SECTION 8 and 9 AFFIDAVIT AND RENEWAL. I’m experienced US trademark attorney Morris Turek. LegalZoom's Trademark service makes it easy and convenient to file your Trademark Renewal and Declaration of Continued Use in one easy questionnaire. 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. 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. 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? Renewal: Following registration, the USPTO requires that the mark be renewed from time to time. As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. What is a Section 8 Trademark Declaration? The Section 15 filing is an optional statement claiming your incontestable rights. 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. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time. 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. Section 8 Company / NGO; Plan My Startup. If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. 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. Under limited circumstances, an owner can still retain the registration without proving use, if the nonuse is excusable. You must file the first Section 8 and 9 Renewal between the ninth and tenth year of registration. 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. Trademark Maintenance: Everything You Need to Know Trademark Law Resources Types of Trademarks How To Register A Trademark. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. 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. There are some risks associated with filing a Section 15, although they are rare. You will receive either a Notice of Acceptance or Renewal or an Office action within weeks after filing Section 8. 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. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). A six-month grace period for filing the Section 8 exists as long as the required fee is paid. You must also be planning on reusing the trademark commercially after getting these problems fixed. 2. Naturally, such loss could be harmful to your business. The declaration must also be filed at the time of trademark renewal. A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of 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. 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. The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both. Failing to file your Declaration on time will result in the loss of your trademark registration. You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. A request that your registration be renewed for the goods/services identified in your registration 3. Requirements for the Declaration of Use are outlined in the Section 8 of the Lanham Act, hence the name. Just fill out the correct form and send photographs of your trademark. Section 8 Affidavit. 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. You simply lose the benefits of your federal registration. If these documents aren’t filed by the 20th year of registration (or within the six month grace period), your registration will be canceled. 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. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that. For an additional fee, which is now $100, you may file within the six-month grace period after the sixth anniversary date. There are excusable reasons for not continuously using a trademark, including fire, illness, retooling, natural disasters, or other damages. Trademark Renewal Forms. These could include submitting images of a product with your trademark on it. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). 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). Follow the filing instructions and enter your registration number. MSME /Udyog Aadhar Regn; PF/ESI Registration; Import Export License (IEC) Digital Signatures; Intellectual Property. So, in the example above, the second Renewal would need to be filed between January 21, 2039 and January 21, 2040. Home > Trademark Blog > Trademark Registration Renewal and Maintenance > What is the Section 8 and 9 Renewal for a Trademark? The United States government filing fee is $125. The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal. Failure to make sure all information is correct. 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. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). Please note that a Section 8 affidavit is required in order to maintain your registration. The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. Provide information about who owns the trademark. 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. Hire the top business lawyers and save up to 60% on legal fees. Trademark Renewal – Combined Section 8 & 9 Filings. You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. 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. Nonuse on the basis of a decreased demand for your product does not qualify. Our legal professionals make the incorporate job extremely easy and fruitful for our clients in a satisfactory manner. You did not timely file a Section 8 renewal. 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. 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. Learn More About Trademark Attorney Morris Turek, US Trademark Attorney Morris Turek | 5.0 stars, based on 155 reviews. What is a Section 8 Trademark Declaration? 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. Be aware of Section 15, although they are required at the same time, or their lawyer... 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