What Is an Incontestable Trademark?

If you’re a country-music fan or a follower of #BLM news, you’ve probably heard about the trademark lawsuit filed by the Nashville trio formerly known as Lady Antebellum.

The members of Lady Antebellum had announced in June that, after having had their “eyes opened wide to the injustices, inequality and biases black women and men have always faced and continue to face every day,” they would change the band’s name, which has been criticized for romanticizing the period before the Civil War (including slavery), to Lady A.

Almost immediately, Anita White, a Black singer who performs blues, soul, funk, and gospel music in the Pacific Northwest, pointed out that she’d been using the stage name Lady A for more than 20 years.

She and the trio tried to come to an agreement about use of the name, but when White’s representatives demanded a $10 million payment, the band sued White.

The trio, which says they began using the name Lady A along with Lady Antebellum years ago, isn’t asking White to stop using the name, and they’re not asking for monetary damages. They just want the court to declare that the band has trademark rights in LADY A and that its use of the mark doesn’t infringe White’s rights.

One of the issues likely to arise in the case is that the trio has been using the mark for many years, and it applied to register the LADY A trademark for use in recorded music, videos, live performances, and merchandise back in 2010.

No oppositions were filed, and the band received a number of trademark registrations from the US Patent and Trademark Office (USPTO) for the LADY A mark. These registrations have now become “incontestable.”

A trademark can be declared incontestable when it has been used consecutively for five years from the date of registration on the federal Principal Register. In order to have a trademark declared incontestable, the registrant must file a Section 15 Declaration of Incontestability, generally between the fifth and sixth years after registration.

Once an appropriate Affidavit of Incontestability has been filed, the registration is conclusive evidence of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce.

There are, however, some reasons that an incontestable mark can still be challenged. These include:

• the mark has become “generic” (used as a name for the type of goods or services and no longer serving as an identifier of the source of those goods or services);
• the registrant has abandoned the mark;
• the registrant (or a third party with the consent of the registrant) uses the mark to misrepresent the source of its goods or services;
• the registration was obtained by fraud; or
• incontestability was obtained by fraud.

Also, incontestability doesn’t mean that the rights of a prior user are lost. Any third party that acquired rights in that mark before the date of registration retains those rights in the geographical areas covered by those rights.

This, along with the reasons an “incontestable” mark can be challenged, means that White might be able to prevent the trio from using the LADY A name in the Pacific Northwest (or even a broader area).

There are a number of other legal issues that could cause the band to win or lose the suit, but this case is a good reminder that you should register your trademarks as quickly as possible.

This is because not only are there a number of benefits of registration itself, but the earlier you register, the sooner your mark can become incontestable. Although incontestability is no guarantee that the mark is invincible, it greatly increases the possibility that you will succeed if your mark is challenged.

Please feel free to contact us if you need any help choosing, protecting, or enforcing your trademarks.

Photo by Adrian Korte on Unsplash