Trademark Section 8
Registering a trademark is a crucial step in protecting your brand, but the work doesn’t stop there. To maintain that protection, you must be proactive about keeping your registration active. This is where the Trademark Section 8 Declaration becomes essential. It’s a key requirement for preserving your trademark’s status and ensuring your brand’s ongoing protection. In this post, we’ll cover what the Trademark Section 8 Declaration is, why it’s required, when you need to file it, and how it helps protect your brand.
Continuous Use & Trademark Maintenance Documents
To keep your trademark registration active, you must continue using the trademark in the marketplace. The United States Patent and Trademark Office (USPTO) requires specific documents, like the Trademark Section 8 Declaration, to confirm that your trademark is still being used with the goods or services listed in the registration.
These documents must be filed periodically to prove that the trademark remains in active use. If you don’t comply with these requirements, your trademark will be canceled.
Want to read more about Trademark Renewals? Check out our post – Trademark Renewals: Keeping Your Trademark Alive and Thriving
The USPTO uses the Trademark Section 8 Declaration to clear out trademarks that are no longer in use from the federal register. This ensures that the register is accurate and up-to-date, which benefits both trademark owners and the general public.
By removing trademarks that are no longer active, the USPTO reduces the chance of businesses accidentally infringing on unused marks. This process protects active trademark owners from unnecessary legal disputes and confusion.
When to File a Trademark Section 8 Declaration
As the trademark owner, you need to file a Section 8 Declaration at these times:
First Filing Deadline
Between the 5th and 6th year after your registration date, file a Declaration of Use (or Excusable Nonuse). If accepted, your trademark registration stays active for the remaining years of the 10-year period, unless canceled by a trademark authority or federal court.
Subsequent Filing Deadlines
File a Declaration of Use (or Excusable Nonuse) and a Renewal Application between the 9th and 10th years after your registration date, and then every 9th and 10th year thereafter.
Grace Period
You can file these documents up to six months late with an additional fee.
Signed Statement in the Section 8 Declaration
When you file a Trademark Section 8 Declaration, you need to include a signed statement asserting one of two things:
- The trademark is currently in use with the goods or services listed in the registration.
- The trademark is not currently in use due to specific circumstances that justify the nonuse.
This statement helps the USPTO verify that the trademark is still active or that there is a valid reason for its temporary nonuse. By maintaining this level of transparency, the USPTO ensures that only trademarks in active use remain registered.
Excusable Nonuse: When and How It Applies
“Excusable Nonuse” applies when a trademark is not currently in use, but there are legitimate reasons for this lapse. The purpose of Section 8 of the Trademark Act is to remove registrations that are no longer in use. However, the act does not aim to cancel registrations solely due to a brief interruption in use caused by factors outside the trademark owner’s control.
If a trademark isn’t being used in commerce, but the owner believes the registration should stay active, they can file a statement explaining that the nonuse is due to special circumstances. These circumstances should show that the nonuse is temporary and beyond the owner’s control. Examples might include natural disasters or supply chain issues. It’s important to remember that simply having less demand for a product does not qualify as “excusable nonuse.”
Fees for a Trademark Section 8 Declaration
Filing the Trademark Section 8 Declaration involves certain fees. The cost for filing this declaration electronically through the Trademark Electronic Application System (TEAS) is $225 per class of goods or services.
If you miss the original deadline, you can still file within a six-month grace period, but this comes with an additional late fee of $100 per class of goods or services. This means the total cost increases if you do not file on time, so it’s best to be prompt to avoid extra charges.
The Importance of a Protective Trademark Monitoring Search
Owning a trademark means you have the responsibility to monitor and protect it from unauthorized use.
A protective trademark monitoring search is a smart strategy to help you identify potential conflicts or infringements. This type of search gives a comprehensive overview of possible trademark challenges by looking through federal trademark, state trademark, and common law databases.
Regularly conducting these searches allows you to spot issues early on, so you can address them before they escalate into legal disputes. Monitoring your trademark helps you protect your brand’s identity and ensures that your trademark rights remain secure.
To keep your brand protected, it’s essential to stay on top of your trademark maintenance, including filing the Trademark Section 8 Declaration and regularly conducting monitoring searches. By doing so, you ensure that your trademark stays active and continues to safeguard your brand.
If you need help with Section 8 filings or monitoring services, consult with TradeMark Express for expert guidance. We’re here to help you keep your brand protected and your trademark registration current!
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