Trademark Renewal – Combined Section 8 & 9 Filings
As a trademark owner, it is important to consider the maintenance and renewal of trademark registrations. At this point in time, your trademark has been registered for a few years now. Between the fifth and sixth years after registration, you promptly filed the Combined Section 8 & 15 forms to declare your registration incontestable. However, as the time frame between the 9th and 10th year of your registration approaches, it is time to apply for trademark renewal. Otherwise, your trademark registration will automatically expire after 10 years. In order to maintain ownership of your trademark registration and reap the benefits associated with a registered trademark, you must file Combined Section 8 and 9 Application for Renewal of Trademark Registration.
What is a Combined Section 8 & 9 Application for Renewal of Trademark Registration?
As stated in the title, a Combined Section 8 & 9 is actually two required filings – Section 8 and Section 9 – wrapped into a single filing.
A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark.
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A Section 9 is an application to renew the trademark registration.
What is a Section 9 Trademark Application?
As stated above, a Section 9 is an application to renew the trademark registration.
Section 9 of the Trademark Act, 15 U.S.C. 1059, provides trademark owners with the opportunity to renew their trademark registrations before they expire at the end of the 10-year period from the date of registration. The most important requirement with this Section 9 Renewal (besides the fee) is the Section 8 Declaration of Use or Excusable Nonuse.
As discussed below, the Section 8 amounts to providing the Trademark Office with proof of use. Proof that the owner is still using the trademark with the goods and services listed in the registration. After all, the fundamental trademark right is based on actual use of the mark to identify the source of goods or services.
What is a Section 8 Declaration?
A Section 8 Declaration Is a Sworn Statement of Use or Excusable Nonuse of the Trademark.
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. Under limited circumstances, an owner can still retain the registration without proving use, if the nonuse is excusable.
The Section 8 filing must include a specimen of use. A “specimen” shows how you use your mark in commerce. It could be a label, a tag, or a container if you registered your mark for goods or an advertisement if you registered your mark for services. For more information about the Section 8 Declaration of Use visit Trademark Renewal – What is a Combined Section 8 & 15 Declaration?
When is my next filing due after Trademark Renewal?
Once the renewal application is accepted, the registration remains active for another 10 years. This means your next filing is due between the 19th and 20th year of your registration, and again between the 29th and 30th year, and so on. At these intervals, the owner will again have to file an application for renewal of the trademark registration, or the registration will go abandoned.
The USPTO may not remind you when it is time to renew, so our team at EsquireTrademarks.com is here to help you. Contact us today for a free trademark consultation.