Takeaway: In a divided ruling, the Federal Circuit panel decided that the USPTO lacked the authority to cancel a trademark registration due to an erroneous incontestability filing, highlighting that incontestable status is distinct from the initial registration.
A Federal Circuit panel, in Great Concepts, LLC v. Chutter, Inc., has ruled that the U.S. Patent and Trademark Office (USPTO) lacked the authority to cancel a trademark registration based on an inaccurate incontestability filing, specifically in the case of Great Concepts LLC’s “Dantanna’s” trademark registration. The panel’s majority argued that the USPTO erroneously believed it had the power under Section 14 of the Lanham Act to revoke the trademark due to a false declaration in a Section 15 submission asserting incontestability by continual use over five (5) years. Incontestable status offers enhanced legal protection to trademark owners after five years of continuous use. The majority emphasized that the authority to cancel a trademark is distinct from challenging incontestability, leading to a remand of the case for further consideration. The dissenting opinion expressed concerns about the lack of consequences for submitting fraudulent incontestability affidavits, suggesting that this could misinform the public regarding a trademark’s status.