Trademark Section 8 & 15
Simply obtaining a trademark registration isn’t enough. To keep your trademark active and legally protected, you must comply with certain renewal requirements laid out by the United States Patent and Trademark Office (USPTO). The combined trademark Section 8 & 15 declaration allows trademark owners to simultaneously renew their trademark and claim incontestable status after five years of continuous use. This blog post will guide you through what these declarations mean, why renewals are required, and the steps you need to take to protect your brand.
Why & When the USPTO Requires Trademark Renewals
Trademark renewals are essential for maintaining exclusive rights over your trademark. The USPTO mandates these periodic renewals to ensure that only trademarks still in active use remain on the federal register. This practice helps keep the register clean and free from trademarks that are no longer relevant or in use.
The first major renewal deadline occurs between the 5th and 6th year after your trademark is registered. During this time, you need to submit a Declaration of Continued Use, also known as the Trademark Section 8 Declaration.
After this, trademark owners must renew again every 10 years, with the same Section 8 form being required at each renewal period. Failure to renew your trademark within these timeframes can lead to the cancellation of your registration, causing a loss of your rights.
The Trademark Section 8 Declaration
The Trademark Section 8 Declaration is one of the key steps in maintaining your trademark registration. It confirms that your trademark is still actively being used in commerce. The USPTO requires you to prove this continued use or to provide a legitimate reason for why your trademark might not currently be in use (called “excusable nonuse”).
Requirements for the Section 8 Declaration:
Proof of continued use – You must show that your trademark is still being used for the goods or services it was registered for.
Specimens – You will need to provide examples, or specimens, of how your trademark is being used in commerce. This could be a label, packaging, website screenshot, or other evidence that shows your mark in action.
Fees – The standard fee for filing a Section 8 Declaration is $225 per class of goods or services. If you miss the deadline, additional penalties may apply.
By filing the Section 8 form, you essentially confirm to the USPTO that your trademark is still serving its purpose in the marketplace.
The Trademark Section 15 Declaration
While the Section 8 form is about proving your trademark is in use, the Trademark Section 15 Declaration takes your protection a step further. Filing this form after five years of continuous use allows you to declare your trademark as “incontestable.” Once your trademark achieves incontestable status, it becomes much harder for others to challenge your ownership.
Requirements for the Section 15 Declaration:
Filing window – The owner has one year after the five-year period to file the Section 15 declaration.
Proof of continuous use – The trademark must have been used continuously in commerce for five years since registration.
Eligibility – Your trademark must not have been involved in any legal disputes or challenges during those five years.
Fees – The filing fee for the Section 15 Declaration is $200 per class of goods or services.
An incontestable trademark offers a stronger legal standing if anyone tries to infringe on your rights. It’s a powerful way to secure your brand and reduce the risk of future challenges.
Combined Trademark Section 8 & 15 Declaration
Instead of submitting the Section 8 and Section 15 declarations separately, the USPTO offers a more convenient option: the combined Section 8 & 15 declaration. Trademark owners who have had their trademark registered for at least five years can use this combined filing to fulfill the renewal requirement under Section 8 while also claiming incontestable status under Section 15.
This combined filing streamlines the process by reducing paperwork and administrative steps, allowing you to handle both important filings at once. By opting for the combined declaration, trademark owners can ensure that their trademark remains protected, confirming its continued use in commerce and reinforcing its legal standing. Additionally, gaining incontestable status strengthens the trademark’s position against legal challenges, making it harder for others to dispute your exclusive rights.
To file a combined Section 8 & 15 declaration, you must provide proof of use, meet the requirements for both forms, and pay a combined fee of $425 per class of goods or services. This combined approach ensures that your trademark remains protected and better secured against potential challengers.
Protective Trademark Monitoring Search Before Filing a Section 8 & 15
Before filing your Trademark Section 15 Declaration, it’s crucial to conduct a protective trademark monitoring search. This step is often overlooked, but it can be the key to avoiding future conflicts that could jeopardize your trademark’s incontestable status.
A protective trademark search involves a comprehensive investigation across federal trademark, state trademark, and common law databases. The goal is to identify any potential infringers or conflicts that may have arisen since your original registration. By conducting this search, you can ensure that no one else is using a similar mark in a way that could cause confusion with your brand.
This type of search is essential because the USPTO doesn’t police your trademark for you.
It’s up to you to actively monitor and protect your mark. Filing for incontestable status without conducting a comprehensive trademark search could leave you vulnerable to challenges down the road. By identifying potential conflicts early, you can take steps to resolve them before they become major legal issues.
Conclusion: Securing Your Trademark Rights
Filing the Trademark Section 8 & 15 forms on time is crucial for maintaining and strengthening your trademark rights. These declarations ensure that your trademark remains protected, active, and better shielded from potential challenges. A combined Section 8 & 15 declaration simplifies this process and offers greater protection through incontestable status.
Remember, a protective trademark monitoring search is a vital step in securing your trademark’s future. It helps identify potential conflicts and ensures your mark remains yours.
For assistance with your Section 8 & 15 filings, renewals, or to conduct a comprehensive protective trademark search, contact TradeMark Express today. We’re here to help you protect your brand at every stage.