What Are Incontestable Trademarks?

After 5 years, a trademark registration becomes incontestable.

What does it mean?

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TRANSCRIPT

After your trademarks registers, you get your trademark registration certificate, all you get is a trademark registration certificate. But in theory, if there was somebody with an unregistered trademark who thinks that they have a prior right to you, and let's say they missed the opposition period—so again, as your trademark goes through the registration process, after it was approved by the Trademarks Office, it will open the opposition period when anyone who thinks that they have a prior right may raise their hand and say, "Please don't register this trademark because I think I have a prior right." If they miss that period or if they lose the opposition, then your trademark gets allowed and then it gets registered.

Let's say somebody who thinks they have a prior right, they miss the opposition, your trademark got registered, and they're like, "Oh damn, I see this trademark registered and it's actually my brand. What do I do?" One of the things that they can do is they can go to court and ask the judge to find that the trademark that you registered is actually not yours, it's theirs. In order to have some predictability in the business world, the laws have been written in a way that the period that this owner has to go to court and request the judge to cancel your trademark registration and give it to them, or just cancel it so that they can file their own trademark application, is limited. You don't have forever to do that. In most countries that do recognize such a right, it's five years. After five years, if your trademark was registered openly for five years, then after that period, even if you do have a prior rate, you can't use it against the owner of a registered trademark.

The only exception really is when the prior owner can prove that the registered owner knew about them and still registered it. It's very difficult to do something like this. When you openly steal something from them, they didn't take any action, it's one thing to prove that you were there first and it's a lot more difficult to prove that not only were you there first but also that the other side knew about you and they still stole it from you. This exception is extremely difficult to prove, so what you want to do is get your trademark registered, wait for the five years until it becomes incontestable, and it gives you another chance to celebrate. Trademarks is all about celebrating. It's all about celebrating your milestones, making sure that you protect the brand. Again, when that five-year mark comes, you're going to say, "Well, not only do I have a trademark registration certificate, now it's an incontestable trademark. Woo!"


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

See our answers to other frequently asked questions about trademarks or leave your comments below!


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