Congratulations, your trademark has been registered! Now, what? You only have to renew it every ten years, right?

Actually, there’s a bit more work to be done. After a mark is successfully registered, you, the owner of the mark, must prove that your mark has been used in commerce for a continuous period of five years. Or, if you mark has not been used continuously for five years, you have to provide an explanation as to why. To prove continuous use of your mark, you are required to file what is called a “Section 8 declaration” after the 5th year but before the 6th year after the mark has been registered.

If this declaration isn’t filed, the USPTO can cancel your trademark registration – meaning, you could lose your trademark for good – so it’s important to keep these dates in mind.

In addition, you may want to consider filing a Section 15 declaration at the same time. This isn’t required – and therefore you won’t be penalized if you don’t file it but this provides your trademark with “incontestability” status.

A more detailed explanation of the two declarations are below.

Section 8 Declaration

The purpose of the Section 8 declaration is to confirm that your trademark has been in continuous use for five years, or, if it has not been in continuous use for five years, an explanation as to why. This declaration is required to be filed by Section 8 of the Lantham Act; this means that if you fail to file the Section 8 declaration within the allowed time frame, your mark will eventually be cancelled by the USPTO.

What is required?

To file the Section 8 declaration, the owner of a registered trademark must sign the declaration attesting to continuous use of his mark (or provide an explanation why it has not been in continuous use), submit the government filing fee of $125, and provide specimens of use (i.e., unedited photographs) for each class of goods listed on his application. Any goods listed on the application that are not being sold under the registered mark must be deleted.

When does it have to be filed? Does it have to be filed more than once?

Owners of a registered mark are required to file a Section 8 declaration between the 5th and 6th year, and between the 9th and 10th year, after registration.

Section 15 Declaration

Unlike a Section 8 declaration, a Section 15 declaration is not required. Choosing not to file a Section 15 declaration will not have an adverse effect on your registered mark. However, trademark owners often voluntarily choose to file a Section 15 declaration because it allows the owner to obtain “incontestability” status for his trademark.

What does “incontestability” mean?

When a trademark is “incontestable,” this indicates to the court that there is conclusive evidence regarding the ownership, validity, registered status, and the owner’s exclusive right to use the trademark on the goods/services listed in his application. This means that anyone trying to oppose that trademark must proactively prove that these factors are not true. It may not sound like much, but in litigation, this can save the owner of a trademark the time and expense of proving ownership, validity, registered status, and the owner’s exclusive rights to use his mark. In addition, “incontestability” provides a strong defense against any claim that the mark is or has become “merely descriptive” of the goods and/or services provided by the mark.

However, “incontestability,” confusingly does not mean immunity from challenges. Even “incontestable” trademarks can be challenged on the following grounds:

  1. The trademark has been abandoned
  2. Registration of the trademark was obtained by fraud
  3. The trademark is being used to misrepresent the source of goods (for example, when a mark is selling goods made by another mark but re-branding those goods as its own)
  4. The infringing mark is using an individual’s name as its business name
  5. The infringing mark was used in commerce first
  6. The infringing mark was registered first
  7. The trademark is being used to violate U.S. Anti-Trust laws

As you can see, incontestability isn’t bullet-proof, but it does offer an added layer of protection, particularly against challenges based on descriptiveness, and can save an owner money if a litigation issue around the validity, ownership, registered status, or the owner’s exclusive right to use his mark ever arises.

What is required?

To qualify for “incontestability” status, the owner of a mark must show that:

  1. No final legal decision has been issued against the mark
  2. No litigation is pending regarding the mark
  3. A Section 15 declaration was timely filed, along with the $200 government filing fee
  4. The trademark is not nor has not become generic

However, keep in mind that a Section 15 declaration is not required to be filed; it has no effect on the validity of your trademark.

When does it have to be filed? Does it have to be filed more than once?

A Section 15 declaration only has to be filed once and can be filed at any time after the mark has been in continuous use for a five-year period.

We hope this has been helpful in explaining the purpose of Section 8 and Section 15 declarations. If you have any questions about the above, please feel free to contact the team at Trademark Angel.