Section 1065 - Incontestability of right to use mark under certain conditions

16 Analyses of this statute by attorneys

  1. Sixth Circuit Provides Guidance in Trademark Cases

    Squire Patton Boggs LLPJeffrey LongFebruary 9, 2017

    It applied in 1995 to register the trademark for INTELLIJET with the USPTO. The application was approved, and the company continued to expand, develop, and use the product, until 2002 when it filed a “declaration of use and incontestability,” pursuant to 15 U.S.C. §1065, which was also accepted by the trade office. The Defendant, IntelliJet Group LLC, was founded in 2005, and offers referrals to customers looking for aircraft management and leasing services.

  2. Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

    Akerman LLP - Marks, Works & SecretsRachel RudenskyMarch 16, 2020

    “Although unlawful first use presents a relatively novel legal question, it is at least a purely legal question. The Court will address (1) the issue of Kiva Brands’ prior use of the mark on federally-illegal precuts, and (2) Kiva Brands’ argument that 15 USC 1065 requires a different result than the Court reached earlier.”As the Court noted, to register a trademark, an applicant must show that the mark is in use in commerce, and the weight of authority has held that use in commerce means “lawful use.” The United States Patent and Trademark Office has routinely denied registration of trademarks for products whose use violates federal law.

  3. Will Nonuse Due to COVID-19 Delay Trademark Incontestability?

    Seyfarth Shaw LLPJoseph Myers, IIIApril 14, 2020

    Federal law provides that if a trademark registered on the Principal Register of the US Patent and Trademark Office (USPTO) has been used continuously for five consecutive years following registration, the trademark registration can become incontestable. 15 U.S.C. § 1065. This is accomplished by the owner filing a declaration of incontestability with the USPTO.

  4. Trademark Incontestability and Fraud on the U.S. Patent and Trademark Office: The Federal Circuit Clarifies One Issue but Leaves Another Unresolved

    Kilpatrick Townsend & Stockton LLPTheodore Davis Jr.October 26, 2023

    on a fraudulent Section 15 affidavit, the majority found that respondent could prevail even if the court assumed fraud.38 Thus, the question of whether reckless disregard for the truth in affidavits can satisfy the USPTO’s strict scienter requirement remains an open question of law.ConclusionIn holding that the filing of a fraudulent Section 15 declaration of incontestability is not a ground for the cancellation of a registration on the Principal Register, the Federal Circuit in Great Concepts has created a split in the federal circuit courts of appeals that may ultimately require resolution by the Supreme Court. Of greater significance in the immediate short term, however, the decision leaves open the question of whether a reckless disregard of the truth can satisfy the requirement that a declarant act with an intent to deceive the USPTO. Great Concepts therefore cannot be considered the last word on either of these issues.1 No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023).2 15 U.S.C. § 1065 (2018).3 Int’l Ord. of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 1091 (Fed. Cir. 1984).4 15 U.S.C. § 1064. 5 Id.6 Id. §§ 1057(b), 1115(a). Sections 7(b) and 33(a) currently differ from each other in that Section 33(a), but not Section 7(b), recites that the prima facie evidence represented by a registration for which no declaration of incontestability has been filed “shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.” Id. § 1115(a). Section 33(a) assumed its present form through amendments enacted by the Trademark Law Revision Act of 1988. See Pub. L. 100-667, § 128, 102 Stat. 3935, 3944.7 See 15 U.S.C. § 1065.8 Id. § 1065.9 See id. § 1115(b)(1)-(9).10Id. § 1115(b)(1).11 Id. § 1058.12 U.S. PAT. & TRADEMARK OFF., TRADEMARK MANUAL OF EXAMINATION PROCEDURE (“T.M.E.P.”) § 1605 (2010) (“Filing [a declaration] of inc

  5. Cancellation of a Registered Mark Based on Fraud in Section 15 Affidavit Not Allowed

    Bradley Arant Boult Cummings LLPStephanie ScruggsOctober 23, 2023

    nding and not disposed of either in the U.S. Patent and Trademark Office or in the courts.However, as previously discussed, the cancellation proceeding (and related litigation) were still ongoing.In 2015, Chutter, Inc. (Dan Tana’s successor) filed a new petitionto cancel the DANTANNA’S registration, alleging Great Concepts’ 2010 Section 15 declaration constituted fraud warranting cancellation of its registration under Section 14 of the Lanham Act. The TTAB agreed, found Great Concepts’ prior counsel knowingly made false statements with intent to deceive the USPTO, held that the fraudulent declaration enabled Great Concepts to obtain a new right—incontestability, and issued a cancellation order. Great Concepts appealed the TTAB’s cancellation of its DANTANNA’S mark to the Federal Circuit.The AppealThe appeal primarily centered around how Section 15 and Section 14 relate to one another. Obtaining “incontestability” status for a mark requires compliance with Section 15 of the Lanham Act (15 U.S.C. § 1065). Specific to the facts here, the statute requires the mark owner to file “an affidavit … with the Director” that includes a number of required statements. One such statement is that “there is no proceeding involving said rights pending.” As discussed above, Great Concepts’ Section 15 affidavit made this statement (even though the cancellation proceeding was still pending).Section 14 of the Lanham Act (15 U.S.C. § 1064(3)) gives the USPTO the power to act on a petition to cancel a registered trademark on a number of bases including, but not limited to, whether the “registration was obtained fraudulently.” Recall that the TTAB cancelled DANTANNA’S because it found that Great Concepts’ prior counsel knowingly made false statements with intent to deceive the USPTO and held that the fraudulent declaration enabled Great Concepts to obtain a new right—incontestability. Thus, the question on appeal was whether Section 14 gave the USPTO the power to cancel a registration for fraudulent acts c

  6. Great Concepts LLC v. Chutter, Inc.: The Federal Circuit Weighs In on TTAB’s Authority When a Registrant Commits Fraud on the Trademark Office

    BakerHostetlerChristina MoserOctober 19, 2023

    hutter decision expanded specific intent to include reckless disregard for the truth or falsity of a material statement and applied it to a false Section 15 declaration that the submitting attorney did not bother to read.The Federal Circuit in Chutter reversed the Board and remanded without reaching the merits of the Board’s reckless disregard determination, leaving in limbo whether the door has slammed shut once again on broader claims of fraud on the USPTO.The grounds on which the Federal Circuit reversed arise from its construction of the statute’s unambiguous language, which provides only that the Board has authority to cancel registrations under Section 14 of the Lanham Act, 15 U.S.C. § 1064(3), when the “registration was obtained fraudulently.” The registrant’s declaration accused of being false in Chutter was a combined declaration of use, pursuant to Section 8 of the Lanham Act, and declaration of incontestability, pursuant to Section 15 of the same Act. See 15 U.S.C. §§ 1058, 1065. In filing the Section 15 declaration, the registrant’s counsel attested that no litigation or proceedings involving the registration were pending, which was incorrect (or, as the Board held, fraudulent). Because the consequence of a Section 15 declaration is incontestable status and it “is in no way necessary to maintaining registration of a mark,” it does not fall within Section 14’s authority to cancel the registration. Nor, as the dissent urged, were the Section 8 and Section 15 declarations a single declaration, allowing fraud in connection with the Section 15 declaration to impact continued registration under Section 8, despite being filed as a joint form.By removing fraudulent Section 15 declarations from the scope of Section 14’s cancellation authority, the Federal Circuit overruled the Board’s long-standing practice of exercising its authority in those circumstances. The Federal Circuit announced that reversal based on its statutory interpretation was within its discretion “f

  7. Will the COVID-19 Pandemic Impact Your Ability to Secure an “Incontestable” Trademark?

    Akerman LLP - Marks, Works & SecretsMark LafayetteMay 1, 2020

    The court rejected the trademark holder’s argument that during the two years when his French fry business was closed, the mark was nevertheless used in the name of the new business he helped to create, in a lease agreement, and in the advertising of his new business. The court reasoned that the five-yearcontinuoususe provision of 15 U.S.C. § 1065 applies solely to the use of a mark in connection withthe sale of goods and servicesand not in relation to other business activities. Id.

  8. Do COVID-19 Closures Reset the Clock for Trademark Incontestability?

    Brownstein Hyatt Farber SchreckMatthew McKissickApril 27, 2020

    The trademark attorneys at Brownstein are available to advise you on filing Declarations of Incontestability and to assist with any of your brand management needs.15 U.S.C. § 1065 (emphasis added).See Park N’ Fly, Inc. v. Dollar Park N’ Fly, Inc., 469 U.S. 169 (1985).

  9. Use in commerce for federal trademark registration: the Federal Circuit slowly moves towards the Supreme Court

    Dorsey & Whitney LLPPeter WeinbergJuly 1, 2017

    As it is beyond reasonable dispute that Congress’ power to regulate trademarks in the aggregate affects interstate commerce, Congress likewise has the power to regulate even purely local trademark uses. Consider that a purely local trademark user may prevent a subsequent federal registrant from using its mark in the local user’s trading area.See 15 U.S.C. §1065. Accordingly, in the author’s view, any use of a mark within the United States should be sufficient to support a federal trademark registration.

  10. Issues to Be Aware of When Seeking Trademark Protection

    McDonnell Boehnen Hulbert & Berghoff LLPSydney KokjohnDecember 4, 2015

    [33] 15 U.S.C. § 1111. [34] 15 U.S.C. § 1065. [35] 15 U.S.C. § 1115(b).