Key Takeaways

  • A Section 8 Declaration confirms a trademark is in commercial use five years after registration.
  • A Section 15 Declaration claims “incontestable” status, offering stronger protection for your trademark.
  • Missing the Section 8 deadline can result in trademark cancellation, but a 6-month grace period is available.
  • Section 8 and 15 Declarations can be filed together to streamline the process.
  • Common mistakes include submitting inaccurate goods/services descriptions and failing to update ownership info.

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.

Benefits of Filing Section 8 and 15 Together

Filing the trademark Section 8 and 15 declaration at the same time can simplify the renewal process and strengthen your trademark protection. Section 8 affirms your ongoing use of the mark, while Section 15, if eligible, upgrades that protection by making your registration “incontestable.”

Benefits of combining these filings include:

  • Streamlined processing: Both filings can be completed through the USPTO’s TEAS system in a single form.
  • Cost efficiency: Filing them together may reduce legal fees associated with separate submissions.
  • Enhanced protection: A Section 15 filing, if accepted, prevents others from challenging your trademark on certain grounds (such as descriptiveness).
  • Public confidence: Incontestable trademarks can deter infringement due to the perceived strength of the rights involved.

To file both, your trademark must have been in continuous use for five years and meet the other Section 15 criteria.

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.

Best Practices for Maintaining Your Trademark

To avoid the risks of cancellation and maintain your federal trademark rights effectively:

  • Track deadlines carefully using calendar reminders or legal docketing tools.
  • Ensure accuracy in your filings, especially when describing goods/services.
  • Use up-to-date specimens that clearly show commercial use at the time of filing.
  • Keep ownership records current, especially after corporate changes like mergers, acquisitions, or name changes.
  • Avoid fraudulent filings by confirming all criteria are met before filing a combined Section 8 and 15 declaration.

Failing to follow these best practices could lead to costly Office Actions or even cancellation of your registration.

When to File Your Declaration of Use

You must file your Section 8 Declaration of Use between the fifth and sixth year after your trademark registration date. After that, the USPTO requires you to submit additional Section 8 filings every ten years to maintain your registration. Missing this deadline can lead to cancellation, so it’s essential to track these dates carefully.

Required Information for a Section 8 Filing

To complete your Section 8 filing, you will need your USPTO trademark registration number and a specimen showing how the trademark is being used in commerce. For products, acceptable specimens include product packaging, labels, or clothing tags featuring the mark. For services, specimens may consist of marketing materials like brochures, advertisements, or website screenshots that prominently display the trademark in connection with the services.

Understanding the Section 15 Declaration

A Section 15 Declaration of Incontestability is an optional but powerful tool that, once accepted, makes your trademark rights more difficult to challenge. You can file it after five years of continuous use, assuming the trademark meets the eligibility criteria. While rare, filing errors—particularly fraudulent claims in combined Section 8 and 15 filings—have led to cancellations. To reduce this risk, it's wise to consult a trademark attorney to ensure you qualify.

When to File a Declaration of Excusable Nonuse

If you’re temporarily unable to use your trademark due to unforeseen circumstances—such as illness, natural disaster, or operational delays—you may file a Declaration of Excusable Nonuse. However, you must clearly state your intent to resume use once the situation resolves. The USPTO accepts only temporary, unavoidable disruptions as valid reasons for nonuse.

Fees Associated with Section 8 and Section 15 Filings

The basic government filing fee for a Section 8 Declaration is $125. If your trademark covers multiple classes of goods or services, there is an additional $139 fee for each class. A change of address incurs a $45 charge. If you're filing after the standard deadline but within the six-month grace period, you’ll pay an extra $100. Filing a Section 15 Declaration adds another optional $45 fee.

What Happens After You File

After you submit your Section 8 (or combined Section 8 and 15) Declaration, the USPTO will issue either a Notice of Acceptance or Renewal, or an Office Action. If you receive an Office Action, you must respond within six months. Failing to respond on time will result in cancellation of your trademark registration. You can track the status of your filing through the USPTO’s Trademark Status & Document Retrieval (TSDR) system.

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.

Frequently Asked Questions

1. Can I file the Section 8 and 15 declarations at the same time? Yes, if your trademark has been in continuous use for five years, you can file both declarations simultaneously through the USPTO’s TEAS system.

2. What makes a trademark "incontestable"? A mark becomes incontestable after a successful Section 15 filing, meaning its validity and ownership are harder to challenge in legal disputes.

3. What is the grace period for Section 8 filings? You have six months after the sixth anniversary to file with a $100 additional fee if you missed the original window.

4. What are acceptable specimens for trademark use? Acceptable specimens include product packaging, website screenshots, service advertisements, and labels bearing the trademark.

5. Can my trademark still be protected if I miss my Section 8 deadline? Yes, under common law and possibly state laws, but you lose the benefits of federal registration and must reapply to regain federal rights.

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.