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Author Topic: TM Incontestability- when to file and what to ask for  (Read 508 times)

BobRoberts

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Assuming the requirements for incontestability are met, I understand that incontestability may be filed concurrently with the Section 8 Dec.of Use.

Let's say client doesn't wish to file for incontestability at that time (i.e., between 5/6 years).  It sounds like incontestability may be filed after ANY consecutive 5 year period of continuous  use after Registration (provided the appropriate Section 8's and/or Section 9's are on file).
So, does that mean that if the client doesn't desire to file for incontestability between 6/7, that they can file between 7/8 provided the appropriate use between years 2-7?  Or, file between 8/9 with appropriate use between years 3-8?

And when filing the Section 15, do you simply ask the client the question if it's been in continuous use for that 5 year period, or ask for proof to place into the file to support the use (i.e., receipts showing Commerce regulatable by Congress)?  IF you ask for proof, do you ask for a receipt each year, or just one for that five year period (i.e., how many receipts and at what interval constitutes "continuous" use)?

Thanks!
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BobRoberts

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Re: TM Incontestability- when to file and what to ask for
« Reply #1 on: 03-17-17 at 04:56 pm »

Talked with the Trademark Office about filing for Incontestability.

Incontestability may be filed for after ANY 5 year period of continuous use.  You have 1 year after the particular 5 year period to file for incontestaility. 

So, if the mark is at 7 years, 2 months after registration, and has been used continuously for 5 years, then the one year time frame goes from 7 years 2 months to 8 years 2 months. 

Any thoughts on what your procedures you use to "confirm" the 5 years continuous use with a client (i.e., a simple query "Have you continuously used your mark in association with all G/S (i.e., blah blah, blah)  on your Registration for the last 5 years?" 
Do you ask for a sales receipt for each of the last 5 consecutive years (demonstrating interstate commerce regulatable by Congress) to place in your records in case proof is needed later to support the Incontestability claim, or just rely on a "Memo to file" that the client was asked, and acknowledged continuous on all G/S in the registration for the last five consecutive years? 

Thanks for any thoughts.


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