WHEN MUST I FILE A §8 DECLARATION?

The owner of the registration must file a §8 Declaration during the following time periods:

1. At the end of the 6th year after the date of registration (or the date of publication under 15 U.S.C. §1062(c) for marks registered under the Trademark Acts of 1905 or 1881), and
2. At the end of each successive 10-year period after the date of registration. The owner has a total of 18 months to file a §8 Declaration. The §8 Declaration may be filed one year prior to the filing due date or during the 6-month grace period immediately after the filing due date.

WHAT IS THE FILING FEE FOR FILING A §8 DECLARATION?

The current fee for filing a §8 Declaration is $100 per class of goods/services. There is an additional grace period surcharge of $100 per class of goods/services for filing during the 6-month grace period.

WHAT MUST I INCLUDE IN A §8 DECLARATION?

1. The registration number;
2. The name and address of the current owner;
3. The fee for filing the Declaration;
4. If the mark is in use: a statement that the registered mark is in use in commerce; a list of the goods/services recited in the registration on or in connection with which the mark is in use; and one specimen per class of goods/services. Examples of acceptable specimens are tags/labels for goods, and advertisements for services.
5. If the owner resides outside the United States, the designation of a domestic representative; and
6. A signed and dated affidavit or declaration under 37 C.F.R. §2.20

WHO MAY SIGN A §8 DECLARATION?

The owner or a person who is properly authorized to sign on behalf of the owner may sign the §8 Declaration. That is:

1. A person with legal authority to bind the owner;
2. A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
3. An attorney as defined in 37 C.F.R. §10.1(c) who has actual written or verbal power of attorney or an implied power of attorney from the owner.

IS THERE A FORM FOR FILING A §8 DECLARATION?

Yes. USPTO standard forms for filing a §8 Declaration and a combined 10-year §8 Declaration and §9 Renewal Application are available online at the USPTO website.

HOW WILL I KNOW IF MY §8 DECLARATION HAS BEEN ACCEPTED?

Section 8 Declarations are reviewed by paralegals in the Post Registration Division. If the §8 Declaration is accepted, the USPTO will send a Notice of Acceptance. If the §8 Declaration is refused, the Office will send an Office Action stating the reasons for refusal and any remedies available.

WHAT IS A DECLARATION OF EXCUSABLE NONUSE?

A §8 Declaration of Excusable Nonuse is a sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058.

WHAT SPECIFIC TYPE OF INFORMATION MUST I INCLUDE IN A §8 DECLARATION OF EXCUSABLE NONUSE?

If the owner of the registration is claiming excusable nonuse of the mark, the §8 Declaration must include:

1. The registration number;
2. The name and address of the current owner;
3. The fee for filing the Declaration;
4. A list of the goods/services in the registration on or in connection with which the mark is not in use in commerce; the date of the last use of the mark in commerce; the approximate date when use in commerce is expected to resume; details regarding the reason for nonuse; and specific steps being taken to resume use.
5. If the owner resides outside the United States, the designation of a domestic representative; and
6. A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

WHERE CAN I LEARN MORE ABOUT EXCUSABLE NONUSE?

The Trademark Manual of Examining Procedure (TMEP) is available online at the USPTO website: http://www.uspto.gov/go/tmep. This resource contains an explanation of excusable nonuse and examples of circumstances under which a claim of excusable nonuse has been accepted. See TMEP §1604.11.

In general, nonuse must be temporary, and the owner must clearly demonstrate how the circumstances prevent use of the mark in commerce and what efforts are being made to resume use. Please note that nonuse due to the decreased demand for a product does not by itself constitute "excusable nonuse."

IF MY §8 DECLARATION OF EXCUSABLE NONUSE IS ACCEPTED, DO I HAVE TO FILE ANOTHER §8 DECLARATION WHEN I RESUME USING THE MARK?

No. Once the USPTO accepts the §8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another §8 Declaration until the next statutory filing period.

WHAT IS A §15 DECLARATION?

A §15 Declaration is a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming "incontestable" rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

WHAT IS AN "INCONTESTABLE" REGISTRATION?

An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065.

AM I REQUIRED TO FILE A §15 DECLARATION?

No. The filing of a §15 Declaration is optional. An owner may choose to claim the benefits of incontestability by filing a §15 Declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.

IS THERE A PARTICULAR TIME PERIOD FOR FILING A §15 DECLARATION?

Yes. A §15 Declaration may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Declaration must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

IS THERE A FEE FOR FILING A §15 DECLARATION?

Yes. The current fee for filing a §15 Declaration is $200 per class of goods/services, and the filing fee for a Sections 8 & 15 Combined Declaration is $300 per class.

WHAT MUST I INCLUDE IN A §15 DECLARATION?

A §15 Declaration must include:

1. The registration number and the date of registration;
   
2. The fee for each class of goods/services in the registration to which the Declaration pertains;
   
3. A statement that:

   (a)  the mark has been in continuous use in commerce for a period of five years subsequent to the date of registration, or the date of publication under 15 U.S.C. §1062(c), on or in connection with the goods/services recited in the registration and is still in use in commerce;

   (b)  there has been no final decision adverse to the owner's claim of ownership of the mark for the goods/services, or to the owner's right to register the mark or to keep the same on the register; and

   (c)  there is no proceeding involving the claimed rights pending in the USPTO or in a court of law and not finally disposed of; and

4. A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

WHO MAY SIGN A §15 DECLARATION?

A person who is properly authorized to sign on behalf of the owner may sign the §15 Declaration. That is:

1. A person with legal authority to bind the owner;
2. A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
3. An attorney as defined in 37 C.F.R. §10.1(c) who has actual written or verbal power of attorney or an implied power of attorney from the owner.

IS THERE A FORM FOR FILING A §15 DECLARATION?

Yes. USPTO standard forms for filing a §15 Declaration and a combined §§8 &15 Declaration are available online at the USPTO website.

The USPTO neither examines the merits of §15 Declarations nor "accepts" §15 Declarations. However, the USPTO will review a §15 Declaration to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those §15 Declarations that meet all statutory requirements.

DOES MY CERTIFICATE OF REGISTRATION EVER EXPIRE?

Yes. Subject to the filing of §8 Declarations, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.

HOW DO I RENEW MY TRADEMARK REGISTRATION?

To renew a federal trademark registration, you must file an Application for Renewal under §9 of the Trademark Act, 15 U.S.C. §1059

IS THERE A SPECIFIC TIME PERIOD FOR FILING A §9 RENEWAL APPLICATION?

Because the time period for filing the 10-year §8 Declaration coincides with the filing of a §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce & Application for Renewal of Registration of a Mark Under Sections 8 & 9" ("combined form"). As noted above, the filing of timely §8 Declarations are required to avoid the cancellation of a registration.

The combined form is available online at the USPTO website.

IS THERE A FEE FOR FILING AND APPLICATION FOR RENEWAL?

Yes. The current fee for filing a §9 Renewal is $400 per class of goods/services, and the filing fee for a Combined Section 8 Declaration and Section 9 Renewal Application is $500 per class. There is an additional surcharge of $100 per class for filing a Section 9 Renewal Application within the 6-month grace period, or $200 per class for filing a Combined Section 8 Declaration and Section 9 Renewal Application during the grace period.

WHAT MUST I INCLUDE IN A §9 RENEWAL APPLICATION?

A §9 Renewal Application must include:

1. A request to renew the registration signed by the registrant or the registrant's representative;
2. The registration number, mark and date of registration.
3. A name and address for correspondence.
4. The filing fee; and
5. If the registrant resides outside the United States, the designation of a domestic representative .

HOW WILL I KNOW IF MY §9 RENEWAL HAS BEEN ACCEPTED?

Section 9 Renewal Applications are reviewed by paralegals in the Post Registration Division. If the §9 Renewal Application is accepted, the USPTO will issue a notice granting the renewal. If the §9 Renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and any remedies available.

KEY: =online business system =fees =forms=help =laws/regulations =definition (glossary)

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