Incontestable Trademarks – A Section 15 Declaration of Incontestability Protects TMs from Claims that the Mark is Merely Descriptive.

After five years a trademark registered with the USPTO must be renewed by filing a Section 8 Declaration of Use. At the same time, a trademark registered on the Principal Register may be declared “incontestable” by filing a Section 15 Declaration of Incontestability. See, 15 U.S.C. §1065.

Incontestability provides certain specific rights, stated in 15 U.S.C. §1115(b): “To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.”        

Section 1115 states these items, but what does it mean in practice? In Park ‘N Fly, Inc. v Dollar Park and Fly, Inc., 469 U.S. 1985) the U.S. Supreme Court analyzed this section and held that an incontestable trademark cannot be challenged for being “merely descriptive”.

The Park ‘N Fly company had a registered trademark for PARK ‘N FLY, and the trademark had been declared incontestable.

Park ‘N Fly sued Dollar Park and Fly (hereafter “Dollar”) claiming infringement of the PARK ‘N FLY trademark. Dollar claimed that PARK ‘N FLY trademark was “merely descriptive” in an attempt to invalidate the registered trademark.

The Supreme Court held that an incontestable trademark cannot be challenged for being merely descriptive. The Supreme Court made clear that a trademark can be challenged for being merely descriptive prior to a declaration of incontestability, but after that – No. The Court stated “a mark may be canceled on the grounds that it is merely descriptive only if the petition to cancel is filed within five years of the date of registration.”

According to USPTO rules, a “merely descriptive” trademark should not be registered on the Principal Register. But it can happen, and a descriptive mark may be registered on the Principal Register. It’s arguable that PARK ‘N FLY is descriptive. However, once a Declaration of Incontestability is filed, that mark cannot be invalidated by claiming that the mark is descriptive.

Here is a YouTube video about this if you’re interested in a bit deeper dive into this subject.

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