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Trademarks and §8 Declarations

section 8 dec picWhen you file a trademark , you may be required to file a §8 Declaration of Continued Use. This is a sworn statement made by the owner of the registration that the mark is in use in commerce. The name of the declaration comes from the statute that requires the filing – Section 8 of the Trademark Act, 15 U.S.C. §1058. If the owner of the trademark is claiming excusable nonuse, the §8 Declaration of Excusable Nonuse may be filed. The goal of these types of declarations is to remove all trademarks from the register that are no longer being used.

Failure to file the §8 Declaration will result in the registration of your mark being cancelled. There are strict deadlines for these filings, so if you need assistance, please contact us. You should note that the USPTO does not have the ability to waive or extend the deadline for filing the §8 Declaration. Additionally, if your trademark registration is cancelled for failure to timely file a §8 Declaration, there is not a procedure for reinstating your mark without making a new application to register the mark again.

According to the USPTO website , the owner of the registration must file a §8 Declaration during the following time periods:

  • First Filing Deadline : File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court
  • Subsequent Filing Deadline : File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. See 15 U.S.C. § 1059.NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

A filing made within six months of the above deadlines will be considered as timely if an additional fee is paid.

If you need assistance with registering a trademark or filing a §8 Declaration, contact the legal team at The Swenson Law Firm to schedule an initial consultation.

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