As the owner of a registered trademark, you understand that maintaining your registration to preserve the integrity of your intellectual property is a crucial responsibility of that ownership. When your first courtesy reminders from the USPTO begin popping up, they may contain unfamiliar words or phrases—and one of these is likely to be in regards to a “Combined Section 8 & 15 Declaration.” This phrase, put simply, refers to the first renewal filing that is due five years from the anniversary date of your trademark’s registration. Combined Section 8 & 15 Declarations are trademark registration maintenance documents that demonstrate your continued, appropriate use of your trademark in commerce in connection with the goods and services outlined in your registration.
What is the Difference Between Section 8 and Section 15 Declarations?
As the name suggests, the Combined Section 8 & 15 Declaration is the combination of two individual declarations in one filing. Due to the prevalence of filing them together, the USPTO created a form that facilitates the ease of these joint submissions. However, it can still be useful to understand what the two declarations stand for on their own.
Section 8 filings are mandatory for the five-year renewal. Essentially, Section 8 declarations are sworn statements submitted by the trademark owner demonstrating their trademark’s continuous use since the issuance of the registration. Section 8 declarations require the owner to submit a specimen as evidence of the trademark’s use. Without this filing, your trademark will be canceled at the conclusion of its renewal period.
On the other hand, Section 15 filings are a request that can be made alongside the Section 8 filing. In addition to the Section 8 filing requirement, Section 15 declarations also request that the trademark owner indicate that there are no pending proceedings involving the trademark, as well as that there have not been any court decisions affecting the ownership of the mark. While they are not able to be submitted alone, Section 15 declarations are incredibly valuable to the trademark owner as they seek to achieve incontestability for their trademark. Incontestable status denies outside parties from challenging the trademark’s validity with the exception of rare, limited circumstances.
How Do I Submit My Combined Section 8 & 15 Declaration?
The renewal window in which you are able to file a Combined Section 8 & 15 Declaration opens on the five-year anniversary of your trademark’s registration date. Once open, you will have one year from that date to submit the filing. Because there is such a generous window in which the filing can be made, the USPTO has a zero-tolerance policy towards late renewals—if the window is missed, your trademark will be abandoned. In addition to verifying ownership information and submitting a specimen that demonstrates your services or products in use with the trademark, Combined Section 8 & 15 Declarations require the payment of a filing fee to the USPTO. Currently, these fees are $425 per class.
Navigating this complex renewal process is much more easily accomplished with the assistance of trademark counsel. Hiring an attorney to help monitor deadlines, select an acceptable specimen for the Section 8 filing, and achieve incontestable status for your trademark through a Section 15 Declaration is an incredibly worthwhile investment, as a properly-filed renewal greatly reduces your risk of having the mark cancelled by outside party petitions or random USPTO audits. If your first renewal window is coming up or you have any questions regarding a Combined Section 8 & 15 Declaration, please contact an attorney at Gerben Perrott today for a free consultation on the best steps forward to protect your trademark.