Archive for October, 2020

Section 15 Declaration of Incontestability

Sunday, October 18th, 2020

The last two articles discussed the §8 Declaration of Use affidavit and the §9 Application for Renewal affidavit. Both of these documents must be filed within the timeline given and are necessary in order to maintain federal trademark status. This post will discuss the §15 Declaration of Incontestability document, which unlike the other two, is not necessary, but beneficial.

As discussed, prior, the §8 must be filed between every fifth and sixth anniversary of the trademark registration. During the first anniversary deadline, the trademark owner may choose to file a §15 Declaration of Incontestability. After five years of consecutive use, an owner may file a §15, which declares the trademark may be incontestable. When a mark becomes incontestable, it means that the mark is immune from challenge. In order to maintain this status, the owner must continue to file all of the proper paperwork within the allotted time, because a generic mark or a mark abandoned for nonuse may not be declared incontestable.

Simply, when a mark is declared incontestable, it means that it is immune from legal challenge, yet a situation may arise where grounds for legal challenge are allowed. This will be discussed below. When a trademark owner is seeking incontestability, he must be able to show that (1) no final legal decision has been issued against the mark; (2) there is no challenge pending against the mark; (3) the §15 was filed within the deadline (between the fifth and sixth anniversary of the mark’s trademark registration) and (4) the mark has not been deemed generic.

For a mark that has achieved incontestability, the registration can only be challenged for invalidity on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud; (2) the registrant abandoned the mark; (3) the mark is used to misrepresent the source of its goods or services; (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act; (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration;  (6) the infringing mark was registered first;  (7) the mark is being used to violate the antitrust laws of the United States; (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion; (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches.

It is imperative that throughout the life of the registration, the owner must continue to enforce his/her registration rights. Just because the mark has been declared incontestable, does not mean that the owner may neglect to file the appropriate documentation in a timely manner. Even with the §8, §9 and §15 a mark may still be canceled if the owner fails to keep up with the post-registration maintenance for the mark.

Application for Renewal under §9 of the Trademark Act

Sunday, October 18th, 2020

The previous post discussed filing a Declaration of Use under §8 of the Trademark Act, its importance and when it must be filed. This post will explain when and why it is necessary to file an Application for Renewal under §9 of the Trademark Act.

Simply, an Application for Renewal is a written request, by the trademark owner, submitted to the USPTO to keep the trademark active. The application must be filed within one year prior to the expiration of the registration, or within the six-month grace period after the expiration, which will come with a grace-period fee. However, if the §9 affidavit is not filed before the end of the grace period, the trademark registration will expire.

Every 10 years, the trademark owner must submit a combined Declaration of Use and Application for Renewal filing to the USPTO. The combined filing, along with a supporting specimen must be filed on a date that falls on or between the ninth and tenth anniversaries of registration. Or, for an extra fee of $100 per class, the documentation can be filed within the six-month grace period following the registration expiration date. Following the tenth anniversary of the trademark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

The combined filing must include the following: The trademark registration number; the name and address of the current trademark owner and a filing fee of $425 per class of goods or services listed in the registration.

Failure to submit any of the above documentation and supporting evidence will result in a trademark registration cancelation. Once the mark is canceled, the owner cannot have it revived or reinstated and must file a new trademark registration.

 

 

 

 

Filing a Declaration of Use under §8 of the Trademark Act

Sunday, October 18th, 2020

In a much earlier post on maintaining a trademark, filing a §8 affidavit was briefly touched on. However, this post will go more in-depth regarding what it is, what it does and why it’s required.

As a brief refresher, once an owner is granted a federal trademark registration, his rights can last indefinitely, as long as the mark is properly registered and continuously used in commerce in connection with the listed goods and services. Moreover, the owner must stick to a strict post-registration maintenance schedule. Understanding when and why to file a Declaration of Use is paramount to the maintenance of a trademark registration.

A §8 affidavit is simply a statement from the owner made to the USPTO affirming that the registered mark has been in continuous use for a five-year period. Along with the statement, the owner must also submit a specimen as evidence of use in commerce. The Declaration of Use, along with the specimen must be filed on a date that falls on or between the fifth and sixth anniversaries of registration (or for an extra fee of $100 per class,  it can be filed within the six-month grace period following the sixth anniversary).

If the owner fails to file the affidavit within the allotted time period, including the six-month grace period, the owner’s federal trademark rights will be canceled. If the rights are canceled, the only way to reclaim them is to file a new application for registration. However, it is important to note that simply because the federal trademark rights will be canceled, the trademark itself is not terminated and is still protected under common law and state rules.

Aside from the five-year mark, a Declaration of Use must also be filed along with a specimen when filing an Application for Renewal under §9 of the Trademark Act. The owner must file both affidavits on a date that falls on or between the ninth and tenth anniversaries of registration. (For an extra fee of $100 per class, it can be filed within the six-month grace period following the registration expiration date). Following the tenth anniversary of the mark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

In conclusion, a Declaration of Use under §8 of the Trademark Act is necessary for an owner to maintain federal trademark rights in his mark. The affidavit, along with the specimen serves as evidence to the USPTO that the mark has been used continuously in commerce for five years, for the goods and services listed. Failure to submit the declaration within the aforementioned deadlines will result in a cancelation of the mark’s federal trademark rights, and in order for them to be renewed, the owner must file a new trademark application. The following post will take a closer look at the importance of an Application for Renewal under §9 of the Trademark Act.

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