As early as 5 years after your trademark registration it may be eligible to acquire a status of “incontestability”, meaning that your trademark may no longer be challenged on grounds for being merely descriptive of a product, surname, or geography.
Because this is one of the most common legal challenges in trademark law, becoming incontestable to these arguments is a very powerful status to obtain.
To put this in perspective, imagine you have accused your competitor of infringing your trademark. When this occurs, it is common for a defendant to argue that your trademark should be cancelled for being descriptive but if your trademark has acquired incontestability status then they are not even allowed to raise the argument!
Your trademark may acquire incontestability status if it meets the following criteria:
- Your trademark has not been hurt by litigation;
- There is no pending litigation involving the trademark;
- The trademark has been in use for 5 consecutive years; and
- Your trademark has not become generic.
If your trademark registration meets the above criteria you may file a Section 15 Declaration for incontestability with the USPTO to acquire the protection. If you are prepared to file a Section 15 Declaration at the same time as a renewal for your trademark, you may combine your Section 15 Declaration with a Section 8 Declaration to simultaneously claim incontestability and continued use of your trademark within the same form.
U.S. CUSTOMS AND BORDER PROTECTION
Another post-registration benefit for your trademark is the opportunity to record your mark with the U.S. Customs and Border Protection (CBP) agency.
The CBP is a federal agency responsible for protecting our nation’s borders, and, if you record your registered trademark with CBP the information becomes available at all US ports where the CBP aggressively targets, intercepts, detains, seizes, and forfeits infringing good. Even better, you will receive notice when one of these actions has occurred.
In effect, not only will the CBP help you keep knockoff products and services from entering the country, they will self-report to you when they do.