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Registration Renewal & Incontestability: Section 8 & Section 15 Filings

February 2, 2019

February 2, 2019

A trademark registration at the United States Patent and Trademark Office (“USPTO”) can be of infinite duration, however, the registration must be properly renewed. Between the fifth and sixth anniversary of the issuance of the initial registration certificate, the owner must submit a Section 8 declaration of continued use (“Section 8 declaration”) to keep the registration alive and avoid abandonment from non-use. At the time the Section 8 declaration is made the registrant may, if eligible, exercise the option to also file a Section 15 declaration of incontestability (“Section 15 declaration”). Because the time for filing a Section 8 declaration coincides with the time for filing a Section 15 declaration for many Applicants, a combined Sections 8 and 15 declaration form exists.

SECTION 8 DECLARATION OF USE

To avoid cancellation, the owner must file a declaration of use or excusable non-use of the mark under Section 8 of the Lanham Act. See 15 U.S.C. § 1058. The Section 8 filing must take place between the fifth anniversary and the sixth anniversary of the date of registration (or, for an extra fee, may be filed within the six-month grace period following the sixth anniversary date). The Section 8 declaration for trademark renewal requires payment of a government filing fee, and a specimen showing use of the mark.

Use or Excusable Non-Use. The Section 8 declaration must state that the mark is in use in commerce, unless excusable non-use is claimed. The use in commerce requirement may be satisfied if the mark has not been abandoned and meets the statutory definition of “use in commerce,” i.e., bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark. See 15 U.S.C. § 1127.

Section 8 is not intended to cancel registrations due to a temporary interruption in the use of the mark caused by circumstances beyond the registration owner’s control. Therefore, if the mark is not in use in commerce, but the owner believes the registration should not be cancelled, the owner may file a declaration showing that non-use is due to special, excusable circumstances, and is not due to an intention to abandon the mark. See 15 U.S.C. § 1058(b)(2). Sufficient facts must be set forth to clearly demonstrate that non-use is due to some special circumstance beyond the owner’s control, along with information stating when use in commerce stopped and an approximate date when use is expected to resume.

Specimens for Section 8 Declarations. A Section 8 declaration must include a specimen showing how the mark is in use in commerce for each class in the registration. See 15 U.S.C. § 1058(b). Specimen examples for a class of goods may include product 2 packaging photos, product labels, or clothing tags displaying the trademark. Specimens that are likely to be rejected by the USPTO for a class of goods include advertisements, promotional materials, shipping invoices, brochures, business cards, letterhead, printer’s proofs for packaging, and package labels. For a class of services, the specimen may show a website offering the services, or promotional materials or advertisements offering the services that include the service mark. Further information available at https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e636.html.

Importantly, the specimen in renewal filings must show use of essentially the same mark as the mark in the registration, and must be used on or in connection with the goods and/or services listed in the registration. Where the specimen reflects a change in the mark since the registration issued, acceptance of the declaration will depend on the degree of change. A material alteration of the mark will result in refusal of the declaration on the ground that the registered mark is no longer in use.

SECTION 15 DECLARATION OF INCONTESTABILITY

Section 15 of the Lanham Act provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” if the owner of the registration files a declaration stating that the mark has been in continuous use in commerce for a period of five (5) years after the date of registration. See 15 U.S.C. § 1065.

Between the fifth and sixth years after the date of registration (or within a 6-month grace period after the expiration of the sixth year with the payment of an additional fee), an owner may file a Section 15 declaration if: (i) the mark has been registered on the Principal Register; (ii) the mark has been in continuous use in commerce for five (5) years after the date of registration; and (iii) there is not an adverse decision or pending proceedings involving rights to the mark.

While filing a Section 15 declaration of incontestability is not required, the investment to make the registration incontestable is advisable. If the right to use the mark has become incontestable under Section 15, then the registration is conclusive evidence of (i) the validity of the registered mark and its registration; (ii)the registrant’s ownership of the mark; and (iii) the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions. See 15 U.S.C. § 1115(b). When a trademark has been used and registered for five years, the owner has made a substantial investment in the trademark and in the brand. See Park ’N Fly v. Dollar Park and Fly, 469 U.S. 189 (1985) (holding because the “Park ’N Fly” mark had obtained incontestability status, Dollar Park and Fly, Inc. could not claim that its rival’s mark is descriptive and weaker). Having an incontestable trademark registration may save an owner both time and money in the event a dispute arises.

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