The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration. The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.
When Do I Have to File the Section 8 Declaration of Use?
The Section 8 Declaration of Use must be filed between the fifth and sixth year of registration. So, for example, if your trademark registration issued on April 3, 2019, you would need to file the Section 8 any time between April 3, 2024 and April 3, 2025.
Having said that, the USPTO does provide a six-month “grace period” in which to file the Section 8 Declaration of Use. So, in the example above, you would actually have until October 3, 2025 to file the Section 8 (six months after April 3, 2025). However, the USPTO filing fees are quite a bit higher if you file within the grace period, so you’re much better off submitting the Section 8 Declaration of Use before the grace period begins.
In addition, the Section 8 Declaration of Use may be filed in combination with the Section 15 Declaration of Incontestability. This is because the time frame for filing each one frequently coincides with one another.
What are the Requirements for Filing the Section 8 Declaration of Use?
The Section 8 Declaration of Use requires the following:
- A verified statement that your trademark is in use in commerce in connection with the products/services listed in your trademark registration
- Submission of at least one current specimen of use per class of products/services listed in your registration
- Payment of the USPTO filing fees (which are calculated by the number of classes listed in your registration)
Please note that if your trademark is not in use in connection with all of the products/services listed in your registration, you must remove from your registration all products/services for which you have no current use (meaning all products/services you’re no longer providing).
In the event your trademark is no longer in use in commerce, you may still be eligible to file the Section 8 Declaration if you’re able to demonstrate excusable nonuse of your mark to the satisfaction of the USPTO.
If your Section 8 Declaration of Use meets all of the requirements, then the USPTO will accept it and your trademark registration will remain active. On the other hand, if it doesn’t satisfy all requirements, then the USPTO will issue a post-registration office action indicating why the Section 8 cannot be accepted (e.g. a trademark specimen refusal)
What Happens If I Don’t File By the Deadline?
It’s not unusual for owners of trademark registrations to forget to file the Section 8 Declaration of Use due to the long period of time between the registration date and the earliest date on which they can file the Section 8. Unfortunately, if you fail to timely file the Section 8, the USPTO will cancel your trademark registration and you’ll lose all of the benefits and protections associated with federal registration. You would then have to file a brand new trademark application to replace the canceled trademark registration and begin the registration process all over again.
Can I Assist You With the Section 8 Declaration of Use?
I’m experienced US trademark attorney Morris Turek. If you have questions about the Section 8 Declaration of Use, or maybe would like some help preparing and submitting the Section 8 Declaration, feel free to contact me right away for your completely free consultation. I may be reached through email (morris@yourtrademarkattorney.com), by phone at (314) 749-4059, or through my contact form located below. I look forward to speaking with you soon.