Under 15 U.S.C. §1065, subject to certain criteria, a registered mark that has been in continuous use for five consecutive years after the date of registration and is still in use shall be deemed incontestable. Incontestable status is not available for marks where (1) there has been a final decision adverse to the registrant’s claim of ownership or right to register the mark; (2) there is a pending TTAB or court action involving the mark; or (3) the mark is generic.
Where a registered mark has become incontestable, the registration shall be conclusive evidence of the validity of the registered mark, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce. (15 U.S.C. §1115(b)) This statutory determination is subject to a variety of defenses or defects, including (1) that the registration or the incontestable right to use the mark was obtained fraudulently, and (2) that the mark has been abandoned by the registrant.
While it is clear that incontestable status is conclusive proof of ownership and validity of a registered mark, there is a split among the Federal Circuit courts whether the incontestable status has any effect in determining the strength of a registered mark in connection with a likelihood of confusion analysis. Certain courts take incontestable status as a consideration in determining the strength of a mark. In Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d 955 (2nd Cir. 1996) the court, in reviewing the district court’s ruling on a summary judgment motion, stated as follows:
The district court found that [Sports Authority’s] mark was descriptive and therefore required secondary meaning to be protected. The district court found that such secondary meaning had been acquired through the mark’s uncontested use for five years. We agree with the district court that [Sports Authority’s] mark is strong for the purposes of the Polaroid inquiry on Prime’s summary judgment motion. Gruner + Jahr, 991 F.2d at 1078 (stating that "we think it now established that the strength of a descriptive mark made incontestabl[e] … by registration for more than five years is a matter also properly considered by a trial court on the issue of likelihood of confusion"). (emphasis added)
Following the Second Circuit’s determination that a mark’s status as incontestable is a factor to be considered in determining a mark’s strength for the purposes of a likelihood of confusion analysis is the Eleventh Circuit (Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322 (11th Cir. 1989)), and the Sixth Circuit (Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988).
Some courts refuse to follow the Second Circuit and hold that a mark’s incontestable status relates only to the validity of the registration and has no effect on the mark’s degree of strength. In Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445 9th Cir. 1988), the Ninth Circuit considered an appeal from the district court’s denial of a TRO and finding that the plaintiff had "little probability of success on the merits" in its infringement claim. The Ninth Circuit was tasked in determining whether the defendant’s service mark, MRS. OF THE WORKD for a beauty pageant, infringed the plaintiff’s mark, MISS. WORLD for the same services. In reviewing the first of the five factor test, the strength of the mark, the court considered the plaintiff’s argument, that its registered mark was strong, and that the mark’s incontestable status further lent to its strength. The Ninth Circuit disagreed and stated that an incontestable status does not alone establish a strong mark.
Following the Ninth Circuit in its position that a mark’s incontestable status is not a factor in determining a mark’s strength for likelihood of confusion purposes is the Fourth Circuit, the Fifth Circuit and the Seventh Circuit.
Until this year it was unclear what position the Trademark Trial and Appeal Board would take on this issue. Neither it nor the Federal Circuit had ever considered whether a mark’s status as incontestable would have any effect in determining a mark’s strength in a likelihood of confusion analysis. In Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445, 94 USPQ2d 1031 (TTAB 2010) the Trademark Trial and Appeal Board had the opportunity to consider this issue.
In this case the USPTO considered whether there existed a likelihood of confusion between the DEER-B-GON, for an animal repellant used to repel deer and other animals, on the one hand and on the other, DEER AWAY and DEER AWAY PROFESSIONAL, both for repellant for repelling deer, other big game and rabbits. Safer, Inc. argued that the incontestable status of its registered marks, DEER AWAY and DEER AWAY PROFESSIONAL, provided statutory evidence of the strength of its marks. OMS Investments argued that a marks incontestable status does not necessarily make a weak mark strong. Addressing the issue, the Board noted that it previously held that statutory presumptions, such as the presumptions following a mark’s incontestable status, do not affect the likelihood of confusion analysis. Additionally, the Board noted previous cases in which it stated that a registration is not evidence of the nature and extent of the use and advertising of a mark and, thus, is not probative of consumer reaction to the mark no matter how long it has been registered. Based on the foregoing, the Board, held the fact that opposer’s federally-registered trademark has achieved incontestable status means that it is conclusively considered to be valid, but it does not dictate that the mark is strong for purposes of determining likelihood of confusion.
Given the TTAB’s holding, a mark’s incontestable status is no longer a factor to consider in opposition on cancellation proceedings. It remains to be seen whether the Second, Eleventh and Sixth Circuits will reverse their holdings and fall in line with the TTAB