How and When Do You File a Section 8 Declaration?

Registering a trademark with the United States Patent and Trademark Office (USPTO) is a great accomplishment. Your registration will protect your trademark rights in the U.S. However, your work doesn't stop once your mark is registered. You must renew and maintain your registration to keep your trademark rights.

The primary document you'll need to file with the USPTO to maintain your registration is a Declaration of Use Under Section 8 (or simply, a Section 8 Declaration).

What Is a Section 8 Declaration?

A "Section 8 Declaration" is a statement that you file with the USPTO affirming that you either:

• have been using your federally registered trademark continuously, or
• haven't been using your trademark continuously but your lack of use is excusable.

Most trademark owners will submit a Section 8 Declaration to show that they've been using their trademark.

What Does Using a Trademark Mean?

The USPTO requires that you continue to use your trademark in commerce to keep your trademark registration. If you don't use your trademark, then you must provide an acceptable excuse for the non-use.

Using your trademark means you're selling or transporting goods or services under your trademark brand. (Technically, marks that are associated with services are known as "service marks," but the term "trademark" can refer to marks associated with goods or services.) When you registered your trademark, you described what goods or services you'd sell or provide under your mark. You'll need to use your mark alongside the specific goods or services listed in your registration to satisfy the USPTO's continuous use requirement.

Your trademark must be used as a trademark. A trademark is a source indicator. In other words, a trademark lets consumers know what company or brand is providing the good or service. So when you use a trademark, the customer should see the mark as a source indicator (as a trademark) and not just as a design related to the good or service. For example, suppose you sell t-shirts under the mark "Sunset Threads," then the trademark name will need to be on a sales tag or product packaging. The mark can't just appear in big font anywhere on the shirt. Otherwise, the customer might not recognize "Sunset Threads" as the trademark but just as part of the product design.

Your mark must be used in interstate commerce. When the USPTO says your mark must be used in commerce, it means that you must use your mark in interstate commerce (or commerce that Congress can regulate). Congress regulates interstate commerce, meaning that Congress is allowed to make laws regarding commerce between states. Congress also regulates commerce between the U.S. and U.S. territories and between the U.S. and other nations. Any of these uses would qualify as "in commerce."

Using your mark on goods. If your trademark is registered in association with goods, then you must use your trademark in association with those specific goods. You'll need to use your trademark either on:

• the product itself (for example, engraved or stamped onto the product)
• the container or packaging for the product
• a label or tag attached to the product
• a display associated with the goods (for instance, window displays, menus, banners, or a catalog), or
• the webpage where you currently sell your products (for example, the trademark can be featured prominently in a header on your company website where you sell your goods through your online shop).

Using your mark on services. If your trademark is registered in association with services, you must use your mark in direct association with those specific services. You must use your trademark to advertise your services or in material connected with the rendering of the services. For example, you could use your trademark on your website, advertisements and marketing materials, invoices, signs, and business cards.

When Is Not Using Your Trademark Excusable?

If you're not using your trademark but wish to keep it registered, you must submit a Section 8 Declaration saying that:

• the nonuse is due to special circumstances, and
• you don't intend to abandon your trademark.

"Special circumstances" mean something outside of the trademark owner's control or caused by outside forces. For example, suppose you were forced to close your business during the COVID-19 outbreak and couldn't effectively use your trademark. Your nonuse would probably be excusable due to special circumstances outside your control (i.e. the pandemic).

When Do You File a Section 8 Declaration?

You must file your first Section 8 Declaration between the fifth and sixth anniversaries of your trademark's registration. For example, suppose your trademark was registered on December 4, 2020. You must file your Section 8 Declaration between December 4, 2025 (five years after your marks' registration) and December 4, 2026 (six years after your mark's registration).

If you don't file your Section 8 Declaration during that one-year period, you can still file the statement within a six-month grace period for an extra fee. The six-month grace period begins directly after your trademark's sixth-anniversary date. Using our previous example, the grace period would be between December 5, 2026 and June 4, 2027.

You must subsequently file a Section 8 Declaration on a date that falls on or between the ninth and tenth anniversaries of the registration, and each successive ten-year period thereafter. Again, using our example above, you'd need to file a Section 8 declaration between December 4, 2029 and December 4, 2030, and again between 2039 and 2040, and so forth. The USPTO recognizes the six-month grace period for each Section 8 filing.

How Do You Complete the Section 8 Declaration?

File your Section 8 Declaration through the USPTO's online filing system. The filing system is called the "Trademark Electronic Application System" (TEAS). You'll need to create a USPTO government account and verify your identity to use the system. You'll find the Section 8 Declaration and other forms on the Registration Maintenance/Renewal/Correction Forms webpage on the USPTO website.

You'll need to know your trademark's registration number to bring up the online Section 8 Declaration specific to your trademark. You'll submit the same Section 8 Declaration to report your use or nonuse of your trademark.

You must sign the statement verifying the information in the declaration is accurate. You'll also need to pay the appropriate filing fee. As of 2024, the filing fee for a Section 8 Declaration is $225 per mark per class of goods or services.

How to Submit a Declaration of Use

To complete your Section 8 Declaration of Use, you'll need to provide the following:

• the name and address of the current trademark owner
• a statement verifying that you're using your trademark in commerce
• a list of the goods or services connected to your trademark, and
• a specimen showing how your mark is being used in commerce.

If you only use your trademark with some of your goods or services but not with all the goods or services currently associated with your registration, then you can delete goods or services that are no longer in use. You can delete these goods or services when you file your Section 8 Declaration.

How to Submit a Declaration of Excusable Nonuse

To complete your Section 8 Declaration of Excusable Nonuse, you'll need to provide the following:

• the name and address of the current trademark owner
• a list of the goods or services that the trademark isn't being used in connection with
• the date the trademark was last used in commerce
• the date that you expect to resume the use of your trademark
• the reason why you're not using your trademark, and
• specific steps you're taking to resume the use of your trademark.

What Happens If You Don't File A Section 8 Declaration?

If you don't file your Section 8 Declaration before the deadline or within the six-month grace period, the USPTO will cancel your trademark registration. When your trademark registration is canceled, you'll no longer have the federal trademark rights associated with the registration.

If you want to obtain federal rights to your trademark, you must file a new trademark application. In other words, you'll need to essentially start the registration process from scratch.

Note that having the mark canceled doesn't terminate all of your trademark rights. Your trademark is still protected under common law and state law rules just like other unregistered trademarks.

Other Trademark Renewal and Maintenance Documents to File

You might need or want to file other documents with your Section 8 Declaration.

Combined Section 8 and Section 15 Incontestability Filing

Many trademark owners choose to file a Combined Declaration of Use and Incontestability under Sections 8 & 15 when it's time to file their first Section 8 Declaration. The USPTO only requires trademark owners to file a Section 8 Declaration. However, you have the option to also file a Section 15 Declaration of Incontestability.

A Section 15 declaration can be filed only by trademark owners who:

• have registered a trademark on the Principal Register (as opposed to the Supplemental Register), and
• have continuously used their trademarks over a five-year period after registration.

A Declaration of Incontestability provides additional protections for your trademark. For example, others can't challenge a trademark's validity once the trademark has been declared incontestable.

The USPTO provides a combined Section 8 and 15 Declaration filing. Alternatively, you can file the two declarations separately. The Section 15 Declaration requires an additional fee.

Combined Section 8 and Section 9 Renewal

As mentioned earlier, you must file a Section 8 Declaration between the ninth and 10th anniversaries of your trademark registration, and every 10 years after that. You must also file a Section 9 Application for Renewal between the ninth and 10th anniversaries of your trademark registration and every 10 years after.

With your Section 8 filing, you're proving that you're still using (or excusably not using) your trademark. With a Section 9 filing, you're requesting that the USPTO renew your trademark registration. Because your Section 8 and Section 9 forms are due at the same time, the USPTO has created a combined filing.

Section 8 vs. Section 71 Filing

A Section 71 Declaration of Use and/or Excusable Nonuse serves, in general, the same purpose as a Section 8 Declaration. A Section 71 Declaration is required for registrations based on the Madrid Protocol. Trademark owners use the Madrid Protocol to register their trademarks in multiple countries. Applicants inside and outside the U.S. can use the Madrid Protocol.

If your registration is based on the Madrid Protocol, you'll use Section 71 to renew your mark's registration. If your registration isn't based on the Madrid Protocol, you'll use Section 8 (and Section 9) to renew your mark's registration. You can file a Section 15 Declaration of Incontestability for both types of registrations.

What If You Assigned (Sold) Your Trademark?

The current owner of the trademark is responsible for filing a Section 8 Declaration and other renewal and maintenance documents for the trademark. So, if you sold (assigned) your trademark to a new owner after your mark was registered, then that new owner is responsible for the Section 8 filing.

When you assigned the trademark, you should've recorded the assignment with the USPTO. Therefore, the USPTO should have up-to-date records reflecting the current owner.

Help Filing a Section 8 Declaration

Filing a Section 8 Declaration of Use on your own is very possible. Trademark owners complete this filing every day. You can find many helpful resources on the USPTO website. For example, you can learn more about Section 8 and other renewal filings on the USPTO's definitions for maintaining a trademark registration webpage.

You should also read the USPTO's webpage on keeping your registration alive. This webpage has instructions and tips about registration requirements, filings, deadlines, and fees. You can always see upcoming deadlines for your specific trademark registration on the USPTO's Trademark Status & Document Retrieval (TSDR) system. You'll just need to type in your trademark's registration number into the search bar and look under the "Maintenance" tab. You can also the TSDR system to check the status of your trademark registration and to access documents, reminders, and other information related to your trademark.

While you can file a Section 8 Declaration on your own (unless you're outside the U.S.), you might find using a trademark attorney to be helpful. A trademark lawyer can submit filings for you, keep track of deadlines, answer questions, and generally advise you throughout the process. For example, you might need to talk to an attorney about whether your specimen is acceptable or when your nonuse is excusable.