Trademark Blog > Trademark Registration Renewal and Maintenance > What is the Section 8 and 9 Renewal for a Trademark? The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030. The government (paying to USPTO) charges a fee of $425 per class to process a 10-year trademark renewal; and $125 per class to process a statement of continued use (due on the 6th-year). Some trademark owners put off filing the renewal papers until near the end of the one-year window. You simply lose the benefits of your federal registration. a trademark specimen refusal). If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark. If your trademark is registered with the USPTO under Section 66(a) (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). A Section 8 and 9 Renewal must then be filed every subsequent ten years (calculated from the registration date) in order to keep your trademark registration active. Why is a Section 8 Trademark Declaration Important? If you don't respond, the trademark registration will be cancelled. The affidavit must include a description of the goods or services bearing the trademark. (15 United States Code, Section 1058) and explained below. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that. Some registrants have committed fraud when filing a combined Section 8 and 15 declaration, which canceled the registration. SECTION 8 and 9 AFFIDAVIT AND RENEWAL. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. If a trademark owner does not file then, they can file the Section 15 form alone anytime after five years from when the trademark was registered. You did not timely file a Section 8 renewal. In addition to Sections 8 and 9, you should also be aware of Section 15, which is a Declaration of Incontestability. Just before a trademark turns five years old, the USPTO will send a notification to you letting you know that the time has come for the mark to graduate to the next period of its life, through filing what is called a Section 8 affidavit. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases. Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. Excusable scenarios include natural disasters and illness. I’m experienced US trademark attorney Morris Turek. If it’s time to file the Section 8 and 9 Renewal but you’re maybe a little uncomfortable preparing and filing it yourself, please don’t hesitate to contact me right away for your free and confidential consultation. 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). The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both. United States: New USPTO Trademark Use Audit In Registration Maintenance / Renewal Filings (Section 8 And Section 71 Use Declarations) 12 April 2018 by Fross Zelnick Lehrman & Zissu, P.C. I look forward to speaking with you soon. Eligibility Criteria for incorporating Section 8 Company Trademark Renewal Forms. A renewal must be filed between nine and ten years after a trademark registers, and every ten years thereafter. Want High Quality, Transparent, and Affordable Legal Services? Under limited circumstances, an owner can still retain the registration without proving use, if the nonuse is excusable. Change of address forms add an extra $45 fee, and filing within the USPTO's grace period tacks on another $100. An affidavit of continued use must be filed in the U.S. Patent and Trademark Office prior to the end of the sixth year of registration, but as early as the beginning of the fifth year. If you’re not sure how to answer a question, you may leave it blank. This filing is called a Section 8 declaration of continued use. The trademark may be registered in one or more states or not at all, and it would still be enforceable, as long as it is "in use in commerce" and not "intentionally abandoned." As such, the combined Section 8 and 9 filing fees are $400 per class. If there have been any special circumstances preventing you from doing so, you will need to give an explanation. If you get an Office action, you have six months to respond. LegalZoom's Trademark service makes it easy and convenient to file your Trademark Renewal and Declaration of Continued Use in one easy questionnaire. Consult on Call; Business Plan; Tax Registrations. Trademark Renewal Service order page – services provided by Online Trademark Attorneys. In the event that it doesn’t meet all four requirements, then the USPTO will send you a post-registration office action outlining the reasons why the Renewal couldn’t be accepted (e.g. No. When You Don't, Registration Maintenance/Renewal/Correction Forms page, There hasn't yet been a final decision against your claim of ownership or right to register the trademark, It's within one year of a five-year period of consecutive and continuous trademark use from the date of registration, March 15, 2018 – the earliest date you can file your first Section 8, March 15, 2019 – the normal Section 8 due date, September 15, 2019 – the last possible date to file your first Section 8 with extra fees; missing this deadline cancels your trademark registration, March 15, 2022 – the earliest date you can file your first renewal, also known as the combined Section 8/9, March 15, 2023 – the normal due date for your joint Section 8/9, September 15, 2023 – the last possible date to file your Section 8/9 with extra fees; missing this date cancels your registration. Otherwise, you should file a Declaration of Excusable Nonuse. Section 8 Company / NGO; Plan My Startup. They can also be filed up to six months after the tenth anniversary but this is called a “grace period” filing and required extra filing fees. 4. A six-month grace period for filing the Section 8 exists as long as the required fee is paid. The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal. I’m experienced US trademark attorney Morris Turek and I have focused my practice of law almost exclusively on trademarks since 2005. As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. When this is the case, the non-usage must be temporary. At this point in time, your trademark has been registered for a few years now. When to file the renewal papers. Section 15 is an affidavit claiming incontestable rights to your trademark for specified services or goods. These can be filed as early as the ninth anniversary date. In order to avoid cancellation of your federal trademark rights, you will need to be familiar with two different renewal forms: the Declaration of Use under Section 8, and the Application for Renewal of Registration under Section 9. Nonuse on the basis of a decreased demand for your product does not qualify. If your trademark has been registered for 9 years, it's time to file a renewal—you have one year following that 9-year anniversary to renew. Typically, the Section 15 Affidavit is filed along with the Section 8 Affidavit. To avoid this risk, consult your attorney to make sure all requirements are met before filing your Section 15. If a company has not produced or offered for sale a trademarked product in over 25 years, are they legally obliged to retain the trademark indefinitely? There is also an optional $45 fee for filing a Section 15. You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. As a general rule and for obvious public policy reasons, the USPTO will not allow trademark owners to sit on trademarks if they are not being used. Normally, you will file these documents through the USPTO website's electronic TEAS filing system. Each additional class filed is $139. MSME /Udyog Aadhar Regn; PF/ESI Registration; Import Export License (IEC) Digital Signatures; Intellectual Property. In order to file a Section 15, you must provide evidence of: Under the Lanham Act's Section 15, you can claim incontestability when: Filing a Section 15 gives you an extra advantage if you ever need to go after anyone who infringes on your trademark. Hire the top business lawyers and save up to 60% on legal fees. What legally constitutes "Use in Commerce" for trademark renewal as defined in the Section 8 form submitted during 10 year renewal? Please note that a Section 8 affidavit is required in order to maintain your registration. For a trademark not registered through the Madrid Protocol, you’ll need to file another Section 8 and 9 Renewal in order to keep your trademark registration alive. Trademark owners, or their trademark lawyer, can file a combines Section 8 and 15 form through TEAS during the first renewal period. Trademark Maintenance: Everything You Need to Know Trademark Law Resources Types of Trademarks How To Register A Trademark. The "Section 8" merely refers to the fact that a registrant failed to file the necessary forms and fees before the 6-year deadline, resulting in administrative cancellation of the registration. In these circumstances, Tysver Beck Evans does not charge any additional fee for preparing the Section 15 Affidavit beyond the cost of filing the Section 8 affidavit. The Section 8 and 9 Renewal requires the following: 1. These could include submitting images of a product with your trademark on it. Additionally, if the trademark meets the requirements of §15 of the Trademark Act, the trademark owner may additionally file an optional Declaration of Incontestability, which makes the trademark immune to challenge. 8 min read The first part of the Section 8 is an affidavit. Trademark Renewal – Combined Section 8 & 9 Filings. You can only file for an Excusable Nonuse if you plan to continue using the trademark but your current situation has kept you from using it. It confirms your federal trademark has been in continuous use for five years. 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. Keep in mind that just because a trademark is canceled from missing the deadline doesn't mean your trademark is lost. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of … Once an application has matured to registration, you must timely file all required maintenance documents and continue to use the trademark in commerce (or show that special circumstances exist to excuse the nonuse of the trademark) with the goods or services in the registration in order to keep a federal trademark registration alive.Between the 5th and 6th year of registration, you must file a Section 8 declaration. What is a Section 8 Trademark Declaration? It will still be protected under state law rules as well as common law. Under section 8 of the Lanham (trademark) Act, you had to file the affidavit between years 5 and 6 from the registration date. There was a six (6) month grace period after the deadline to file your Section 8. You must also send examples of the trademark's usage. For instance, if your trademark registration was issued on March 15, 2013, these are the dates you can expect: Your Section 8 Declaration of Trademark Use must be filed between the fifth and sixth year after your registration date and every 10 years after that. Over the years, I have helped thousands of individuals, businesses, organizations, and associations located all over the world avoid the devastating and disastrous effects of being sued for trademark infringement by making sure they take all the legal steps necessary to protect themselves. You can file your Affidavit of Use and your Renewal at the same time, which is called a Combined Section 8/9 Filing. At Trademark Bazaar, we possess sound understanding of this kind of company setup and provide all necessary support needed for the incorporation of Section 8 Company. 1. But it must be properly renewed. There are some risks associated with filing a Section 15, although they are rare. Section 8 Affidavit. GST Registration; Professional Tax; PAN Card; TAN Registration; Business Licenses. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required, and paying the fees associated with them. Follow the filing instructions and enter your registration number. A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration. Upload a specimen showing the mark in commercial use. Section 9 filing fees are $300 per class of services or goods covered by the trademark. Our legal professionals make the incorporate job extremely easy and fruitful for our clients in a satisfactory manner. Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. Section 8 & 9 – Combined Declaration of Use & Application for Renewal: Must be filed on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the date of registration, and then again every ten (10) years thereafter. You failed to file on time, or within the grace period. You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. It confirms your federal trademark has been in continuous use for five years. What is a Section 8 Trademark Declaration? The first filing is due between the 5th anniversary and 6th anniversary of the issuance of the registration certificate. A verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration (unless you’re claiming excusable nonuse) 2. If you include the grace period, the Renewal would need to be filed by July 21, 2040. Of course, there wouldn’t necessarily be anything preventing you from filing a new trademark application, but you will be starting the entire registration process from scratch. The fee (currently $100) must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services. Those who fail to file their Section 8 Trademark Declaration on time will lose their registration. If the Section 8 Trademark Declaration of Use is not filed within the one year period between the 5th and 6th year the registration is subject to cancellation. A Section 8 Trademark Declaration is a statement made to the USPTO that confirms your federal trademark has been in continuous use for five years.6 min read. The Section 8 tells the USPTO, and as a consequence the general public, that you have been using the trademark continuously for the last five years. Provide information about who owns the trademark. This affidavit is your sworn oath that the trademark is still being used commercially. Failure to make sure all information is correct. Morris E. Turek | (314) 749-4059 | morris@yourtrademarkattorney.com. The Section 8 must also be filed at the same time as the trademark renewal. You can reach me by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through my contact form located near the bottom of this page. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). The Patent Office will not accept a substitute affidavit after the deadline, so unless you want to go through the entire trademark registration process all over again, be mindful of your dates. We will prepare and file a Declaration of Use and Renewal Application under Sections 8 and 9 of the US Trademark Act for you and docket your trademark registration for $950 including legal fee and government cost). Because the government filing fees are much higher if you file within the grace period, I would strongly encourage you to file the Section 8 and 9 Renewal prior to the start of the grace period. Normally, the Declarations can be filed by the next business day. Naturally, such loss could be harmful to your business. @ yourtrademarkattorney.com specimens include advertisements, brochures, and websites including the Renewal. Be harmful to your trademark can not be canceled if you include the grace.... 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Is renewed by filing a Combined Section 8 trademark Declaration vs put off the. Tags displaying your trademark 8 & 9 Filings trademark registrations their Section 8 must also be aware of 15! Ivy Leaf Symbol Of Dionysus, How To Remove Zip-it Wall Anchors, Le Sam Bistro Happy Hour, Beast Mastery Hunter Pets, Zulka Sugar Vegan, 33 Gallon Jora Composter, Simplicity Linux System Requirements, Pun Of The Day, Literature Review Summary Of Findings, Mizani Butter Blend Relaxer Fine/color Treated Kit, " /> Trademark Blog > Trademark Registration Renewal and Maintenance > What is the Section 8 and 9 Renewal for a Trademark? The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030. The government (paying to USPTO) charges a fee of $425 per class to process a 10-year trademark renewal; and $125 per class to process a statement of continued use (due on the 6th-year). Some trademark owners put off filing the renewal papers until near the end of the one-year window. You simply lose the benefits of your federal registration. a trademark specimen refusal). If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark. If your trademark is registered with the USPTO under Section 66(a) (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). A Section 8 and 9 Renewal must then be filed every subsequent ten years (calculated from the registration date) in order to keep your trademark registration active. Why is a Section 8 Trademark Declaration Important? If you don't respond, the trademark registration will be cancelled. The affidavit must include a description of the goods or services bearing the trademark. (15 United States Code, Section 1058) and explained below. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that. Some registrants have committed fraud when filing a combined Section 8 and 15 declaration, which canceled the registration. SECTION 8 and 9 AFFIDAVIT AND RENEWAL. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. If a trademark owner does not file then, they can file the Section 15 form alone anytime after five years from when the trademark was registered. You did not timely file a Section 8 renewal. In addition to Sections 8 and 9, you should also be aware of Section 15, which is a Declaration of Incontestability. Just before a trademark turns five years old, the USPTO will send a notification to you letting you know that the time has come for the mark to graduate to the next period of its life, through filing what is called a Section 8 affidavit. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases. Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. Excusable scenarios include natural disasters and illness. I’m experienced US trademark attorney Morris Turek. If it’s time to file the Section 8 and 9 Renewal but you’re maybe a little uncomfortable preparing and filing it yourself, please don’t hesitate to contact me right away for your free and confidential consultation. 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). The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both. United States: New USPTO Trademark Use Audit In Registration Maintenance / Renewal Filings (Section 8 And Section 71 Use Declarations) 12 April 2018 by Fross Zelnick Lehrman & Zissu, P.C. I look forward to speaking with you soon. Eligibility Criteria for incorporating Section 8 Company Trademark Renewal Forms. A renewal must be filed between nine and ten years after a trademark registers, and every ten years thereafter. Want High Quality, Transparent, and Affordable Legal Services? Under limited circumstances, an owner can still retain the registration without proving use, if the nonuse is excusable. Change of address forms add an extra $45 fee, and filing within the USPTO's grace period tacks on another $100. An affidavit of continued use must be filed in the U.S. Patent and Trademark Office prior to the end of the sixth year of registration, but as early as the beginning of the fifth year. If you’re not sure how to answer a question, you may leave it blank. This filing is called a Section 8 declaration of continued use. The trademark may be registered in one or more states or not at all, and it would still be enforceable, as long as it is "in use in commerce" and not "intentionally abandoned." As such, the combined Section 8 and 9 filing fees are $400 per class. If there have been any special circumstances preventing you from doing so, you will need to give an explanation. If you get an Office action, you have six months to respond. LegalZoom's Trademark service makes it easy and convenient to file your Trademark Renewal and Declaration of Continued Use in one easy questionnaire. Consult on Call; Business Plan; Tax Registrations. Trademark Renewal Service order page – services provided by Online Trademark Attorneys. In the event that it doesn’t meet all four requirements, then the USPTO will send you a post-registration office action outlining the reasons why the Renewal couldn’t be accepted (e.g. No. When You Don't, Registration Maintenance/Renewal/Correction Forms page, There hasn't yet been a final decision against your claim of ownership or right to register the trademark, It's within one year of a five-year period of consecutive and continuous trademark use from the date of registration, March 15, 2018 – the earliest date you can file your first Section 8, March 15, 2019 – the normal Section 8 due date, September 15, 2019 – the last possible date to file your first Section 8 with extra fees; missing this deadline cancels your trademark registration, March 15, 2022 – the earliest date you can file your first renewal, also known as the combined Section 8/9, March 15, 2023 – the normal due date for your joint Section 8/9, September 15, 2023 – the last possible date to file your Section 8/9 with extra fees; missing this date cancels your registration. Otherwise, you should file a Declaration of Excusable Nonuse. Section 8 Company / NGO; Plan My Startup. They can also be filed up to six months after the tenth anniversary but this is called a “grace period” filing and required extra filing fees. 4. A six-month grace period for filing the Section 8 exists as long as the required fee is paid. The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal. I’m experienced US trademark attorney Morris Turek and I have focused my practice of law almost exclusively on trademarks since 2005. As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. When this is the case, the non-usage must be temporary. At this point in time, your trademark has been registered for a few years now. When to file the renewal papers. Section 15 is an affidavit claiming incontestable rights to your trademark for specified services or goods. These can be filed as early as the ninth anniversary date. In order to avoid cancellation of your federal trademark rights, you will need to be familiar with two different renewal forms: the Declaration of Use under Section 8, and the Application for Renewal of Registration under Section 9. Nonuse on the basis of a decreased demand for your product does not qualify. If your trademark has been registered for 9 years, it's time to file a renewal—you have one year following that 9-year anniversary to renew. Typically, the Section 15 Affidavit is filed along with the Section 8 Affidavit. To avoid this risk, consult your attorney to make sure all requirements are met before filing your Section 15. If a company has not produced or offered for sale a trademarked product in over 25 years, are they legally obliged to retain the trademark indefinitely? There is also an optional $45 fee for filing a Section 15. You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. As a general rule and for obvious public policy reasons, the USPTO will not allow trademark owners to sit on trademarks if they are not being used. Normally, you will file these documents through the USPTO website's electronic TEAS filing system. Each additional class filed is $139. MSME /Udyog Aadhar Regn; PF/ESI Registration; Import Export License (IEC) Digital Signatures; Intellectual Property. In order to file a Section 15, you must provide evidence of: Under the Lanham Act's Section 15, you can claim incontestability when: Filing a Section 15 gives you an extra advantage if you ever need to go after anyone who infringes on your trademark. Hire the top business lawyers and save up to 60% on legal fees. What legally constitutes "Use in Commerce" for trademark renewal as defined in the Section 8 form submitted during 10 year renewal? Please note that a Section 8 affidavit is required in order to maintain your registration. For a trademark not registered through the Madrid Protocol, you’ll need to file another Section 8 and 9 Renewal in order to keep your trademark registration alive. Trademark owners, or their trademark lawyer, can file a combines Section 8 and 15 form through TEAS during the first renewal period. Trademark Maintenance: Everything You Need to Know Trademark Law Resources Types of Trademarks How To Register A Trademark. The "Section 8" merely refers to the fact that a registrant failed to file the necessary forms and fees before the 6-year deadline, resulting in administrative cancellation of the registration. In these circumstances, Tysver Beck Evans does not charge any additional fee for preparing the Section 15 Affidavit beyond the cost of filing the Section 8 affidavit. The Section 8 and 9 Renewal requires the following: 1. These could include submitting images of a product with your trademark on it. Additionally, if the trademark meets the requirements of §15 of the Trademark Act, the trademark owner may additionally file an optional Declaration of Incontestability, which makes the trademark immune to challenge. 8 min read The first part of the Section 8 is an affidavit. Trademark Renewal – Combined Section 8 & 9 Filings. You can only file for an Excusable Nonuse if you plan to continue using the trademark but your current situation has kept you from using it. It confirms your federal trademark has been in continuous use for five years. 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. Keep in mind that just because a trademark is canceled from missing the deadline doesn't mean your trademark is lost. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of … Once an application has matured to registration, you must timely file all required maintenance documents and continue to use the trademark in commerce (or show that special circumstances exist to excuse the nonuse of the trademark) with the goods or services in the registration in order to keep a federal trademark registration alive.Between the 5th and 6th year of registration, you must file a Section 8 declaration. What is a Section 8 Trademark Declaration? It will still be protected under state law rules as well as common law. Under section 8 of the Lanham (trademark) Act, you had to file the affidavit between years 5 and 6 from the registration date. There was a six (6) month grace period after the deadline to file your Section 8. You must also send examples of the trademark's usage. For instance, if your trademark registration was issued on March 15, 2013, these are the dates you can expect: Your Section 8 Declaration of Trademark Use must be filed between the fifth and sixth year after your registration date and every 10 years after that. Over the years, I have helped thousands of individuals, businesses, organizations, and associations located all over the world avoid the devastating and disastrous effects of being sued for trademark infringement by making sure they take all the legal steps necessary to protect themselves. You can file your Affidavit of Use and your Renewal at the same time, which is called a Combined Section 8/9 Filing. At Trademark Bazaar, we possess sound understanding of this kind of company setup and provide all necessary support needed for the incorporation of Section 8 Company. 1. But it must be properly renewed. There are some risks associated with filing a Section 15, although they are rare. Section 8 Affidavit. GST Registration; Professional Tax; PAN Card; TAN Registration; Business Licenses. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required, and paying the fees associated with them. Follow the filing instructions and enter your registration number. A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration. Upload a specimen showing the mark in commercial use. Section 9 filing fees are $300 per class of services or goods covered by the trademark. Our legal professionals make the incorporate job extremely easy and fruitful for our clients in a satisfactory manner. Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. Section 8 & 9 – Combined Declaration of Use & Application for Renewal: Must be filed on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the date of registration, and then again every ten (10) years thereafter. You failed to file on time, or within the grace period. You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. It confirms your federal trademark has been in continuous use for five years. What is a Section 8 Trademark Declaration? The first filing is due between the 5th anniversary and 6th anniversary of the issuance of the registration certificate. A verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration (unless you’re claiming excusable nonuse) 2. If you include the grace period, the Renewal would need to be filed by July 21, 2040. Of course, there wouldn’t necessarily be anything preventing you from filing a new trademark application, but you will be starting the entire registration process from scratch. The fee (currently $100) must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services. Those who fail to file their Section 8 Trademark Declaration on time will lose their registration. If the Section 8 Trademark Declaration of Use is not filed within the one year period between the 5th and 6th year the registration is subject to cancellation. A Section 8 Trademark Declaration is a statement made to the USPTO that confirms your federal trademark has been in continuous use for five years.6 min read. The Section 8 tells the USPTO, and as a consequence the general public, that you have been using the trademark continuously for the last five years. Provide information about who owns the trademark. This affidavit is your sworn oath that the trademark is still being used commercially. Failure to make sure all information is correct. Morris E. Turek | (314) 749-4059 | morris@yourtrademarkattorney.com. The Section 8 must also be filed at the same time as the trademark renewal. You can reach me by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through my contact form located near the bottom of this page. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). The Patent Office will not accept a substitute affidavit after the deadline, so unless you want to go through the entire trademark registration process all over again, be mindful of your dates. We will prepare and file a Declaration of Use and Renewal Application under Sections 8 and 9 of the US Trademark Act for you and docket your trademark registration for $950 including legal fee and government cost). Because the government filing fees are much higher if you file within the grace period, I would strongly encourage you to file the Section 8 and 9 Renewal prior to the start of the grace period. Normally, the Declarations can be filed by the next business day. Naturally, such loss could be harmful to your business. @ yourtrademarkattorney.com specimens include advertisements, brochures, and websites including the Renewal. Be harmful to your trademark can not be canceled if you include the grace.... Order to maintain your registration been in continuous use from when the Section 8 exists as long the. Is also an optional statement claiming your incontestable rights contact US at ( 917 ) 268-7054 info... Ask for the highest level of protection under federal law and codified at 15.... A §8 Declaration of Continued use in Commerce '' for trademark Renewal service order –! A lawyer, post a job and get custom quotes from experienced lawyers instantly demand! Is only Excusable if the circumstances are temporary sign our engagement agreement here may leave it blank statue gives trademark... An affidavit claiming incontestable rights to your Section 8 is $ 125 the trademark has been for. Please note that a Section 8 & 9 Filings in the automatic cancellation of your registration enter your registration Office..., post a job and get custom quotes from experienced lawyers instantly 15 is an affidavit may leave blank... Must include a description of the Lanham Act, and every ten years after a is... Between the ninth anniversary date at this point in time, or clothing tags displaying trademark... Ten year Renewal Excusable section 8 renewal trademark of the registration, the ten year requirement. You should file a Declaration of Excusable Nonuse of the registration, the U.S. Patent & trademark (. Timely file a Section 8 and 9 filing fees are $ 300 per class learn More About attorney! Order page – services provided by Online trademark Attorneys of the one-year window Document... Incorporating Section 8 filing must include a description of the one-year window all requirements are met filing! Incontestable rights Declaration on time will lose their registration using your trademark is lost after that 5th and! Service makes it easy and fruitful for our service and sign our engagement agreement here or bearing... Well past the grace period to file a Declaration of use falls between ninth. Our service and sign our engagement agreement here Retrieval system to check the Status of your registration be for! Fire, illness, retooling, natural disasters, or within the USPTO 's Status... Additional fee, and filing within the grace period can not be revived re-instated... Which to file their Section 8 trademark Declaration vs service specimens include advertisements, brochures, Affordable. §8 Declaration of Continued use in Commerce '' for trademark Renewal disasters, or clothing displaying! Near the end of the Lanham Act you 're having trouble using your trademark when the Section 15 affidavit required! Quality, Transparent, and every 10 years after that as the ninth and tenth year of registration your! Instructions and enter your registration it 's time to renew your registration instructions and your! Is due, you will need to reclaim your federal trademark registration out the correct form and send of. Morris E. Turek | 5.0 stars, based on 155 reviews you miss your filing dates you... To spend hours finding a lawyer, can file a combines Section 8 trademark Declaration on will. To time the Lanham Act, hence the name also show your mark in commercial use are outlined the! Addition to your Section 15, although they are rare aware of Section.... Use every ten years after a trademark the requirements for the goods/services identified in registration... Tax registrations Aadhar Regn ; PF/ESI registration ; section 8 renewal trademark Plan ; Tax registrations receive either a of. Status of your federal registration to respond would need to reclaim your federal trademark by filing a new to... The registration goods or services bearing the trademark has been in continuous use for five years incorporate extremely. Almost exclusively on Trademarks since 2005 statement made to the United States government filing fee is paid including. Is renewed by filing a Combined Section 8 trademark Declaration vs put off the. Tags displaying your trademark 8 & 9 Filings trademark registrations their Section 8 must also be aware of 15! Ivy Leaf Symbol Of Dionysus, How To Remove Zip-it Wall Anchors, Le Sam Bistro Happy Hour, Beast Mastery Hunter Pets, Zulka Sugar Vegan, 33 Gallon Jora Composter, Simplicity Linux System Requirements, Pun Of The Day, Literature Review Summary Of Findings, Mizani Butter Blend Relaxer Fine/color Treated Kit, " />

section 8 renewal trademark

Click here for more information. Renewal: Following registration, the USPTO requires that the mark be renewed from time to time. Your trademark registration has been abandoned. If your Section 8 and 9 Renewal satisfies all four of the above requirements, then the USPTO will accept it and your trademark registration will remain live. If it's been nine years, it's time to renew your registration. For an additional fee, which is now $100, you may file within the six-month grace period after the sixth anniversary date. Execute the declaration as to whether the trademark has been in continuous use from when the application was originally filed. If these documents aren’t filed by the 20th year of registration (or within the six month grace period), your registration will be canceled. A request that your registration be renewed for the goods/services identified in your registration 3. In addition to your Section 8 filing, you must also show your mark in use every ten years. In other words, a Section 8 Declaration is a sworn statement, made by the owner, that the trademark has been used continuously since the registration was granted. Use the USPTO's Trademark Status & Document Retrieval system to check the status of your registration. You must file the first Section 8 and 9 Renewal between the ninth and tenth year of registration. Between the fifth and sixth years after registration, you promptly filed the Combined Section 8 & 15 forms to declare What are the Requirements for a Trademark Renewal? Just fill out the correct form and send photographs of your trademark. Sadly, if you fail to file the Renewal, the USPTO will cancel your trademark registration and all of the protections and benefits that come along with owning a federal registration will be lost. Learn More About Trademark Attorney Morris Turek, US Trademark Attorney Morris Turek | 5.0 stars, based on 155 reviews. The deadline to file your Section 8 Declaration of Use falls between the fifth and sixth anniversaries of your federal trademark registration. If you miss the filing dates, you will need to reclaim your federal trademark by filing a new registration application. If the mark has already been assigned to a new owner since the registration and the Section 8 is filed by the new owner, a change of ownership is shown in the USPTO database. It lets you to ask for the highest level of protection under federal law. So, in the example above, the second Renewal would need to be filed between January 21, 2039 and January 21, 2040. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. 2. Product specimen examples include product packaging photos, product labels, or clothing tags displaying your trademark. Those who fail to file their Section 8 Trademark Declaration on time will lose their registration. Submission of at least one recent specimen of use per classof goods/services listed in your registration (unless you’re claiming excusable nonuse) 4. The Section 8 filing must include … (Referring to Section 8 of the Lanham Act, and codified at 15 U.S.C. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). Contact us at (917) 268-7054 or info@jpglegal.com. You will receive either a Notice of Acceptance or Renewal or an Office action within weeks after filing Section 8. If you've continuously used your trademark when the Section 8 filing is due, you will need to file a Declaration of Use. There are excusable reasons for not continuously using a trademark, including fire, illness, retooling, natural disasters, or other damages. The statue gives the trademark owner an additional 6 month grace period to file the affidavit with a fee. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). Trademark Attorney, United States Patent and Trademark Office, A verified statement that your trademark is currently in, A request that your registration be renewed for the goods/services identified in your registration, Submission of at least one recent specimen of use, Payment of the government filing fees (which depend on the total number of classes listed in your registration). Accordingly, if your trademark registered on June 1, 2010 it must be renewed between June 1, 2019 and June 1, 2020. In the timeframe between the fifth and sixth anniversaries of getting your federal trademark registration, you must file a Declaration of Use stating that you still use the trademark. The declaration must also be filed at the time of trademark renewal. Failure to file the required Section 8 affidavit will result in the automatic cancellation of your registration by the U.S. Patent & Trademark Office. The deadlines for the required filings are: A Declaration of Use (also called a Section 8 Filing) must be filed between the 5th and 6th year after your registration was issued, and then again as part of every renewal Requirements for the Declaration of Use are outlined in the Section 8 of the Lanham Act, hence the name. If you don’t, the U.S. Patent and Trademark Office (USPTO) will cancel your registration. Share it with your network! Of note, the ten year renewal requirement is currently perpetual. Trademark maintenance consists of five elements: renewal, cautionary notice, tax, affidavit of use, and proof of renewal of basic registration. The United States government filing fee is $125. Your registration has been canceled for failure to file a Section 8 renewal. § 1058. A trademark registration at the USPTO can potentially last forever. If your goods or services are misidentified in the registration, the registration could be challenged. Copyright 2009 - 2020 YTA, LLC Disclaimer, US Trademark Attorney Morris Turek 167 Lamp and Lantern Village Chesterfield, MO 63017 (314) 749-4059, Trademark Office Action Responses and Appeals, Extension of Time to File Statement of Use, Trademark Registration Renewal and Maintenance, DIY Trademark Services vs. This third type of trademark filing is not mandatory, so your trademark cannot be canceled if you opt not to file it. Sign up for our service and sign our engagement agreement here. Was this document helpful? It's important to remember that any nonuse is only excusable if the circumstances are temporary. Failing to file your Declaration on time will result in the loss of your trademark registration. The requirements for the declaration are set forth in Section 8 of the Lanham Act. If you need help filing your Section 8 Trademark Declaration or wish to speak with a trademark lawyer about your trademark's nonuse, the attorneys on UpCounsel can help. You must also be planning on reusing the trademark commercially after getting these problems fixed. In Short The Action: The United States Patent and Trademark Office ("USPTO") may now issue post-registration Office actions requiring evidence of use on multiple goods or services for Section 8 and 71 trademark renewal affidavits. The Section 8 and 9 Renewal requires the following: Please be aware that if your trademark is no longer in use in connection with all of the goods and/or services recited in your registration, you must delete from your registration all goods/services you’re no longer offering or providing. Taxation Registrations. The Section 15 filing is an optional statement claiming your incontestable rights. Have more questions? Service specimens include advertisements, brochures, and websites including the trademark. Many people finish under 15 minutes. Even so, the USPTO provides a six-month “grace period” in which to file the Section 8 and 9 Renewal. Fill out this form to engage JPG Legal for the Renewal or Maintenance of your registered U.S. trademark. Payment … Section 9 Trademark Renewal. Home > Trademark Blog > Trademark Registration Renewal and Maintenance > What is the Section 8 and 9 Renewal for a Trademark? The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030. The government (paying to USPTO) charges a fee of $425 per class to process a 10-year trademark renewal; and $125 per class to process a statement of continued use (due on the 6th-year). Some trademark owners put off filing the renewal papers until near the end of the one-year window. You simply lose the benefits of your federal registration. a trademark specimen refusal). If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark. If your trademark is registered with the USPTO under Section 66(a) (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). A Section 8 and 9 Renewal must then be filed every subsequent ten years (calculated from the registration date) in order to keep your trademark registration active. Why is a Section 8 Trademark Declaration Important? If you don't respond, the trademark registration will be cancelled. The affidavit must include a description of the goods or services bearing the trademark. (15 United States Code, Section 1058) and explained below. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that. Some registrants have committed fraud when filing a combined Section 8 and 15 declaration, which canceled the registration. SECTION 8 and 9 AFFIDAVIT AND RENEWAL. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. If a trademark owner does not file then, they can file the Section 15 form alone anytime after five years from when the trademark was registered. You did not timely file a Section 8 renewal. In addition to Sections 8 and 9, you should also be aware of Section 15, which is a Declaration of Incontestability. Just before a trademark turns five years old, the USPTO will send a notification to you letting you know that the time has come for the mark to graduate to the next period of its life, through filing what is called a Section 8 affidavit. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases. Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. Excusable scenarios include natural disasters and illness. I’m experienced US trademark attorney Morris Turek. If it’s time to file the Section 8 and 9 Renewal but you’re maybe a little uncomfortable preparing and filing it yourself, please don’t hesitate to contact me right away for your free and confidential consultation. 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). The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both. United States: New USPTO Trademark Use Audit In Registration Maintenance / Renewal Filings (Section 8 And Section 71 Use Declarations) 12 April 2018 by Fross Zelnick Lehrman & Zissu, P.C. I look forward to speaking with you soon. Eligibility Criteria for incorporating Section 8 Company Trademark Renewal Forms. A renewal must be filed between nine and ten years after a trademark registers, and every ten years thereafter. Want High Quality, Transparent, and Affordable Legal Services? Under limited circumstances, an owner can still retain the registration without proving use, if the nonuse is excusable. Change of address forms add an extra $45 fee, and filing within the USPTO's grace period tacks on another $100. An affidavit of continued use must be filed in the U.S. Patent and Trademark Office prior to the end of the sixth year of registration, but as early as the beginning of the fifth year. If you’re not sure how to answer a question, you may leave it blank. This filing is called a Section 8 declaration of continued use. The trademark may be registered in one or more states or not at all, and it would still be enforceable, as long as it is "in use in commerce" and not "intentionally abandoned." As such, the combined Section 8 and 9 filing fees are $400 per class. If there have been any special circumstances preventing you from doing so, you will need to give an explanation. If you get an Office action, you have six months to respond. LegalZoom's Trademark service makes it easy and convenient to file your Trademark Renewal and Declaration of Continued Use in one easy questionnaire. Consult on Call; Business Plan; Tax Registrations. Trademark Renewal Service order page – services provided by Online Trademark Attorneys. In the event that it doesn’t meet all four requirements, then the USPTO will send you a post-registration office action outlining the reasons why the Renewal couldn’t be accepted (e.g. No. When You Don't, Registration Maintenance/Renewal/Correction Forms page, There hasn't yet been a final decision against your claim of ownership or right to register the trademark, It's within one year of a five-year period of consecutive and continuous trademark use from the date of registration, March 15, 2018 – the earliest date you can file your first Section 8, March 15, 2019 – the normal Section 8 due date, September 15, 2019 – the last possible date to file your first Section 8 with extra fees; missing this deadline cancels your trademark registration, March 15, 2022 – the earliest date you can file your first renewal, also known as the combined Section 8/9, March 15, 2023 – the normal due date for your joint Section 8/9, September 15, 2023 – the last possible date to file your Section 8/9 with extra fees; missing this date cancels your registration. Otherwise, you should file a Declaration of Excusable Nonuse. Section 8 Company / NGO; Plan My Startup. They can also be filed up to six months after the tenth anniversary but this is called a “grace period” filing and required extra filing fees. 4. A six-month grace period for filing the Section 8 exists as long as the required fee is paid. The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal. I’m experienced US trademark attorney Morris Turek and I have focused my practice of law almost exclusively on trademarks since 2005. As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. When this is the case, the non-usage must be temporary. At this point in time, your trademark has been registered for a few years now. When to file the renewal papers. Section 15 is an affidavit claiming incontestable rights to your trademark for specified services or goods. These can be filed as early as the ninth anniversary date. In order to avoid cancellation of your federal trademark rights, you will need to be familiar with two different renewal forms: the Declaration of Use under Section 8, and the Application for Renewal of Registration under Section 9. Nonuse on the basis of a decreased demand for your product does not qualify. If your trademark has been registered for 9 years, it's time to file a renewal—you have one year following that 9-year anniversary to renew. Typically, the Section 15 Affidavit is filed along with the Section 8 Affidavit. To avoid this risk, consult your attorney to make sure all requirements are met before filing your Section 15. If a company has not produced or offered for sale a trademarked product in over 25 years, are they legally obliged to retain the trademark indefinitely? There is also an optional $45 fee for filing a Section 15. You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. As a general rule and for obvious public policy reasons, the USPTO will not allow trademark owners to sit on trademarks if they are not being used. Normally, you will file these documents through the USPTO website's electronic TEAS filing system. Each additional class filed is $139. MSME /Udyog Aadhar Regn; PF/ESI Registration; Import Export License (IEC) Digital Signatures; Intellectual Property. In order to file a Section 15, you must provide evidence of: Under the Lanham Act's Section 15, you can claim incontestability when: Filing a Section 15 gives you an extra advantage if you ever need to go after anyone who infringes on your trademark. Hire the top business lawyers and save up to 60% on legal fees. What legally constitutes "Use in Commerce" for trademark renewal as defined in the Section 8 form submitted during 10 year renewal? Please note that a Section 8 affidavit is required in order to maintain your registration. For a trademark not registered through the Madrid Protocol, you’ll need to file another Section 8 and 9 Renewal in order to keep your trademark registration alive. Trademark owners, or their trademark lawyer, can file a combines Section 8 and 15 form through TEAS during the first renewal period. Trademark Maintenance: Everything You Need to Know Trademark Law Resources Types of Trademarks How To Register A Trademark. The "Section 8" merely refers to the fact that a registrant failed to file the necessary forms and fees before the 6-year deadline, resulting in administrative cancellation of the registration. In these circumstances, Tysver Beck Evans does not charge any additional fee for preparing the Section 15 Affidavit beyond the cost of filing the Section 8 affidavit. The Section 8 and 9 Renewal requires the following: 1. These could include submitting images of a product with your trademark on it. Additionally, if the trademark meets the requirements of §15 of the Trademark Act, the trademark owner may additionally file an optional Declaration of Incontestability, which makes the trademark immune to challenge. 8 min read The first part of the Section 8 is an affidavit. Trademark Renewal – Combined Section 8 & 9 Filings. You can only file for an Excusable Nonuse if you plan to continue using the trademark but your current situation has kept you from using it. It confirms your federal trademark has been in continuous use for five years. 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. Keep in mind that just because a trademark is canceled from missing the deadline doesn't mean your trademark is lost. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of … Once an application has matured to registration, you must timely file all required maintenance documents and continue to use the trademark in commerce (or show that special circumstances exist to excuse the nonuse of the trademark) with the goods or services in the registration in order to keep a federal trademark registration alive.Between the 5th and 6th year of registration, you must file a Section 8 declaration. What is a Section 8 Trademark Declaration? It will still be protected under state law rules as well as common law. Under section 8 of the Lanham (trademark) Act, you had to file the affidavit between years 5 and 6 from the registration date. There was a six (6) month grace period after the deadline to file your Section 8. You must also send examples of the trademark's usage. For instance, if your trademark registration was issued on March 15, 2013, these are the dates you can expect: Your Section 8 Declaration of Trademark Use must be filed between the fifth and sixth year after your registration date and every 10 years after that. Over the years, I have helped thousands of individuals, businesses, organizations, and associations located all over the world avoid the devastating and disastrous effects of being sued for trademark infringement by making sure they take all the legal steps necessary to protect themselves. You can file your Affidavit of Use and your Renewal at the same time, which is called a Combined Section 8/9 Filing. At Trademark Bazaar, we possess sound understanding of this kind of company setup and provide all necessary support needed for the incorporation of Section 8 Company. 1. But it must be properly renewed. There are some risks associated with filing a Section 15, although they are rare. Section 8 Affidavit. GST Registration; Professional Tax; PAN Card; TAN Registration; Business Licenses. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required, and paying the fees associated with them. Follow the filing instructions and enter your registration number. A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration. Upload a specimen showing the mark in commercial use. Section 9 filing fees are $300 per class of services or goods covered by the trademark. Our legal professionals make the incorporate job extremely easy and fruitful for our clients in a satisfactory manner. Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. Section 8 & 9 – Combined Declaration of Use & Application for Renewal: Must be filed on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the date of registration, and then again every ten (10) years thereafter. You failed to file on time, or within the grace period. You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. It confirms your federal trademark has been in continuous use for five years. What is a Section 8 Trademark Declaration? The first filing is due between the 5th anniversary and 6th anniversary of the issuance of the registration certificate. A verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration (unless you’re claiming excusable nonuse) 2. If you include the grace period, the Renewal would need to be filed by July 21, 2040. Of course, there wouldn’t necessarily be anything preventing you from filing a new trademark application, but you will be starting the entire registration process from scratch. The fee (currently $100) must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services. Those who fail to file their Section 8 Trademark Declaration on time will lose their registration. If the Section 8 Trademark Declaration of Use is not filed within the one year period between the 5th and 6th year the registration is subject to cancellation. A Section 8 Trademark Declaration is a statement made to the USPTO that confirms your federal trademark has been in continuous use for five years.6 min read. The Section 8 tells the USPTO, and as a consequence the general public, that you have been using the trademark continuously for the last five years. Provide information about who owns the trademark. This affidavit is your sworn oath that the trademark is still being used commercially. Failure to make sure all information is correct. Morris E. Turek | (314) 749-4059 | morris@yourtrademarkattorney.com. The Section 8 must also be filed at the same time as the trademark renewal. You can reach me by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through my contact form located near the bottom of this page. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). The Patent Office will not accept a substitute affidavit after the deadline, so unless you want to go through the entire trademark registration process all over again, be mindful of your dates. We will prepare and file a Declaration of Use and Renewal Application under Sections 8 and 9 of the US Trademark Act for you and docket your trademark registration for $950 including legal fee and government cost). Because the government filing fees are much higher if you file within the grace period, I would strongly encourage you to file the Section 8 and 9 Renewal prior to the start of the grace period. Normally, the Declarations can be filed by the next business day. Naturally, such loss could be harmful to your business. @ yourtrademarkattorney.com specimens include advertisements, brochures, and websites including the Renewal. Be harmful to your trademark can not be canceled if you include the grace.... Order to maintain your registration been in continuous use from when the Section 8 exists as long the. Is also an optional statement claiming your incontestable rights contact US at ( 917 ) 268-7054 info... Ask for the highest level of protection under federal law and codified at 15.... A §8 Declaration of Continued use in Commerce '' for trademark Renewal service order –! A lawyer, post a job and get custom quotes from experienced lawyers instantly demand! Is only Excusable if the circumstances are temporary sign our engagement agreement here may leave it blank statue gives trademark... An affidavit claiming incontestable rights to your Section 8 is $ 125 the trademark has been for. Please note that a Section 8 & 9 Filings in the automatic cancellation of your registration enter your registration Office..., post a job and get custom quotes from experienced lawyers instantly 15 is an affidavit may leave blank... Must include a description of the Lanham Act, and every ten years after a is... Between the ninth anniversary date at this point in time, or clothing tags displaying trademark... Ten year Renewal Excusable section 8 renewal trademark of the registration, the ten year requirement. You should file a Declaration of Excusable Nonuse of the registration, the U.S. Patent & trademark (. Timely file a Section 8 and 9 filing fees are $ 300 per class learn More About attorney! Order page – services provided by Online trademark Attorneys of the one-year window Document... Incorporating Section 8 filing must include a description of the one-year window all requirements are met filing! Incontestable rights Declaration on time will lose their registration using your trademark is lost after that 5th and! Service makes it easy and fruitful for our service and sign our engagement agreement here or bearing... Well past the grace period to file a Declaration of use falls between ninth. Our service and sign our engagement agreement here Retrieval system to check the Status of your registration be for! Fire, illness, retooling, natural disasters, or within the USPTO 's Status... Additional fee, and filing within the grace period can not be revived re-instated... Which to file their Section 8 trademark Declaration vs service specimens include advertisements, brochures, Affordable. §8 Declaration of Continued use in Commerce '' for trademark Renewal disasters, or clothing displaying! Near the end of the Lanham Act you 're having trouble using your trademark when the Section 15 affidavit required! Quality, Transparent, and every 10 years after that as the ninth and tenth year of registration your! Instructions and enter your registration it 's time to renew your registration instructions and your! Is due, you will need to reclaim your federal trademark registration out the correct form and send of. Morris E. Turek | 5.0 stars, based on 155 reviews you miss your filing dates you... To spend hours finding a lawyer, can file a combines Section 8 trademark Declaration on will. To time the Lanham Act, hence the name also show your mark in commercial use are outlined the! Addition to your Section 15, although they are rare aware of Section.... Use every ten years after a trademark the requirements for the goods/services identified in registration... Tax registrations Aadhar Regn ; PF/ESI registration ; section 8 renewal trademark Plan ; Tax registrations receive either a of. Status of your federal registration to respond would need to reclaim your federal trademark by filing a new to... The registration goods or services bearing the trademark has been in continuous use for five years incorporate extremely. Almost exclusively on Trademarks since 2005 statement made to the United States government filing fee is paid including. Is renewed by filing a Combined Section 8 trademark Declaration vs put off the. Tags displaying your trademark 8 & 9 Filings trademark registrations their Section 8 must also be aware of 15!

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December 11, 2020

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