What Is An Incontestable Trademark And How Do I Get One?

Both Oklahoma state law and US federal laws recognize and protect trademarks and other intellectual property. Both state and federal law have processes to follow to register your trademark. Only US federal patent and trademark law provides the opportunity to recognize an incontestable trademark, however.

The Value Of The Mark

The law in Oklahoma trademark law defines a “mark” as a “word, name, symbol, device, or any combination of the foregoing in any form or arrangement”. A “service mark” or a “trademark” is simply a mark used to identify unique services or goods, respectively, as different from any other services or goods that might be provided by anyone other than you and your company. A “trade name” is another category of intellectual property that can be registered and protected from being used by other companies, so that you can own and protect the brand and reputation of your company and the goods and services that it offers.

The Value Of Registration

To register a trademark or copyright under Oklahoma state law, there is a filing fee and application process. Registration in more than one office, such as in both state and federal trademark offices, can help you to build solid evidence that you have been using the mark consistently and that it was a matter of public record that you claimed the exclusive use of the mark.
To register on the Principal Register of the USPTO you must follow the steps and file the necessary information with the federal office. This is the only step that can prepare you with certainty for the possibility to file an affidavit of incontestability in five years after the initial registration.

The Incontestable Trademark

A trademark registration with the USPTO can be “incontestable” on the following conditions:
The mark has been in commercial use consistently for five years;
● The owner of the mark files an affidavit that says that:
○ There have been no decisions against the use of the mark
There are no proceedings that are going to challenge the use
○ The mark has been in continuous use for the required time

By filing the affidavit of incontestability, the evidence in favor of your exclusive right to use the trademark gets stronger, going from a presumption of your right to it—that is, basically taking your word for it—up to “conclusive evidence” of your right.
The strength of an incontestable trademark can be very important if another company were to start advertising with the same or similar business name, logo, or other key element of your business’s identity. Patent and trademark law has some areas of complexity within it, so it is possible that another user of the same or similar trademark may claim the right to use it in ways that may conflict directly with your business, even when you have an incontestable trademark.

Defenses And Denials Of An Incontestable Trademark

A “prior user” of the same or similar trademark may still challenge your “incontestable” trademark. If the other user has been using the mark in a different region of the country, and if the company had the potential to expand its zone of influence with the mark to a nationwide usage, it is possible that the court may recognize this other use as superior to yours. In that case, even an incontestable trademark can be subject to a court order to stop your use of it. The law of intellectual property, including trademarks, is very complicated, and can involve a combination of state and federal laws as written in the law books, along with common law that is based upon earlier court decisions.

Oklahoma Incontestable Trademark Attorney

The business attorneys at Kania Law Office are experienced with trademark laws and other intellectual property issues. We are prepared to help you with your incontestable trademark and can manage USPTO’s complex requirements. For more insights, touch base with a Kania Law Office attorney by calling (918) 743-2233 or by contacting us online.