Definitions for Maintaining a Trademark Registration

 

Declaration of Use and/or Excusable Nonuse under §8
A Section 8 declaration is a signed statement filed by the trademark owner that either: (1) the trademark is in use in commerce with the goods or services listed in the registration; or (2) the trademark is not in use in commerce due to special circumstances that excuse nonuse.

You must include the following information in a Section 8 declaration:

  • The registration number.
  • The name and address of the current owner.
  • The filing fee of $125 (if filed using the Trademark Electronic Application System (TEAS)) or $225 (if filed on paper) per class of goods or services in the registration.
  • If the trademark is in use:​
    • a statement that the trademark is in use in commerce.
    • a list of the goods or services in connection with which the trademark is in use.
    • a specimen (example of how the trademark is used).  Examples of acceptable specimens are tags/labels for goods, and advertisements for services.
       
  • If the trademark is not in use:
    • a list of the goods or services with which the trademark is not in use in commerce.
    • the date of the last use of the trademark in commerce.
    • the approximate date when use in commerce is expected to resume.
    • details regarding the reason for nonuse.
    • specific steps being taken to resume use.
  • A signed and dated statement of the accuracy of the information provided.


Declaration of Use and/or Excusable Nonuse and an Application for Renewal under §§8 and 9 
Every ten years you must submit a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 (combined filing).  The USPTO forms combine the Section 8 declaration with the Section 9 renewal application.  A Section 9 renewal application is a written request to keep your registration active.

You must include the following information in a Section 8 and 9 combined filing:

  • The registration number.
  • The name and address of the current owner.
  • The filing fee of $425 (if filed using the Trademark Electronic Application System (TEAS)) or $725 (if filed on paper) per class of goods or services in the registration.
     
  • If the trademark is in use:
    • a statement that the trademark is in use in commerce.
    • a list of the goods or services in connection with which the trademark is in use.
    • one specimen (example of how the trademark is used).  Examples of acceptable specimens are tags/labels for goods, and advertisements for services.
       
  • If the trademark is not in use:
    • a list of the goods or services with which the trademark is not in use in commerce.
    • the date of the last use of the trademark in commerce.
    • the approximate date when use in commerce is expected to resume.
    • details regarding the reason for nonuse.
    • specific steps being taken to resume use.
  • A written request to renew the registration that is signed and dated and confirms the accuracy of the information provided.


Grace Period
The USPTO will still accept Section 8 declarations, Section 71 declarations and Section 8 and 9 combined filings for up to six months after the due date during a period called the grace period.  Section 8 or 71 declarations submitted during the grace period must include an additional fee of $100 (if filed using the Trademark Electronic Application System (TEAS)) or $200 (if filed on paper) per class of goods or services.  Section 8 and 9 combined filings submitted during the grace period muse include an additional fee of $200 (if filed using TEAS) or $400 (if filed on paper) per class of goods or services.


Declaration of Incontestability under §15 
A Section 15 declaration of incontestability is a signed statement that the owner claims incontestable rights in a trademark and continuous use of the trademark for five years.  Following the filing of a Section 15 declaration, the trademark becomes incontestable. Once a trademark is incontestable, various aspects of the registration cannot be challenged by third parties (such as the trademark’s validity).  This declaration can only be filed for trademarks that are registered on the Principal Register. 

You must include the following information in a Section 15 declaration:

  • The registration number and the date of registration.
  • The filing fee of $200 (if filed using the Trademark Electronic Application System (TEAS)) or $300 (if filed on paper) per class of goods or services.
  • A statement that:

(a)  the trademark has been in continuous use in commerce for a period of five years after the date of registration (or the date of publication under 15 U.S.C. §1062(c)) with the goods or services listed in the registration and is still in use in commerce.

(b)  there has been no final legal decision adverse to the owner’s claim of ownership of the trademark, or to the owner’s right to register the trademark or to keep the registration.

(c)  there is no pending legal proceeding involving the trademark in the USPTO or in a court of law.

  • A signed and dated statement of the accuracy of the information provided.


Declaration of Use and/or Excusable Nonuse under §71 
A Section 71 declaration is a signed statement filed with the USPTO by the owner of registered extension of protection under the Madrid Protocol (Madrid registration) that either (1) the trademark is in use in commerce or (2) the trademark is not in use in commerce due to special circumstances that excuse use.  Under United States trademark law, “use in commerce” means commerce that can be lawfully regulated and controlled by the United States Congress.  Using the mark solely in a foreign country does not constitute using the mark in commerce that Congress can regulate.

You must include the following information in a Section 71 declaration:

  • The registration number.
  • The name and address of the current owner.
  • The filing fee of $125 (if filed using the Trademark Electronic Application System (TEAS)) or $225 (if filed on paper) per class of goods or services in the registration.
  • If the trademark is in use:
    • statement that the trademark is in use in commerce.
    • list of the goods or services in connection with which the trademark is in use.
    • one specimen (example of how the trademark is used) of goods or services.  Examples of acceptable specimens are tags/labels for goods and advertisements for services.​
       
  • If the trademark is not in use:
    • a list of the goods or services with which the trademark is not in use in commerce.
    • the date of the last use of the trademark in commerce.
    • the approximate date when use in commerce is expected to resume.
    • details regarding the reason for nonuse.
    • specific steps being taken to resume use.
  • A signed and dated statement of the accuracy of the information provided.


Office Actions 
Office actions are official letters from a trademark examining attorney at the USPTO that provides information about the application after it has been reviewed.  The letters set forth the legal status of a trademark application and usually inform the applicant of any outstanding requirements necessary for registration or identify any problems with the application.

We cannot predict how many Office actions you will receive because the number depends on the complexity of the legal issues in your application and whether you respond fully to any issues raised by the examining attorney.  However, if an examining attorney issues a final Office action you must either fully comply with all the issues raised in the letter or appeal the outstanding issues to the Trademark Trial and Appeal Board.