NATOLI-LEGAL, LLC
So you received a courtesy notice from the United States Patent and Trademark Office (USPTO) letting you know that you are now ready to file your Section 8 – Statement of Continued Use (a mandatory filing) and your Section 15 – Declaration of Incontestability (an optional filing).
What is the Trademark Section 8 and Why is it Important?
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. 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. If, however, you had a valid reason for ceasing use within the last five years you are allowed to state your reasons why and assuming you plan on reusing the trademark after these acceptable issues are corrected you will likely be permitted to file. Excusable reasons for not continuously using a trademark, including fire, illness, retooling, natural disasters, or other damages. In order for any excuse to be accepted, the non-usage must be temporary.
The filing itself has two parts. The first part is a sworn affidavit, which is basically a statement regards to your continued use and the goods and services the trademark describes. The second part is the proof of use. This is just like the specimen you provided when you originally filed the trademark or in the case of a 1(b) Intent to Use filing, when you sent in your Statement of Use. In many cases, using the exact same specimen will suffice assuming it reflects your current use as it did when you first sent it in.
The Section 8 filing is mandatory. Failing to send it in on time will result in the abandonment or cancelation of the trademark. This means you will have no choice but to reapply for trademark registration. The USPTO does, however, give you a generous amount of time to send it in. The first period is twelve months. Then they offer a grace period filing that extends the time for another six months with the payment of an additional fee. At the time of this writing, the fees are $125.00 for each international class your trademark is filed within during the normal twelve month filing period and if in the grace period just add an additional $100.00 per class (note that the fees are higher for paper filings and that they are subject to change).
What is the Trademark Section 15 and Do I Really Need This?
Well, you are not required to file this one and therefore failure to do so will not result in any cancelation of your trademark, but that said, you will want to do it.
The Section 15 – Declaration of Incontestability offers some excellent advantages. The most advantageous of these is that once filed and accepted, common law users of a confusingly similar, or conflicting trademark, will no longer be able to file a Petition to Cancel your trademark based on their alleged prior use rights. This is a very important threshold to cross regards to trademark usage and forecloses the potential for a number of issues that might otherwise be very problematic.
Section 15 is an affidavit claiming incontestable rights to your trademark within the services or goods described. In order to file a Section 15, you will have to show:
Under the Lanham Act’s Section 15, you can claim incontestability when:
Again, while this is not a required filing, it is one that will be well worth investing in.
Are There Any Other Trademark Renewal Filings?
Yes. Remember that a trademark can last forever so long as it is being used in commerce. Beyond the Sections 8 and 15 discussed above, you will also file a Section 9 – Renewal within your 9th – 10th year along with another Section 8 – Continued Use filing. Then you file a renewal every ten years thereafter for as long as you continue to use the mark in commerce.
Section 9 filing fees are $300 per class of services or goods covered by the trademark. As such, the combined Section 8 and 9 filing fees are $400 per class.
What Happens After I File a Trademark Section 8, 9 or 15?
After these filings are made, you will receive either a Notice of Acceptance or Renewal or an Office Action within weeks after filing Section 8. If you get an Office action, you have six months to respond. If you don’t respond, the trademark registration will be cancelled. You can always easily check the status of any trademark registration by using the USPTO’s Trademark Status & Document Retrieval System.
Trademark filings can be tricky and if you are not familiar with them they can also be time consuming. Whenever in doubt, seek out some solid legal advice before jumping in.
CONTACT US ANYTIME FOR A FREE PHONE CONSULT!