Combined Declaration of Use and Incontestability of Trademark

• Category: Copyrights Patents and Trademarks
• State: Multi-State
• Control #: US-0966BG
• Format: PDF

Description

A "trademark" is a word, design or combination used by an individual or a business to identify its goods or services. In some cases a trademark can also be a sensory mark--a sound, a color or a smell. While marks identifying services rather than goods are technically referred to a "service marks" we will use the term trademarks to include service marks. Trademarks protect names used to identify goods (or services) and their source of origin. The law protects trademarks in part because trademarked items tend to carry with them certain quality assurances-one would expect an automobile carrying the Rolls Royce trademark to be far superior to most other automobiles. You may use any kind of name or symbol as a trademark to identify your product.
A mark is any word, name, symbol, or design that identifies a product or service. A trademark identifies a product (for example, Coca Cola). A service mark identifies a service (for example, Holiday Inn). A mark may be registered with the United States Patent and Trademark Office (USPTO) if the mark distinguishes a person's product or service from products or services of competitors. Registration of a mark on the Principal Register of the USPTO entitles a person the exclusive use of the mark. Registration can also be accomplished with a State (usually with the Secretary of State of a particular state). However, State registration does not provide as much protection as Federal registration. Before a mark can be registered, it must be used by the "owner," and it must distinguish goods or services from others. The owner of a mark cannot register it with the United States Patent and Trademark Office unless the mark is used in interstate commerce.

A Combined Declaration of Use and Incontestability of Trademark (also known as a Section 15 and Section 8 Declaration) is a document filed with the United States Patent and Trademark Office (USPTO) that provides evidence of proper use of a trademark and establishes the right of a trademark owner to sue for infringement of the trademark. It consists of two parts: a Section 15 Declaration of Use and Section 8 Declaration of Incontestability. The Section 15 Declaration of Use is a sworn statement that the trademark is currently being used in commerce and provides evidence of use by submitting specimens of the trademark in use. The specimens should include the trademark on the product or service, the packaging, and any marketing materials. The Section 8 Declaration of Incontestability is a sworn statement that the trademark has been used for five consecutive years without any challenges to its validity. This declaration strengthens the trademark owner’s rights by providing a legal presumption that the trademark is valid and that the registered owner is the legitimate owner of the trademark. The Combined Declaration of Use and Incontestability of Trademark is an important step in protecting a trademark and establishing the owner’s rights to sue for infringement. It can be filed anytime after five years of use of the trademark, but should be filed within one year of the fifth anniversary of use in order to receive the benefits of incontestability.