Smart & Biggar/Fetherstonhaugh’s Timothy Lo co-authors a comparison of the incontestability of trademarks in the United States and Canada in the recent issue of the INTA Bulletin, August 15, 2014 Volume 69, No. 15.
Trademark practitioners located in the United States and Canada, or those who work with counsel in these countries to obtain and enforce trademark rights, are likely to come across the concept of “incontestability” or the term “incontestable mark” at some point in their practice.
The intricacies of incontestable status, including how it is achieved and when it can be used to benefit a trademark owner, can prove elusive to some degree to trademark practitioners. Adding to the confusion is the fact that the word “incontestable” is actually somewhat of a misnomer, because an incontestable mark is not, in fact, immune from all challenges. Further, while legislation in both countries uses “incontestable” to describe certain registrations, the benefits afforded an incontestable mark in Canada are much more limited than those in the United States. Incontestability arises more frequently in connection with U.S. marks, as it is part of the post-registration process. By contrast, in Canada fewer practitioners or trademark owners are likely to have had experience claiming incontestability, as it arises only when a third party is challenging a registered mark based on the third party’s prior use of a confusing mark. As is discussed below, there is no “one size fits all” approach to incontestability. Instead, incontestability should be considered as part of an overall trademark strategy, rather than as a complete safeguard for shielding marks from successful challenges.
The full content of this article can be found at the following link: http://www.inta.org/INTABulletin/Pages/IncontestabilityofMarksintheUnitedStatesandCanadaAComparisonofPerspectivesandPurposes.aspx