Trademark Blog

What is the Section 8 and 9 Renewal for a Trademark?

section 8 and 9 renewal

The Section 8 and 9 Renewal is a combined document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining and renewing a trademark registration. The Section 8 and 9 Renewal is only applicable 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) (registered extension of protection through the Madrid Protocol), then you would instead (1) file a Section 71 Declaration of Use with the USPTO, and (2) renew your international registration directly with the World Intellectual Property Organization (WIPO).

What is a Post-Registration Office Action from the USPTO?

post-registration office action

The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that doesn’t satisfy all of the legal requirements. Here’s a list of documents that could trigger an office action if filed incorrectly:

What is the Section 71 Declaration of Use?

The Section 71 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a registered extension of protection in the United States under the Madrid Protocol. The Section 71 only applies to trademarks that are registered with the USPTO through the Madrid Protocol. If your trademark is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration), then you are required to file the Section 8 Declaration of Use rather than the Section 71 Declaration of Use.

What is the Section 8 Declaration of Use for a Registered Trademark?

Section 8 Declaration of Use

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) (registered 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.

What is a Geographically Deceptively Misdescriptive Trademark?

geographically deceptively misdescriptive

A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register. The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.