Filing Separate Section 8 and Section 15 Declarations
Trademark practitioners commonly submit Combined Section 8 & 15 Affidavits or Declarations for maintaining U.S. trademark registrations. However, there are times when such a combined version of this submission is not proper, which requires an understanding of the different purposes for the “Section 8” and “Section 15” submissions.
Section 8 of the United States Lanham Act [15 U.S.C. §1058] requires that, in order to maintain a U.S. trademark registration in active form, the registrant must submit an affidavit (declaration) demonstrating to the United States Patent & Trademark Office (USPTO) that the trademark is currently in use in commerce, in connection with the associated goods and/or services, at the following times:
(1) within the 1-year period immediately preceding the expiration of 6 years following the date of registration; and
(2) within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
Accordingly, the purpose of each Section 8 submission is to advise the USPTO that the trademark is indeed in use in commerce at that particular time, and such submission is also commonly made in combination with Section 9 [15 U.S.C. §1059] renewals at ten-year intervals following the date of registration.
Section 15 of the United States Lanham Act [15 U.S.C. §1065], on the other hand, provides an optional activity (having no deadline) in connection with registered U.S. trademarks. Specifically, Section 15 provides that the owner’s right to use the registered trademark in connection with the associated goods and/or services shall be deemed “incontestable” where the registered mark has been in continuous use by the registrant for five consecutive years subsequent to the registration date. Once an owner’s right to use a mark is deemed incontestable, the mark cannot later be challenged on the grounds of validity, registration or ownership, typically including such characteristics as descriptiveness, functionality, failure to function as a trademark, or that the mark is primarily merely a surname or geographically misdescriptive. The finding of incontestability is subject to the following four conditions:
(1) there has been no final decision adverse to the owner’s claim of ownership, the right to register the mark or keep it on the register;
(2) there is no proceeding involving the owner’s claim of ownership pending in the USPTO or a court;
(3) an affidavit (declaration) is filed with the USPTO within one year after the expiration of any such five-year period of continuous use setting forth those goods or services with which the mark has been in such five years’ continuous use; and
(4) the mark has not become generic.
The corresponding federal regulation [37 C.F.R. §2.167] confirms that a Section 15 affidavit or declaration can be filed within one year after the expiration of any five-year period of continuous use following registration. In addition, a Section 15 affidavit need only be submitted once during the lifetime of a given registration in order to enjoy its benefits (for the goods and/or services listed in that affidavit).
Oftentimes, especially where the listing of goods and/or services is relatively short, the characteristics of use for the various goods and/or services associated with a given U.S. trademark registration will be the same for all goods and/or services in the registration. However, sometimes, especially where the listing of goods and/or services is relatively long, there may be some goods and/or services for which the trademark is in use, but has not enjoyed five years’ continuous use, during the one-year window (between the fifth and sixth anniversaries of registration) for submitting the first Section 8 declaration.
When this occurs, the proper way to maintain the registration is to submit a Section 8 declaration by itself covering all goods and/or services for which the registered trademark is in current use. Where the mark is not in current use for some of the associated goods and/or services listed in the original registration, those goods and/or services are properly omitted from the Section 8 declaration, causing them to be irretrievably deleted from the registration (and perhaps the subject of a new “intent-to-use” application if future use is contemplated). Then, optionally, at the same time, or at any time thereafter, the registrant can submit a separate Section 15 declaration covering those goods and/or services with the registered mark has been in five years’ continuous use, which would be a subset of those goods and/or services listed in the Section 8 declaration. In addition, where applicable, more than one Section 15 declaration can be submitted for a given registration as the mark becomes used for five years continuously with more of the goods and/or services listed in the Section 8 declaration.
The potential difficulties in confirming the characteristics of trademark use among many goods and services tend to be minimized by selecting shorter listings of goods and services for new U.S. trademark applications, and by selecting terms that more generally describe categories of goods or services rather than listing all goods or services specifically. In addition, the “incontestability” of a given owner’s right to use a registered trademark is not really complete, as a registration can still be subject to cancellation based a number of restrictions (including some from Sections 2 or 14 of the Lanham Act [15 U.S.C. §1052 or 1064]), including that the subject mark is immoral, deceptive or scandalous, has been abandoned, is generic, was registered fraudulently, is disparaging or falsely suggests a connection with another person or mark.