mark SAVE VENICE used for fundraising services carries no presumptive weight within this composite mark as applied to the nine international classes of consumer goods at issue, we therefore turn to the Board's evaluation of the graphic and linguistic strength of this element."
  • Section 15 has no application to a cancellation proceeding. Section 14 and Section 15 speak to different purposes, Section 14 being in effect a five year time limit barring certain attacks on a registration, while Section 15 provides incontestable rights of use.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • Similarly, in Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990), the Board held that Section 15 has no application to a cancellation proceeding. "Section 14 and Section 15 speak to different purposes, Section 14 being in effect a five year time limit barring certain attacks on a registration, while Section 15 provides incontestable rights of use." Id. at 1311.
In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002) Grand Total
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) 1
In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) 1
In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) 1
Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990) 1
In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) 1
In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) 1
In re American Sail Training Association, 230 USPQ 879 (TTAB 1986) 1
In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) 1
In re Loew's Theatres Inc., 749 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 1
Grand Total 9 9

Sec. 1065. Incontestability of right to use mark under certain conditions

Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such 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: Provided, That--
    1. (1) there has been no final decision adverse to registrant's claim of ownership of such mark for such goods or services, or to registrant's right to register the same or to keep the same on the register; and
    2. (2) there is no proceeding involving said rights pending in the Patent and Trademark Office or in a court and not finally disposed of; and
    3. (3) an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) of this section; and
    4. (4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title.
The Director shall notify any registrant who files the above- prescribed affidavit of the filing thereof.

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