Legal Definitions - declaration under § 15

A declaration under § 15, also known as a Declaration of Incontestability, is a formal legal filing made with the United States Patent and Trademark Office (USPTO) by the owner of a registered trademark. This declaration, permitted under Section 15 of the Lanham Act (the primary federal trademark law in the U.S.), asserts that the trademark has been in continuous use for five consecutive years following its registration, and that there has been no adverse decision or pending legal proceeding challenging the owner's rights to the mark during that period.

Once accepted by the USPTO, a trademark becomes "incontestable." This means its validity can no longer be challenged on certain grounds, such as claims of prior use by another party, except for very limited exceptions like fraud in obtaining the registration or abandonment of the mark. Achieving incontestable status significantly strengthens the trademark owner's legal position, providing a higher level of protection and making it much easier to enforce their rights against infringers.

Examples:

• Securing Brand Identity: Imagine "AquaFlow," a company that manufactures water filtration systems, successfully registered its trademark five years ago. Since then, they have continuously used the "AquaFlow" name and logo across all their products and marketing materials. To ensure their brand identity is as legally secure as possible and to deter potential future challenges from competitors, AquaFlow's legal team files a declaration under § 15 with the USPTO.

  This illustrates how a business uses the declaration to solidify its ownership and make its trademark virtually unchallengeable on most grounds, providing peace of mind and strong legal backing for their established brand.

• Enhancing Business Value for Licensing: "PixelPerfect," a graphic design software company, holds a registered trademark for its unique software name and interface elements. A larger technology firm expresses interest in licensing PixelPerfect's software for integration into its own suite of products. To make the intellectual property more attractive and reduce risk for the potential licensee, PixelPerfect files a declaration under § 15 for its trademark.

  This demonstrates how an incontestable mark adds significant value and certainty to business transactions involving intellectual property. It assures potential partners or investors of the mark's robust legal standing, making it a more secure asset for licensing or acquisition.

• Strengthening Position in a Dispute: "GreenThumb Gardens," a landscaping service, has been operating with its registered trademark for six years. A new competitor, "Green Thumbs Landscaping," enters the market, causing confusion among customers. Before initiating a lawsuit for trademark infringement, GreenThumb Gardens ensures its trademark is incontestable by filing the declaration under § 15.

  This shows how an incontestable mark provides a powerful legal advantage in infringement disputes. It removes many common defenses a competitor might raise, making it easier for the trademark owner to enforce their rights and protect their brand from confusingly similar marks.