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

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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