Famous Marks and Incontestability

Under U.S. trademark law, a famous mark is one that is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. These are otherwise known as “well-known” marks.

Unlike standard marks — which only protect against consumer confusion within a specific, related industry or channel of trade — famous marks benefit from anti-dilution protection under Section 43(c) of the Lanham Act.¹ This means a famous mark owner can seek injunctive relief against others from using its name or logo even on completely unrelated products.

Incontestability Statute

When a company registers its trademark on the Principal Register, it gains substantial legal advantages. But those rights can still be challenged; competitors can argue that a mark is merely descriptive, lacks secondary meaning, or that someone else used it first. This is codified as Section 15 of the Lanham Act.² If a trademark owner continuously uses their registered mark in commerce for five consecutive years after registration — and meets a few procedural requirements, e.g., no pending legal challenges and timely filing a declaration — the mark achieves incontestable status.

What “Incontestable” Actually Means

Despite its name, incontestability does not mean a mark can never be attacked. Rather, it acts as a legal shield. Under Section 33(b) of the Lanham Act, an incontestable registration serves as conclusive evidence of:

• The validity of the registered mark;
• The registrant’s ownership of the mark; and
• The registrant’s exclusive right to use the mark in commerce for the specified goods and services.

Once a mark is incontestable, a defendant in a trademark infringement action cannot defend themselves by arguing that the plaintiff’s mark is weak or merely descriptive. In Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.,³ the U.S. Supreme Court held Park ‘N Fly’s incontestable status could foreclose a challenge that its mark was merely a descriptive phrase. A defendant cannot use challenge an incontestable mark as merely descriptive. This decision cemented incontestability as an offensive weapon for trademark owners, and not just a defensive shield.

There are limitations, however, on what incontestability can confer upon a mark. Defendants can still challenge an incontestable mark using specific statutory defenses, including fraud, abandonment, and genericness.

Famous marks rely on incontestable status as part of a robust brand protection and trademark strategy. While a famous mark commands massive consumer recognition and expansive anti-dilution rights, securing federal registration and driving it through to incontestability provides an unassailable legal baseline for development of famous brand owners’ trademark portfolios.

For more information on well-known marks, incontestability, or trademark law, please contact Yonaxis I.P. Law Group.

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Footnotes

1. 15 U.S.C. §1125(c). ↩

2. 15 U.S.C. § 1065. ↩

3. 469 U.S. 189 (1985). ↩