NEXUS LAW

 

The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration.  The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).  If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.

​When Do I Have to File the Section 8 Declaration of Use?

​The Section 8 Declaration of Use must be filed between the fifth and sixth year of registration.  So, for example, if your trademark registration issued on April 3, 2019, you would need to file the Section 8 any time between April 3, 2024 and April 3, 2025.

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Having said that, the USPTO does provide a six-month “grace period” in which to file the Section 8 Declaration of Use.  So, in the example above, you would actually have until October 3, 2025 to file the Section 8 (six months after April 3, 2025).  However, the USPTO filing fees are quite a bit higher if you file within the grace period, so you’re much better off submitting the Section 8 Declaration of Use before the grace period begins.

 

In addition, the Section 8 Declaration of Use may be filed in combination with the Section 15 Declaration of Incontestability.  This is because the time frame for filing each one frequently coincides with one another.

​What are the Requirements for Filing the Section 8 Declaration of Use?

The Section 8 Declaration of Use requires the following:

• A verified statement that your trademark is in use in commerce in connection with the products/services listed in your trademark registration

• Submission of at least one current specimen of use per class of products/services listed in your registration

• Payment of the USPTO filing fees (which are calculated by the number of classes listed in your registration)

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Please note that if your trademark is not in use in connection with all of the products/services listed in your registration, you must remove from your registration all products/services for which you have no current use (meaning all products/services you’re no longer providing).

In the event your trademark is no longer in use in commerce, you may still be eligible to file the Section 8 Declaration if you’re able to demonstrate excusable nonuse of your mark to the satisfaction of the USPTO.

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If your Section 8 Declaration of Use meets all of the requirements, then the USPTO will accept it and your trademark registration will remain active.  On the other hand, if it doesn’t satisfy all requirements, then the USPTO will issue a post-registration office action indicating why the Section 8 cannot be accepted (e.g. a trademark specimen refusal)

 

What Happens If I Don’t File By the Deadline?

It’s not unusual for owners of trademark registrations to forget to file the Section 8 Declaration of Use due to the long period of time between the registration date and the earliest date on which they can file the Section 8.  Unfortunately, if you fail to timely file the Section 8, the USPTO will cancel your trademark registration and you’ll lose all of the benefits and protections associated with federal registration.  You would then have to file a brand new trademark application to replace the canceled trademark registration and begin the registration process all over again.

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The Section 8 and 9 Renewal is a combined document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining and renewing a trademark registration.  The Section 8 and 9 Renewal is only applicable to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).  If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would instead (1) file a Section 71 Declaration of Use with the USPTO, and (2) renew your international registration directly with the World Intellectual Property Organization (WIPO).

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When Must I File the Section 8 and 9 Renewal?

You must file the first Section 8 and 9 Renewal between the ninth and tenth year of registration.  So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030.

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Even so, the USPTO provides a six-month “grace period” in which to file the Section 8 and 9 Renewal.  So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030).  Because the government filing fees are much higher if you file within the grace period, I would strongly encourage you to file the Section 8 and 9 Renewal prior to the start of the grace period.

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A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration.  So, in the example above, the second Renewal would need to be filed between January 21, 2039 and January 21, 2040.  If you include the grace period, the Renewal would need to be filed by July 21, 2040.  A Section 8 and 9 Renewal must then be filed every subsequent ten years (calculated from the registration date) in order to keep your trademark registration active.

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What is Required to File the Section 8 and 9 Renewal?

The Section 8 and 9 Renewal requires the following:

• A verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration (unless you’re claiming excusable nonuse)

• A request that your registration be renewed for the goods/services identified in your registration

• Submission of at least one recent specimen of use per class of goods/services listed in your registration (unless you’re claiming excusable nonuse)

• Payment of the government filing fees (which depend on the total number of classes listed in your registration)

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Please be aware that if your trademark is no longer in use in connection with all of the goods and/or services recited in your registration, you must delete from your registration all goods/services you’re no longer offering or providing.

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If your Section 8 and 9 Renewal satisfies all four of the above requirements, then the USPTO will accept it and your trademark registration will remain live.  In the event that it doesn’t meet all four requirements, then the USPTO will send you a post-registration office action outlining the reasons why the Renewal couldn’t be accepted (e.g. a trademark specimen refusal)

 

What Will Happen If I Don’t File By the Deadline?

Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods.  Sadly, if you fail to file the Renewal, the USPTO will cancel your trademark registration and all of the protections and benefits that come along with owning a federal registration will be lost.  Of course, there wouldn’t necessarily be anything preventing you from filing a new trademark application to replace your canceled trademark registration, but you will be starting the entire registration process from scratch.