Preface
This brief note is not legal advice and is for educational purposes only.
Section 15 – of the Lanham Act (15 U.S.C. § 1065) is a declaration of incontestability of a mark requiring:
1) that the mark has been in continuous use for 5 consecutive years subsequent to
registration, and
2) the mark is still in use, and
3) there are no final decisions adverse to the mark, and
4) there are no pending proceedings (in the USPTO or courts) regarding the mark, and
5) a Declaration stating the mark is in use in commerce, and
6) fees (of course :).
The Declaration of Incontestability Under Section 15 is normally filed online which can present an issue for an attorney if they are signing and attesting to the accuracy as they lack personal knowledge of use of the mark. A better approach is for the attorney to have evidence that the filing is accurate by having the trademark (TM) owner provide such information.
Toward that end have the TM owner as listed on the USPTO website fill out this information and the attorney should keep this filled out form in their files. Then, you as the attorney have evidentiary support for your filing.
DECLARATION
[The owner needs to read and check each of these.]
□ The mark has been in continuous use in commerce for five consecutive years after the date of registration, or the date of publication under 15 U.S.C. § 1062(c).
□ The mark is still in use in commerce on or in connection with all goods/services, or to
indicate membership in the collective membership organization listed in the existing registration.
□ There has been no final decision adverse to the owner’s/holder’s claim of ownership of such mark for such goods, services, and/or the collective membership organization, or to the owner’s/holder’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in a court, and
□ To the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
□ The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of this submission and the registration, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
Signature: ___________________________________________ [Wet signature, or a /name/ style signature]
Date Signed (MM/DD/YYYY): _______________________
Signatory’s Name: ____________________________________________
Signatory’s Position: ___________________________________________ [See below.
If the signer is an individual owner/holder, enter “Owner” or “Holder” as appropriate.
If the signer is a joint individual owners/holders, enter “Owners” or “Holders” as appropriate.
If the signer is a business entity authorized signatory, enter their official title; e.g., “President” (if a corporation),”General Partner” (if a partnership), or “Principal” (if a limited liability company).]
Conclusion
This should help all on what is needed. As always – consult your attorney.
No claim is made to any government copyrighted material.
