A Section 8 filing refers to a specific requirement under United States trademark law, specifically governed by the United States Patent and Trademark Office (USPTO). It is associated with the maintenance and renewal of a registered trademark.
When a trademark is registered with the USPTO, it grants the owner certain exclusive rights to use that mark in connection with the goods or services specified in the registration. To maintain those rights, the trademark owner must periodically file a Section 8 declaration of use or excusable nonuse, along with a Section 9 renewal application.
A Section 8 and/ or Section 9 is a mandatory filing due after year 5, year 10, and every 10 years thereafter to show that you’re still using the trademark. If you don’t file the renewal filings, your mark will be cancelled.
- Section 8 Declaration of Use: This is a sworn statement that the trademark owner submits to the USPTO. It confirms that the trademark is still in use in commerce on all the goods/services listed in the registration. This declaration must be filed between the 5th and 6th year after the date of registration. In other words, it’s due halfway through the initial 10-year period of trademark registration.
- Section 9 Renewal Application: Along with the Section 8 declaration, trademark owners must also file a Section 9 renewal application. This application is filed within one year before the end of every 10-year period after the date of registration. Essentially, it’s required to renew the registration and maintain the trademark’s validity.
Failure to file these required maintenance documents (Section 8 declaration and Section 9 renewal application) can result in the cancellation of the trademark registration.
You also have the option to file a Section 8 (Renewal) and Section 15 (Declaration of Incontestability) together, which saves time and streamlines the process. While a “Declaration of Incontestability,” is an optional filing (also called a “Section 15”). You may file for incontestable status, but you don’t have to. Typically, it’s highly recommended. However, limitations like financial bandwidth or pivots in brand products or services can delay a filing for incontestability. We’ve written more about that here.
It’s important to note that keeping a trademark registered and up-to-date is the responsibility of the trademark owner. The USPTO does not automatically send reminders about these filings, so trademark owners should keep track of the deadlines and file the necessary documents in a timely manner to protect their trademark rights (Pro Tip: We track these for you when you sign up for trademark monitoring services). Additionally, if a trademark is no longer in use on some or all of the goods/services listed, it’s crucial to consult with legal counsel to properly handle the situation, as a mark can be cancelled for failure to keep its goods and services updated.
