On June 18, 2014 the Trademark Trial and Appeal Board ordered cancellation of six registrations of the word REDSKINS in various configurations, four of which were “incontestable.”  The ground for cancelling the registrations was that the word REDSKINS “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead.” Such proceedings are enabled by Section 14(c) of the Trademark Act, which authorizes petitions to cancel on grounds that the registrations were obtained contrary to the provisions of Section 2(a).

An “incontestable” registration is one which has become so pursuant to Section 15 of the Trademark Act.  There is no definition of “incontestable” or “incontestability” in either Section 15 or the “Definitions” sectionof the Trademark Act.  Presumably, this means the “incontestable” means in the Act what it means in the English language, that is– “not contestable: indisputable <an ~ fact> <~ talent>”.

The interesting, and thus far surprisingly untouched, issue in this case is that nowhere in the massive majority opinion of the Board (one of the three administrative judges dissented; the majority opinion approximated 90 typed pages) was the question of whether, years after registration and “incontestability,” cancellation can even be entertained.  Certainly cancellation proceedings qualify as a “contest.”, yet how is this reconciled with the fact that Section 15, which specifically enumerates certain exemptions to incontestability status does not identify that a mark is disparaging as a basis for an exemption from the incontestability status?

The Patent and Trademark Office must have profited considerably from additional fees for filing affidavits conferring “incontestability” upon trademark registrations.  While it would no doubt be unseemly to stubbornly maintain incontestable status in some situations (for example, fraud), it is reasonable to expect a clearer definition from the Office and/or Congress of exactly what “incontestable” means, if it means an “incontestable” registration is not subject to cancellation on grounds for refusing registration in the first place despite.  To accept fees for making registrations “incontestable” and then have those registrations subject to cancellation  on a grounds for refusing registration in the first place smacks of pilferage.  At the very least the language of the Trademark Act ought to be revised to clarify whether that Section 2(a) can be a basis for challenging an incontestable mark.