1605    Affidavit or Declaration of Incontestability Under §15 of the Trademark Act

Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," if the owner of the registration files an affidavit or declaration stating that the mark has been in continuous use in commerce for a period of five years after the date of registration.  To expedite processing, it is recommended that the owner file the §15 affidavit or declaration through TEAS, available at http://www.uspto.gov.   See TMEP §1605.02 .

Under §33(b) of the Act, 15 U.S.C. §1115(b), if the right to use the mark has become incontestable under §15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions.  Sections 15 and 33(b) apply only to registrations issued on the Principal Register.

Filing an affidavit or declaration of incontestability under §15 of the Trademark Act ("§15 affidavit or declaration") is optional.  An eligible registrant may choose to claim the benefits of incontestability and file an appropriate affidavit or declaration, or may elect to retain the registration without those benefits.  The requirements for maintaining and renewing a federal registration are not affected.

The USPTO does not "accept" §15 affidavits or declarations.   Arman’s Systems, Inc. v. Armand’s Subway, Inc. , 215 USPQ 1048, 1050 n.2. (TTAB 1982).  Rather, the USPTO reviews the affidavit or declaration to determine whether it is consistent with the requirements of the statute and rules (e.g. , whether it is signed, whether it was filed at an appropriate time, and whether the §15 claims are properly set forth).

When a §15 affidavit or declaration complies with the requirements of the statute and rules, the USPTO updates its records to acknowledge receipt of the affidavit or declaration and sends a notice of acknowledgment to the owner of the registration.  Acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed; it is not a determination by the USPTO that the registration is in fact incontestable.  The question of whether the registration is incontestable arises and is determined by a court if there is a proceeding involving the mark.

If the §15 affidavit or declaration does not comply with the statute and rules, the USPTO issues a written action notifying the owner of any inconsistency or error, but does not require correction.  If the §15 affidavit or declaration is filed alone, the owner is given six months from the issuance date of the Office action to file a response. If it is filed as part of a combined affidavit or declaration under §§8 and 15 or §§71 and 15, and there are issues in the Office action relating to both parts of the combined filing, the owner must file a response within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) or §71(a), whichever is later. See TMEP §§1604.16, 1613.16. If the issues in the Office action relate only to the §15 affidavit or declaration, the owner is given six months from the issuance date of the Office action to file a response. If no response is received within the required time, the §15 affidavit or declaration will be abandoned. The USPTO does not update its records to acknowledge receipt of a noncompliant affidavit or declaration.  The owner may file a new §15 affidavit or declaration, with a new filing fee.

A fee is required for each class in the registration to which the §15 affidavit or declaration pertains.  37 C.F.R. §§2.6 and 2.167(g).  If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees.  37 C.F.R. §2.167(g).

An owner may abandon a timely filed §15 affidavit or declaration that contains an inaccuracy by filing a petition to the Director under 37 C.F.R. §2.146(a)(3). See TMEP §§1605.03 and 1707.

The limitation of grounds that a third party can raise in a petition to cancel a registered mark under 15 U.S.C. §1064 filed more than five years from the date of registration does not depend on the filing of a §15 affidavit or declaration.   TMEP §1605.06 .

See TMEP §1605.05 regarding a combined affidavit or declaration under §§8 and 15 of the Act, and TMEP §1216.02 regarding the effect of "incontestability" in ex parte examination.

1605.01   Registrations to Which §15 Affidavit or Declaration Pertains

The provisions of §15 of the Trademark Act apply only to registrations issued on the Principal Register under the Act of 1946 and to registrations issued under the Acts of 1905 and 1881 that have been "published" under §12(c) of the Act, 15 U.S.C. §1062(c).  See TMEP §1603 regarding §12(c).

A §15 affidavit or declaration may be filed for a registered extension of protection of an international registration to the United States.  Section 73 of the Trademark Act, 15 U.S.C. §1141m.

Section 15 affidavits or declarations may not be filed for marks registered on the Supplemental Register of the Act of 1946, marks registered under the Act of 1920, or marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have not been claimed under §12(c).  If a §15 affidavit or declaration is filed for a registration that is not eligible for the benefits of §15, the USPTO will not review it and will refund the filing fee.

1605.02   Form for Filing Affidavit or Declaration of Incontestability

To expedite processing, it is recommended that the owner file the §15 affidavit or declaration through TEAS, available at http://www.uspto.gov.  When the affidavit or declaration is submitted electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.

1605.03   Time for Filing Affidavit or Declaration of Incontestability

The owner may not file a §15 affidavit or declaration until the federally registered mark has been in continuous use in commerce for at least five consecutive years after the date of registration.  This may be any five-year period after the date of registration for marks registered under the Act of 1946, or after the date of publication under §12(c) for marks registered under the Acts of 1905 and 1881.

The owner may file the affidavit or declaration within one year after the five-year period that is selected.  37 C.F.R. §2.167(f).  The affidavit or declaration must be both executed and filed within that one-year period.  If the affidavit or declaration is filed earlier than five years after the date of registration or the date of publication under §12(c), the USPTO will not review it and will refund the filing fee.  The owner may file a new affidavit, with a fee, during the statutory filing period.

The USPTO does not review the validity of a claim of continuous use in commerce made in a §15 affidavit or declaration. Therefore, after timely filing a §15 affidavit or declaration, if the owner determines that the affidavit or declaration contained an inaccuracy, the owner may not request that the affidavit or declaration be withdrawn and the fee refunded. In such situations, the owner may file a petition to the Director under 37 C.F.R. §2.146(a)(3) requesting that the §15 affidavit or declaration be abandoned. See TMEP §1707.

An affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  37 C.F.R. §2.195(a)(2).

Section 15 affidavits or declarations filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197.  See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

The USPTO will not acknowledge a §15 affidavit or declaration unless a §8 affidavit or declaration is pending or has been accepted by the Office. If a §15 affidavit or declaration is filed alone during the statutory period for filing the §8 affidavit or declaration, the Post Registration staff will notify the owner that the registration will be cancelled without an acceptable §8 affidavit or declaration. In response to such notification, the owner may request that the §15 affidavit or declaration be treated as a deficient §8 affidavit or declaration . See TMEP §1604.04 regarding the deadline for filing a §8 affidavit or declaration and TMEP §1604.05 regarding the requirements for filing a §8 affidavit or declaration.

See TMEP §1605.05 regarding a combined affidavit or declaration under §§8 and 15 of the Act.

1605.04   Requirements for Affidavit or Declaration of Incontestability  

Section 15 of the Act refers to the affidavit or declaration merely as "setting forth" the specified information.   See 15 U.S.C. §1065(3).  Therefore, no showing or proof beyond the owner’s verified statement is required.

Must be Filed by Owner.   In order to be effective, the §15 affidavit or declaration must be filed by the person who is the owner of the registration at the time the affidavit or declaration is filed.  37 C.F.R. §2.167(a).  If the affidavit or declaration was filed by the wrong party, the true owner may file a new affidavit or declaration, with a new filing fee.

Fee.  A fee is required for each class in the registration to which the §15 affidavit or declaration pertains.   See 37 C.F.R. §§2.6 and 2.167(g).  If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees.  37 C.F.R. §2.167(g).

Goods/Services Must be Recited.   The §15 affidavit or declaration must specify the goods or services recited in the registration on or in connection with which the mark has been in continuous use for the five-year period after the date of registration or publication under §12(c), and is still in use in commerce.  15 U.S.C. §1065(3); 37 C.F.R. §2.167(c).  More than one affidavit or declaration may be filed at different times for different goods/services in the same registration.

Mark Must be in Use in Commerce.   Regardless of the basis for registration, the use on which the §15 affidavit or declaration is based must be use in commerce.  This applies to both foreign and domestic registrants.  It is not necessary to specify the type of commerce (e.g. , interstate) in which the mark is used.  The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the United States Congress can regulate, unless there is contradictory evidence in the record.  See TMEP §§901 et seq . regarding use in commerce.

No Adverse Decision or Pending Proceeding Involving Rights in the Mark.   The §15 affidavit or declaration must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods or services, or to the owner’s right to register the mark or to keep the mark on the register.  It must also state that there is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of.  15 U.S.C. §§1065(1) and (2); 37 C.F.R. §§2.167(d) and (e).  If the USPTO finds facts contrary to either of the foregoing statements, the USPTO will not acknowledge receipt of the §15 affidavit or declaration.   See TMEP §1605 .  (The USPTO does not consider a proceeding involving the mark in which the owner is the plaintiff, where there is no counterclaim involving the owner’s rights in the mark, to be a "proceeding involving these rights" that would preclude the filing or acknowledgment of a §15 affidavit or declaration.)

If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit or declaration, even if the proceeding was instituted after the owner filed the §15 affidavit or declaration but before the affidavit or declaration was reviewed by the USPTO.  If a pending proceeding is later dismissed, the owner may file a new affidavit or declaration, with a new filing fee.

Verification.   The §15 affidavit or declaration must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the owner of the registration or a person properly authorized to sign on behalf of the owner of the registration.  37 C.F.R. §2.167(a).  A "person who is properly authorized to sign on behalf of the owner" is:  (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the owner.  37 C.F.R. §2.193(e)(1).  Generally, the USPTO does not question the authority of the person who signs a §15 affidavit or declaration, unless there is an inconsistency in the record as to the signatory’s authority to sign.   TMEP §611.03(a) .

See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of electronically filed affidavits or declarations.

1605.05   Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration

A §15 affidavit or declaration may be combined with a §8 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §§8 and 15.

The filing fee for a combined §8 and §15 affidavit or declaration is the sum of the cost of the individual filings.  For example, if the filing fee for the §8 affidavit or declaration is $100 per class, and the filing fee for the §15 affidavit or declaration is $200 per class, then the filing fee for the combined affidavit or declaration under §§8 and 15 is $300 per class.

If the combined §8 and §15 affidavit or declaration is filed during the §8 grace period, the grace period surcharge per class for the §8 affidavit or declaration must be paid.  There is no grace period surcharge for a §15 affidavit or declaration.

If a combined §8 and §15 affidavit or declaration is filed, and the §8 affidavit or declaration is deficient, the deficiency may be corrected before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the relevant deadline with the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c).  See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies in a §8 affidavit or declaration.  There is no deficiency surcharge for a §15 affidavit or declaration.

To expedite processing, it is recommended that the owner file the combined §8 and §15 affidavit or declaration through TEAS, available at http://www.uspto.gov.  When the combined affidavit or declaration is submitted electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied and pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.  Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre‑printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.

See TMEP §1613.19 regarding a combined filing under §§71 and 15 of the Act.

1605.06   Section 14 Limitation is Independent of §15 Affidavit or Declaration

Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years from the date of registration or publication under §12(c).  This limitation of grounds does not depend on the filing of a §15 affidavit or declaration. Trademark Trial and Appeal Board Manual of Procedure   ("TBMP") §307.02(b).