Many business owners assume that using a name, logo, or slogan in commerce is enough to secure their rights, but trademark law in the United States is not always that simple. In this article, we will explore the reality of why filing early matters, what a Section 15 incontestability filing is, and how you actually can lose your trademark.
Common Law Rights vs. Federal Registration
If you use a brand name in commerce before someone else, you may have common law trademark rights. But those rights are geographically limited and can be difficult to enforce. Generally, someone who uses a brand name first has “priority” of rights over someone who starts using it after they do.
By contrast, filing a federal trademark application with the U.S. Patent and Trademark Office (USPTO) gives you nationwide protection and stronger remedies.
Luckily, even if you are late to file, and someone got a registration for your brand before you, during the first 5 years of registration, you would be able to file a Petition to Cancel on the grounds that you started using your brand name before theirs.
What Is a Petition to Cancel, And How Can That Help Business Owners?
During the first five years after a trademark is registered, other parties can still challenge that registration by filing a petition to cancel with the USPTO’s Trademark Trial and Appeal Board (TTAB).
A petition to cancel is essentially a legal request to remove a trademark from the federal register. One of the most common grounds for cancellation within the first five years is prior use, meaning you can argue that you were using the trademark before the registrant. You ask the TTAB to cancel their trademark registration, because it interferes with your rights to it.
Other grounds during this early period may include many other claims. After five years, however, the registrant can make their mark “incontestable,” and those grounds largely disappear. This is where the brand name nightmare comes in.
What Is a Section 15 Incontestability Filing?
After a trademark has been registered on the USPTO’s Principal Register for five years and is still in continuous use, a Registrant can file a Section 15 Declaration of Incontestability. While this “incontestability” is not automatic, Registrants routinely file it. Once the USPTO accepts the filing, their registration will become “incontestable,” which means its validity can no longer be challenged on many of the grounds it could be objected to before, including your prior use of the same brand. This is where the trouble starts.
Grounds for Cancellation Before Section 15
For example, before a Section 15 filing, you can cancel a registration (challenged and removed from the USPTO register) for many reasons, including:
- Prior use of a confusingly similar mark
- The mark is merely descriptive
- The mark is deceptive, scandalous, or functional
- Fraud in the application process
This broader set of grounds gives businesses who were first to use, but slow to file, some recourse to clear out a junior registrant.
Grounds for Cancellation After Section 15
Once incontestability is granted, you will have fewer grounds to cancel a registration. At that stage, you generally cannot cancel a registration just because you were first to use the mark.
Cancellation is usually limited to more extreme issues, such as:
- The mark has become generic
- Someone abandoned their mark
- The Registrant obtained their registration by fraud
In other words: once Section 15 incontestability is in place, it’s often too late to assert your earlier rights.
Why This Matters for Business Owners
If you delay filing your trademark application, you open the door for a competitor to register the same or similar mark. If they file first and later obtain incontestable status, you may lose your ability to cancel their registration. Even if you were using the mark first, you may simply lose your trademark rights altogether. You may no longer be able to even use your own brand name, as it can be considered infringement on theirs. This can force businesses into expensive rebrands.
How To Make Sure you Don’t Lose Your Trademark
To avoid losing your trademark, file your federal USPTO trademark application as soon as you have decided what your brand name will be. Trademark rights reward those who act quickly and strategically. By filing your trademark application early, you can secure nationwide protection, prevent later-filed registrations from cutting off your rights and preserve your ability to challenge bad-faith or conflicting filings.
Have questions about your trademarks? Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094
Can You Lose Your Trademark Frequently Asked Questions (FAQs)
A trademark becomes “incontestable” when the owner files a Section 15 Declaration with the USPTO after five years of continuous use. This limits the legal grounds on which the registration can be challenged, making it much stronger and harder to cancel.
Yes. Even if you used the mark first, a later filer who secures a federal registration may gain stronger nationwide rights. If they later obtain incontestable status, your ability to challenge their registration becomes very limited.
Trademark cancellation is a legal proceeding at the USPTO’s Trademark Trial and Appeal Board (TTAB) where someone asks to remove a registered trademark from the Principal Register.
After incontestability, grounds narrow to more extreme issues like abandonment, fraud, functionality, or the mark becoming generic.
The best way is to file a federal trademark application early. This secures nationwide rights, prevents others from cutting off your ability to cancel, and positions your brand for long-term strength.
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