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section 8 renewal trademark

2020/12/11 15:05

You must also be planning on reusing the trademark commercially after getting these problems fixed. Failure to make sure all information is correct. 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. Trademark Renewal Service order page – services provided by Online Trademark Attorneys. Upload a specimen showing the mark in commercial use. Between the fifth and sixth years after registration, you promptly filed the Combined Section 8 & 15 forms to declare 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. Please note that a Section 8 affidavit is required in order to maintain your 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. The affidavit must include a description of the goods or services bearing the trademark. Section 9 Trademark Renewal. Use the USPTO's Trademark Status & Document Retrieval system to check the status of your registration. 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. The United States government filing fee is $125. I’m experienced US trademark attorney Morris Turek and I have focused my practice of law almost exclusively on trademarks since 2005. If you don't respond, the trademark registration will be cancelled. GST Registration; Professional Tax; PAN Card; TAN Registration; Business Licenses. A six-month grace period for filing the Section 8 exists as long as the required fee is paid. Otherwise, you should file a Declaration of Excusable Nonuse. If you include the grace period, the Renewal would need to be filed by July 21, 2040. Morris E. Turek | (314) 749-4059 | morris@yourtrademarkattorney.com. 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. As you are now well past the grace period, unfortunately, your application can not be revived or re-instated. 1. Trademark maintenance consists of five elements: renewal, cautionary notice, tax, affidavit of use, and proof of renewal of basic registration. To avoid this risk, consult your attorney to make sure all requirements are met before filing your Section 15. 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 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. 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. It confirms your federal trademark has been in continuous use for five years. Requirements for the Declaration of Use are outlined in the Section 8 of the Lanham Act, hence the name. Trademark Maintenance: Everything You Need to Know Trademark Law Resources Types of Trademarks How To Register A Trademark. 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. These can be filed as early as the ninth anniversary date. 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. You must file the first Section 8 and 9 Renewal between the ninth and tenth year of registration. Of note, the ten year renewal requirement is currently perpetual. When this is the case, the non-usage must be temporary. Some registrants have committed fraud when filing a combined Section 8 and 15 declaration, which canceled the registration. Your trademark registration has been abandoned. Post a question or job in the UpCounsel marketplace and make sure you have the legal counsel you need to cover all your bases. 4. Trademark Renewal Forms. 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. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). 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). What legally constitutes "Use in Commerce" for trademark renewal as defined in the Section 8 form submitted during 10 year renewal? If you've continuously used your trademark when the Section 8 filing is due, you will need to file a Declaration of Use. Additional filing dates occur between the ninth and tenth anniversaries and every 10 years after that. You can file a Declaration of Excusable Nonuse for your Section 8 filing if you're having trouble using your trademark. Want High Quality, Transparent, and Affordable Legal Services? No. 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. Trademark Renewal – Combined Section 8 & 9 Filings. The Section 15 filing is an optional statement claiming your incontestable rights. If your goods or services are misidentified in the registration, the registration could be challenged. Our legal professionals make the incorporate job extremely easy and fruitful for our clients in a satisfactory manner. Typically, the Section 15 Affidavit is filed along with the Section 8 Affidavit. You simply lose the benefits of your federal registration. The declaration must also be filed at the time of trademark renewal. Submission of at least one recent specimen of use per classof goods/services listed in your registration (unless you’re claiming excusable nonuse) 4. 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. Many people finish under 15 minutes. It's important to remember that any nonuse is only excusable if the circumstances are temporary. Have more questions? Under section 8 of the Lanham (trademark) Act, you had to file the affidavit between years 5 and 6 from the registration date. Eligibility Criteria for incorporating Section 8 Company 2. A request that your registration be renewed for the goods/services identified in your registration 3. 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. This filing is called a Section 8 declaration of continued use. 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. Service specimens include advertisements, brochures, and websites including the 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. SECTION 8 and 9 AFFIDAVIT AND RENEWAL. As such, the combined Section 8 and 9 filing fees are $400 per class. A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark. The first part of the Section 8 is an affidavit. 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. Execute the declaration as to whether the trademark has been in continuous use from when the application was originally filed. Share it with your network! The requirements for the declaration are set forth in Section 8 of the Lanham Act. Naturally, such loss could be harmful to your business. I look forward to speaking with you soon. The USPTO automatically combines the Section 9 Trademark Renewal with the Section 8 form because they are required at the same time. A Section 8 Trademark Declaration is a statement made to the United States Patent and Trademark Office (USPTO). It will still be protected under state law rules as well as common law. 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. The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. It lets you to ask for the highest level of protection under federal law. You failed to file on time, or within the grace period. I’m experienced US trademark attorney Morris Turek. 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 you get an Office action, you have six months to respond. 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 These could include submitting images of a product with your trademark on it. As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. Fill out this form to engage JPG Legal for the Renewal or Maintenance of your registered U.S. trademark. The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both. You will need to offer your USPTO trademark registration number and proof (also known as a "specimen") of your trademark use. Examples – What Could Happen When You Complete a Section 8 Trademark Declaration vs. If you miss your filing dates and your trademark is cancelled, you must file a new application to re-register the mark. 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. 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. 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. The deadline to file your Section 8 Declaration of Use falls between the fifth and sixth anniversaries of your federal trademark registration. Accordingly, if your trademark registered on June 1, 2010 it must be renewed between June 1, 2019 and June 1, 2020. The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal. Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. Failing to file your Declaration on time will result in the loss of your trademark registration. Nonuse on the basis of a decreased demand for your product does not qualify. 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. 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. Trademark owners, or their trademark lawyer, can file a combines Section 8 and 15 form through TEAS during the first renewal period. 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). The statue gives the trademark owner an additional 6 month grace period to file the affidavit with a fee. 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. For an additional fee, which is now $100, you may file within the six-month grace period after the sixth anniversary date. The Section 8 must also be filed at the same time as the trademark renewal. Excusable scenarios include natural disasters and illness. If these documents aren’t filed by the 20th year of registration (or within the six month grace period), your registration will be canceled. You must also send examples of the trademark's usage. Normally, you will file these documents through the USPTO website's electronic TEAS filing system. But it must be properly renewed. 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. 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 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? You can file your Affidavit of Use and your Renewal at the same time, which is called a Combined Section 8/9 Filing. Follow the filing instructions and enter your registration number. Section 15 is an affidavit claiming incontestable rights to your trademark for specified services or goods. 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. Just fill out the correct form and send photographs of your trademark. 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. At this point in time, your trademark has been registered for a few years now. 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. Hire the top business lawyers and save up to 60% on legal fees. 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. 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. Payment … 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. This affidavit is your sworn oath that the trademark is still being used commercially. 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). 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. Section 8 Affidavit. When to file the renewal papers. What is a Section 8 Trademark Declaration? What are the Requirements for a Trademark Renewal? 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. 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. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). 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. Why is a Section 8 Trademark Declaration Important? (15 United States Code, Section 1058) and explained below. 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. Provide information about who owns the trademark. Was this document helpful? a trademark specimen refusal). If it's been nine years, it's time to renew your registration. 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." Learn More About Trademark Attorney Morris Turek, US Trademark Attorney Morris Turek | 5.0 stars, based on 155 reviews. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. The Section 8 and 9 Renewal requires the following: 1. Change of address forms add an extra $45 fee, and filing within the USPTO's grace period tacks on another $100. Keep in mind that just because a trademark is canceled from missing the deadline doesn't mean your trademark is lost. 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. The Section 8 filing must include … It confirms your federal trademark has been in continuous use for five years. Click here for more information. 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