Intellectual Property Law

Contesting The Incontestable (2d Cir on STOLI)

By Marty Schwimmer

A US federal trademark registration for which a Section 15 affidavit has been accepted after 5 years of continuous use, is said to be 'incontestable.' That is to say that 'title has been quieted,' with regard to prior users.  There is a laundry list of exceptions to incontestability in Section 33 of the Lanham Act.  Two common attacks on an incontestable registration that are never time-barred from being argued, are 'genericide' and 'fraud on the PTO."

The Second Circuit just head a more unusual attack on registrant's ownership of an incontestable registration. 

It is an understatement to say that various entities in Russia have fought over ownership of the STOLICHNAYA trademark for a while.  The US registration for STOLICHNAYA became incontestable in 1974. Ordinarily, when the registration is assigned, the assignee steps into the shoes of the registrant. The reg was assigned from Pepsi to Allied Domecq and Allied assigned it to SPI.  FTE and SPI fight over ownership and FTE  alleges that the assignment to Allied Domecq wasn't proper.  SPI argues that FTE can't challenge its or Allied Domcq's ownership of the registration because the registration is incontestable. The District Court agrees.

The Second Circuit:  Nope.  The assignee only steps into the shoes of the incontestable registrant if the assignment was proper. The Court must evaluate whether the assignment was proper before awarding the 'assignee' the cloak of incontestability.

Decision Stoli

Full post as published by Trademark Blog on October 12, 2010 (boomark / email).