Patently-O as Incontestable?

My mark “PATENTLY-O” was registered with the USPTO back in January 2006. That means that I am about to hit the deadline for filing a Section 8 trademark renewal application (declaration of use –  $100 fee). I’ll also be eligible to file a Section 15 declaration of incontestability ($200 fee).

Here’s the question: (1) Should I file these? (2) Should I file for protection internationally as well?

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

24 thoughts on “Patently-O as Incontestable?

  1. That’s the best distinction you could come up…

    Do I need one better?

    Seriously, think it through before you respond.

  2. I am sure that you realize that your question is fallacious if only for the distinction that patents are a federal question.

    That’s the best distinction you could come up with between patent questions and trademark questions?

    Why the extra time and trolling, anon?

  3. I am sure that you realize that your question is fallacious if only for the distinction that patents are a federal question.

    Why the extra time and trolling, IANAE?

  4. Only if it is legal to practice there. Look The State Bar of Texas sued Nolo Press for the unlicensed practice of law and all they were doing is publishing books.

  5. Why don’t you go and PAY for legal advice. I know of several reasons one way or the other; however, I am not licensed in Minnesota. Could it be that you are inducing people to practice law in a state without being licensed?!!

  6. I don’t think you pass. Incontestability only protects against a challenge to the mark based on descriptiveness. An incontestable mark is otherwise contestable on many other grounds.

  7. Hmmm. You’ve posted this TM question on the ostensibly patent-related blog in connection with the mark is used. By doing so, you’ve admitted it’s a misleading and deceptive mark, so you’d better make it incontestable before some challenges it on those grounds!

    So do I pass the exam?

  8. So far as Europe is concerned, marks are registered on a first-come first-served basis and it can be very difficult to have a third party registration expunged.

    There is, as you almost certainly know, a cleaning preparation sold in Europe under the Patently Obvious brand. It is the subject of EU Trade Mark 2454298 in the name Knowledgte & Merchandising Inc, Ltd in classes 03, 04, 05, 11 and 21 for cleaning preparations, etc.

    Registration in Europe lasts 10 years and is renewable. If the inconvenience and potential loss of goodwill and freedom of action is taken into account, the relatively modest cost of a EU trade mark application could be a wise investment.

  9. If registration was worth the bother/cost, why wouldn’t filing under §§ 8 and 15 also be? It’s important to note that some have read the latter to say that you only get one shot at establishing incontestability (without starting anew).

  10. Yes, unless you want to risk someone using “Patently-O” for one of the new “.XX” or other unsavory internet domains.

  11. A Section 8 Declaration (which is not a renewal) is mandatory by 6 years after the registration date, in order to keep a mark registered.

    A registration can be renewed (pursuant to Section 9)by 10 years after the registration date, at which time a Section 8 Declaration also must be filed.

  12. Dennis – answering your questions potentially gives rise to providing legal advice and the establishing of an attorney-client relationship. That being the case, I would consult your trademark attorney.

  13. Congrats Dennis!

    1) doesn’t hurt, and given the nominal cost, I would certainly

    2) hard to say; what does your subscriber/reader mix look like demographically?

    take care


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