1. What is a Section 8 Trademark Declaration?
2. Why is a Section 8 Trademark Declaration Important?
3. Deadline
4. Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. When You Don't
5. Common Mistakes
6. Frequently Asked Questions
7. Steps to File

What is a Section 8 Trademark Declaration?

A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). It confirms your federal trademark has been in continuous use for five years. Those who fail to file their Section 8 Trademark Declaration on time will lose their registration.

In the timeframe between the fifth and sixth anniversaries of getting your federal trademark registration, you must file a Declaration of Use stating that you still use the trademark. If there have been any special circumstances preventing you from doing so, you will need to give an explanation. The Section 8 must also be filed at the same time as the trademark renewal. Requirements for the Declaration of Use are outlined in the Section 8 of the Lanham Act, hence the name.

The first part of the Section 8 is an affidavit. This affidavit is your sworn oath that the trademark is still being used commercially. The affidavit must include a description of the goods or services bearing the trademark. You must also send examples of the trademark's usage. These could include submitting images of a product with your trademark on it.

There are excusable reasons for not continuously using a trademark, including fire, illness, retooling, natural disasters, or other damages. When this is the case, the non-usage must be temporary. You must also be planning on reusing the trademark commercially after getting these problems fixed.

Why is a Section 8 Trademark Declaration Important?

Failing to file your Declaration on time will result in the loss of your trademark registration. Naturally, such loss could be harmful to your business.

If you've continuously used your trademark when the Section 8 filing is due, you will need to file a Declaration of Use. Otherwise, you should file a Declaration of Excusable Nonuse. It's important to remember that any nonuse is only excusable if the circumstances are temporary. Nonuse on the basis of a decreased demand for your product does not qualify.

Section 9

In addition to your Section 8 filing, you must also show your mark in use every ten years. You can file your Affidavit of Use and your Renewal at the same time, which is called a Combined Section 8/9 Filing. Normally, you will file these documents through the USPTO website's electronic TEAS filing system. Just fill out the correct form and send photographs of your trademark.

Section 9 filing fees are $300 per class of services or goods covered by the trademark. As such, the combined Section 8 and 9 filing fees are $400 per class.

Section 15

In addition to Sections 8 and 9, you should also be aware of Section 15, which is a Declaration of Incontestability. This third type of trademark filing is not mandatory, so your trademark cannot be canceled if you opt not to file it.

Section 15 is an affidavit claiming incontestable rights to your trademark for specified services or goods. In order to file a Section 15, you must provide evidence of:

  • Your trademark's validity
  • The trademark's registration
  • Your ownership of the trademark
  • Your exclusive right to use the mark

Under the Lanham Act's Section 15, you can claim incontestability when:

  • There hasn't yet been a final decision against your claim of ownership or right to register the trademark
  • No proceeding pending exists
  • It's within one year of a five-year period of consecutive and continuous trademark use from the date of registration
  • The mark hasn't become generic

Filing a Section 15 gives you an extra advantage if you ever need to go after anyone who infringes on your trademark.

Deadline

The deadline to file your Section 8 Declaration of Use falls between the fifth and sixth anniversaries of your federal trademark registration. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that.

If you miss the filing dates, you will need to reclaim your federal trademark by filing a new registration application. Keep in mind that just because a trademark is canceled from missing the deadline doesn't mean your trademark is lost. It will still be protected under state law rules as well as common law. You simply lose the benefits of your federal registration.

For an additional fee, which is now $100, you may file within the six-month grace period after the sixth anniversary date.

Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. When You Don't

If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. If the mark has already been assigned to a new owner since the registration and the Section 8 is filed by the new owner, a change of ownership is shown in the USPTO database.

The Patent Office will not accept a substitute affidavit after the deadline, so unless you want to go through the entire trademark registration process all over again, be mindful of your dates.

For instance, if your trademark registration was issued on March 15, 2013, these are the dates you can expect:

  • March 15, 2018 – the earliest date you can file your first Section 8
  • March 15, 2019 – the normal Section 8 due date
  • September 15, 2019 – the last possible date to file your first Section 8 with extra fees; missing this deadline cancels your trademark registration
  • March 15, 2022 – the earliest date you can file your first renewal, also known as the combined Section 8/9
  • March 15, 2023 – the normal due date for your joint Section 8/9
  • September 15, 2023 – the last possible date to file your Section 8/9 with extra fees; missing this date cancels your registration

Common Mistakes

  • Failure to make sure all information is correct. If your goods or services are misidentified in the registration, the registration could be challenged.
  • Failure to update your ownership information, including any name changes, mergers, or conversions.

Frequently Asked Questions

  • When should I file my Declaration of Use?

Your Section 8 Declaration of Trademark Use must be filed between the fifth and sixth year after your registration date and every 10 years after that.

  • What information do I need to write in my Section 8?

You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. Product specimen examples include product packaging photos, product labels, or clothing tags displaying your trademark. Service specimens include advertisements, brochures, and websites including the trademark.

  • What is a Section 15 (Declaration of Incontestability)?

The Section 15 filing is an optional statement claiming your incontestable rights. It lets you to ask for the highest level of protection under federal law.

There are some risks associated with filing a Section 15, although they are rare. Some registrants have committed fraud when filing a combined Section 8 and 15 declaration, which canceled the registration. To avoid this risk, consult your attorney to make sure all requirements are met before filing your Section 15.

  • Under what circumstances can I file a Declaration of Excusable Nonuse?

You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. Excusable scenarios include natural disasters and illness. You can only file for an Excusable Nonuse if you plan to continue using the trademark but your current situation has kept you from using it.

  • What fees do I need to pay when filing Section 8?

The United States government filing fee is $125. Each additional class filed is $139. Change of address forms add an extra $45 fee, and filing within the USPTO's grace period tacks on another $100. There is also an optional $45 fee for filing a Section 15.

  • What happens next?

You will receive either a Notice of Acceptance or Renewal or an Office action within weeks after filing Section 8. If you get an Office action, you have six months to respond. If you don't respond, the trademark registration will be cancelled. Use the USPTO's Trademark Status & Document Retrieval system to check the status of your registration.

Steps to File

  1. Visit the Registration Maintenance/Renewal/Correction Forms page on the USPTO website and select which form you wish to file.
  2. Follow the filing instructions and enter your registration number.
  3. Provide information about who owns the trademark.
  4. Upload a specimen showing the mark in commercial use.
  5. Execute the declaration as to whether the trademark has been in continuous use from when the application was originally filed.
  6. Electronically sign the form.
  7. Pay the $100 filing fee.

If you need help filing your Section 8 Trademark Declaration or wish to speak with a trademark lawyer about your trademark's nonuse, the attorneys on UpCounsel can help. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases.