A Section 8 Declaration is a statement made to the U.S. Patent and Trademark office (USPTO) affirming that your federally registered trademark has been in use continuously for a period five years. Failure to file it on time will result in the loss of the registration. Sometime between the fifth and sixth anniversaries of a federal trademark registration, the trademark owner must file the Declaration of Use of a mark declaring the continued use of the mark (or an explanation as to the special circumstances for any period of nonuse). The declaration must also be filed at the time of trademark renewal. The requirements for the declaration are set forth in Section 8 of the Lanham Act. (15 United States Code, Section 1058) and explained below. The fee (currently $100) must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services. In lieu of the specimen, the trademark owner may recite facts as to the sales or advertising that demonstrates that the mark is in use.
If the owner fails to timely file the Section 8 Declaration, federal trademark rights will be canceled. If you miss the time period for filing you can still file the Section 8 Declaration within six months following the six year anniversary date for an additional $100 fee.
If the mark is canceled ...
If you miss the filing dates, the only way to reclaim federal trademark rights is to file a new application for registration. Note that having the mark canceled doesn’t terminate your trademark. It is still protected under common law and state law rules. What is lost is benefits of federal registration.
If the mark has been assigned
In the event that the mark has been assigned to a new owner since registration, the Section 8 Declaration is filed by the current owner, and the change in ownership should be reflected by the current owner filing a copy of the assignment with the U.S. Patent and Trademark Office (USPTO). When the Section 8 Declaration is filed for the first time (between the fifth and sixth years of registration), it is usually combined with a Section 15 Declaration. Forms for the Section 8, Section 15, and combined Sections 8 and 15 Declaration can be downloaded from the USPTO website (www.uspto.gov).
How do you complete the Declaration?
- Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
- Navigate to Declaration of Use and/or Excusable Nonuse of a Mark under Section 8 (unless you plan on filing a combination declaration including Section 9 or 15).
- You must supply your registration number, then answer questions as to who is filing the declaration
- You must provide information as to the entity that owns the mark
- You must upload a specimen showing the mark as used in commerce
- You must execute the declaration as to whether the marks have been in continuous use on the same goods or services as originally declared when the applications was file. If not, you must supply the appropriate information.
- You must provide electronic signature
- You must pay for filing (currently $100).
You must file file a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th) anniversary date). If you choose to file a Combined Declaration of Use and Incontestability (Section 8 & 9 Declaration) (recommended) you may do so at the same time, instead. You must subsequently file a Section 8 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period).
Learn more about Trademark Law.