Filing a Section 8 Declaration

August 27, 2013

Trademark law is one of the more complicated bodies of law and one of those areas of law that most people are largely unfamiliar with. It does not typically intersect with the average person’s life. It is little wonder that after you register your trademark, you may be surprised to find that your work is only just now beginning.

One of the things that you must do is file a Section 8 Declaration with the United States Patent and Trademark Office. This statement affirms that you have used your registered trademark continuously over the past five years. Failure to do this can have grave consequences.

The One Year Window

Your Section 8 Declaration is a fairly simple statement. It needs to follow all of the requirements set out in Lanham Act Section 8 in the U.S. Code. It must be accompanied by a check for $100 along with a full sample of the registered trademark. You may also want to include information about the reason that you registered the trademark in a brief statement. Once you register trademark, the clock starts ticking. At any time between the fifth and sixth year, you can file this declaration. Make sure that you get it in sooner rather than later.

To ensure that you get all of the formalities correct, you can download a form from the United States Patent and Trademark Office. The form you want is found under the Registration Maintenance Renewal Correction Forms. You want the one entitled “Declaration of Use and/or Excusable Nonuse of a Mark under Section 8”. You must provide your registration number and other similar information. Electronic signatures can be provided for this form, and it can be completed online most of the time.

Consequences of Not Filing

The consequences for not filing are that you lose your trademark status. You technically have six months in which you can appeal this. However, you will have to provide an additional $100 fee to be able to reclaim your trademark. This assumes, however, that no one else has claimed the trademark. Under the current law, anyone who registers for the trademark even during the grace period can obtain it as long as the Section 8 Declaration has not been filed. If no one has claimed the trademark, but you have not filed within the six month window, then you have still lost the trademark. You must then start from the beginning and re-file. In some cases, additional fees may be assessed.

Bear in mind that a loss of the federal trademark status does not mean that you have no rights to protect yourself. You still have copyright protection as well as common law and state law. But this will not keep another entity from validly registering it and potentially preventing you from using it. According to Nolo, this does not happen frequently. However, you should not risk it. File the Section 8 Declaration early within the fifth year and save yourself the headache of refilling. Don’t take chances with your registered trademark.