Keeping A Trademark From Going Abandoned

Trademark registration can continue indefinitely if the registration is continually renewed and the proper affidavits of use filed. The renewal rates for trademarks are fairly stable, in any given year recently they are about 28%.

When no §8 affidavit or §9 renewal is filed before the end of the six-month grace period, (see 15 U.S.C. §§ 1058 and 1059), the USPTO's practice is to wait an additional three months after the grace period expires before updating its records to show the registration as cancelled or expired. Land O’Lakes v. Hugunin, 88 U.S.P.Q.2d 1957 (TTAB 2008).

Not Just Patents files affidavits of use for a low fee, see 224StatmentOfUse.com for more information.



TMEP 1604 Affidavit of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act

Trademark Manual of Examining Procedure (TMEP) January 2015

TMEP 1604    Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act

15 U.S.C. §1058  Duration, affidavits and fees.


(a) Time Periods for Required Affidavits.  Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this Act or the date of the publication under section 12(c).

(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.

(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

(b) Requirements for Affidavit.  The affidavit referred to in subsection (a) shall—

(1)(A) state that the mark is in use in commerce;

(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;

(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and

(D) be accompanied by the fee prescribed by the Director; or

(2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;

(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and

(C) be accompanied by the fee prescribed by the Director.

(c) Deficient Affidavit.  If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.

(d) Notice of Requirement.  Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under section 12(c).

(e) Notification of Acceptance or Refusal.  The Director shall notify any owner who files any affidavit required by this section of the Director's acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.

(f) Designation of Resident for Service of Process and Notices.  If the owner is not domiciled in the United States, the owner may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the owner does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

Under 15 U.S.C. §1058, the owner of a registration must periodically file affidavits or declarations of use or excusable nonuse of the mark.  The purpose of the affidavit or declaration of use or excusable nonuse (“§8 affidavit or declaration”) is to remove marks that are no longer being used in commerce from the register.


TMEP 1604 .01   Registrations to Which §8 Affidavit or Declaration Pertains

Registered Extensions of Protection


Section 8 of the Trademark Act applies only to registrations resulting from applications under §1 or §44 of the Trademark Act.  However, §71 of the Act, 15 U.S.C. §1141k, requires periodic affidavits or declarations of use or excusable nonuse in registered extensions of protection of international registrations to the United States.  See TMEP §§1613–1613.19 for further information about §71 affidavits or declarations.


Six-Year Section 8 Affidavits or Declarations for Registrations Resulting From Applications Under §1 or §44


Under §§8(a)(1) and (a)(3) of the Trademark Act, an affidavit or declaration under §8 of the Act is required during the sixth year after the date of registration for registrations issued on either the Principal Register or the Supplemental Register or the date of publication under §12(c) for registrations issued under the Acts of 1881 and 1905 for which the owner has claimed the benefits of the Act of 1946 under §12(c), or within the six-month grace period after expiration of the sixth year.  15 U.S.C. §§1058(a)(1) and (a)(3); TMEP §1603.03 .


Ten-Year Section 8 Affidavits or Declarations Required for All Registrations Resulting From Applications Under §1 or §44


Section 8(a)(2) of the Trademark Act requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration, or within the six-month grace period after the end of the ten-year period.  However, the provisions of §8(a)(2) of the Act, requiring the filing of a §8 affidavit or declaration at the end of each successive ten-year period after registration, do not apply to a registration issued or renewed for a twenty-year term until a renewal application is due.   See TMEP §1604.04(b) .


TMEP 1604 .02   Notice of When Affidavit or Declaration Is Due

A statement noting the requirement for filing the affidavits or declarations of use or excusable nonuse under §8 of the Act is included on each certificate of registration as originally issued.  15 U.S.C. §1058(d).  This is the only notice that the USPTO provides regarding this requirement.  The owner must file the affidavit or declaration within the time periods required by §8 of the Act regardless of whether the owner receives the notice.  37 C.F.R. §2.162.  The USPTO does not provide any reminder of the due date(s) of the affidavits or declarations.


TMEP 1604 .03   Form for Filing §8 Affidavit or Declaration

To expedite processing, it is recommended that the owner file the §8 affidavit or declaration through the Trademark Electronic Application System (“TEAS”).  See TMEP §301 for more information about electronic filing.  Forms for filing affidavits or declarations of use or excusable nonuse under §8, combined affidavits or declarations of use and incontestability under §§8 and 15 ( see TMEP §1605.05 ), and §8 affidavits or declarations combined with renewal applications under §9 of the Act ( see TMEP §1604.19 ) are available through TEAS at http://www.uspto.gov.  Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand delivered to the USPTO.


See TMEP §1604.04 regarding the deadline for filing the affidavit or declaration, and TMEP §1604.05 regarding the requirements for filing the affidavit or declaration.


TMEP 1604 .04   Time for Filing §8 Affidavit or Declaration

37 C.F.R. §2.160(a)


During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled:


(1)

(i) For registrations issued under the Trademark Act of 1946, on or after the fifth anniversary and no later than the sixth anniversary after the date of registration; or

(ii) For registrations issued under prior Acts, on or after the fifth anniversary and no later than the sixth anniversary after the date of publication under section 12(c) of the Act; and

(2) For all registrations, within the year before the end of every ten-year period after the date of registration.

(3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (a)(1) and (a)(2) of this section, with payment of the grace period surcharge per class required by section 8(a)(3) of the Act and § 2.6.

Under §§8(a)(1) and (a)(2) of the Trademark Act, the owner of the registration must file an affidavit or declaration of use or excusable nonuse:


(1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration or date of publication under §12(c) of the Act; and

(2) within the year before the end of every ten-year period after the date of registration.  37 C.F.R. §2.160(a).

See TMEP §1604.04(b) regarding registrations in twenty-year terms.


Under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3), the owner may file the affidavit or declaration within a grace period of six months after the expiration of the deadlines set forth in §§8(a)(1) and (a)(2) of the Act, 15 U.S.C. §§1058(a)(1) and (a)(2), with an additional grace period surcharge.


Affidavits or declarations may be filed on the registration anniversary dates at the end of the fifth and sixth years, or at the end of the ninth and tenth years.


Example :  For a registration issued on Nov. 1, 2005, a six-year affidavit or declaration may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.


A §8 affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  37 C.F.R. §2.195(a)(2).


Section 8 affidavits or declarations filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197.  See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.


If the owner of the registration does not file an affidavit or declaration of use or excusable nonuse before the end of the grace period, the registration will be cancelled.  37 C.F.R. §§2.160(a) and 2.164(b).  See TMEP §1604.07 regarding who may file a §8 affidavit or declaration.


The Director has no authority to waive the deadline for filing a proper affidavit or declaration of use of a registered mark under 15 U.S.C. §1058.   See Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks. , 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent.  Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case.”); In re Mother Tucker's Food Experience (Canada) Inc ., 925 F.2d 1402, 1405, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991) (“It was not within the Commissioner's discretionary authority to waive this requirement.”); cf. In re Holland American Wafer Co ., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.”).


.04(a)   Premature Filing of §8 Affidavit or Declaration

The affidavit or declaration cannot be filed before the periods specified in §8(a) of the Act.  The purpose of the affidavit or declaration is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit or declaration filed before that period.   Cf. In re Holland American Wafer Co ., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).  If an affidavit or declaration is filed before the period specified in §§8(a)(1) and (a)(2) of the Act, the USPTO will issue a notice advising the owner:  (1) that the affidavit or declaration is premature; (2) of the appropriate time for filing the affidavit or declaration; (3) that the fee(s) submitted will be held; and (4) that the owner may file a new affidavit or declaration at the appropriate time or may request a refund at any time.  There is no deficiency surcharge.  The prematurely filed affidavit or declaration will remain in the record for informational purposes only.  The owner of the registration must file a newly executed affidavit or declaration before the end of the grace period, or the registration will be cancelled and the USPTO will refund the fees.


See TMEP §1604.08(b) regarding the date of execution of a §8 affidavit or declaration.


TMEP 1604 .04(b)     Registrations in Twenty-Year Terms

As noted in TMEP §1604.04 , §8(a)(2) of the Trademark Act, 15 U.S.C. §1058(a)(2), requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration for all registrations.  However, this requirement does not apply to a registration issued or renewed for a twenty-year term (i.e., a registration issued or renewed before November 16, 1989) until a renewal application is due.   See notice at 1228 TMOG 187 , 189 (Nov. 30, 1999).


Example :  If a registration was issued or renewed on November 15, 1989, no §8(a)(2) affidavit or declaration is due between November 15, 1998 and November 15, 1999.  Section 8(a)(2) of the Act does not apply until the renewal application is due, i.e., between November 15, 2008 and November 15, 2009.


TMEP 1604 .05     Requirements for §8 Affidavit or Declaration

37 C.F.R. §2.161  Requirements for a complete affidavit or declaration of continued use or excusable nonuse


A complete affidavit or declaration under section 8 of the Act must:


(a) Be filed by the owner within the period set forth in § 2.160(a);

(b) Include a statement that is signed and verified (sworn to) or supported by a declaration under § 2.20 by a person properly authorized to sign on behalf of the owner under § 2.193(e)(1), attesting to the use or excusable nonuse of the mark within the period set forth in section 8 of the Act.  The verified statement must be executed on or after the beginning of the filing period specified in § 2.160(a).

(c) Include the registration number;

(d)(1) Include the fee required by § 2.6 for each class of goods or services that the affidavit or declaration covers;

(2) If the affidavit or declaration is filed during the grace period under section 8(a)(3) of the Act, include the grace period surcharge per class required by § 2.6;

(3) If at least one fee is submitted for a multi-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  Additional fee(s) may be submitted if the requirements of § 2.164 are met.  If the required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class;

(e)(1) Specify the goods or services for which the mark is in use in commerce, and/or the goods or services for which excusable nonuse is claimed under § 2.161(f)(2);

(2) If the affidavit or declaration covers less than all the goods or services, or less than all the classes in the registration, specify the goods or services being deleted from the registration;

(f)(1) State that the registered mark is in use in commerce on or in connection with the goods or services in the registration; or

(2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark;

(g) Include one specimen showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed under § 2.161(f)(2). When requested by the Office, additional specimens must be provided.  The specimen must:

(1)  Show the mark as actually used on or in connection with the goods or in the sale or advertising of the services.  A photocopy or other reproduction of the specimen showing the mark as actually used is acceptable.  However, a photocopy that merely reproduces the registration certificate is not a proper specimen;

(2) Be flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long.  If a specimen exceeds these size requirements (a “bulky specimen”), the Office will create a facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put it in the record.  In the absence of non-bulky alternatives, the Office may accept an audio or video cassette tape recording, CD-ROM, or a specimen in another appropriate medium.

(3) Be a digitized image in .jpg or .pdf format, if transmitted through TEAS.

(h) The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens:

(1) As may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act; or

(2) For the Office to assess the accuracy and integrity of the register.

(3) The provisions of paragraph (h)(2) of this section will no longer be applied after June 21, 2014.


TMEP 1604 .06   Fees for §8 Affidavit or Declaration

TMEP 1604 .06(a)   Filing Fee for Affidavit or Declaration

Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(d)(1), an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §2.6 for each class of goods or services that the affidavit or declaration covers.  See TMEP §§ 1401.02 , 1401.04 et seq., and 1601.06 regarding use of international classification or prior United States classification to calculate fees due.


TMEP 1604 .06(b)   Grace Period Surcharge and Deficiency Surcharge

If the affidavit or declaration is filed during the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3), it must include the grace period surcharge per class required by 37 C.F.R. §2.6.


Section 8(c) of the Trademark Act, 15 U.S.C. §1058(c), requires a “deficiency surcharge” for correcting deficiencies in the affidavit or declaration after expiration of the deadlines specified in §8.  See TMEP §§1604.17 et seq. regarding the deadlines and surcharge for correcting deficiencies.


Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration.  Similarly, only a single deficiency surcharge is required to correct several deficiencies within one §8 affidavit or declaration, or one combined filing under §§8 and 9.  See TMEP §1604.19 regarding combined filings under §§8 and 9.


The grace period surcharge applies only where no filing was made during the sixth year after the date of registration (or date of publication under §12(c) of the Act), or within the year before the end of any ten-year period after the date of registration.  An owner who files within these periods, but corrects a deficiency after these periods have expired, will be subject to the deficiency surcharge only.  On the other hand, someone who files during the grace period and cures deficiencies after expiration of the grace period will be subject to both the grace period surcharge (for the ability to file the affidavit during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the end of the grace period).  H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).


TMEP 1604 .06(c)   Processing Affidavit or Declaration Filed with Insufficient Fees

An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is deficient.  Fee deficiencies may be cured before expiration of the deadlines set forth in §8 of the Act, 15 U.S.C. §1058, without payment of a deficiency surcharge, or after expiration of the deadlines set forth in §8 of the Act with the deficiency surcharge required by §8(c) of the Act.  See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.


If the affidavit or declaration was filed without sufficient fee(s), but the affidavit or declaration included an authorization to charge deficient fees to a USPTO deposit account (37 C.F.R. §2.208), the required fee(s) (and grace period surcharge, where applicable) will be charged to the deposit account.  If the deposit account authorization was included with the affidavit or declaration as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.


An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.


If a check submitted as payment of a filing fee for an affidavit or declaration of use or excusable nonuse is returned unpaid, or an electronic funds transfer (“EFT”) or credit card payment is refused or charged back by a financial institution, this is regarded as a deficiency.  In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused.  37 C.F.R. §2.6(b)(12).  See TMEP §405.06 for additional information.


If at least one fee is submitted for a multiple-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue an Office action requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  If the owner does not submit the required fee(s) or specify the class(es) to which the original fee(s) should be applied, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid class(es).  37 C.F.R. §2.161(d)(3).  See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §8 affidavit or declaration.


TMEP 1604 .07   Ownership and Who May File §8 Affidavit or Declaration

TMEP 1604 .07(a)   Affidavit or Declaration Must Be Filed by Owner

The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration.  Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, 15 U.S.C. §1058(a), (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines.  37 C.F.R. §§2.160(a) and 2.161(a).


If it is unclear whether the party who filed the affidavit or declaration is the present owner, the Post Registration staff will issue an Office action requiring the party to establish its ownership.  If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, the owner may file evidence to establish ownership, even if the filing period set forth in §8 of the Act has expired.  There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.   See TMEP §1604.07(b) .


If the affidavit or declaration was not filed in the name of the owner of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true owner may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §2.6, and, if applicable, a specimen of use for each class.  If a new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration.  If a correction is submitted, the owner must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner.  37 C.F.R. §2.193(e)(1); TMEP §1604.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §2.161(b).


If the affidavit or declaration was not filed in the name of the owner of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time.  15 U.S.C. §1058(c).  The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected.  The true owner may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge.  37 C.F.R. §2.6(a)(20).  If a correction is submitted, the owner must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner.  37 C.F.R. §2.193(e)(1); TMEP §1604.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §2.161(b).


See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.


TMEP 1604 .07(b)     Establishing Ownership

When the affidavit or declaration is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit or declaration unless there is a clear chain of title from the original owner to the party who filed the affidavit or declaration.  37 C.F.R. §3.73(b); TMEP §502.01 .


When the affidavit or declaration is filed, the Post Registration staff will check the records of the Assignment Recordation Branch of the USPTO, available at http://assignments.uspto.gov/assignments .  If the records of the Assignment Recordation Branch show a clear chain of title in the party who filed the affidavit or declaration, no inquiry will be issued.  The Post Registration staff will enter the change of ownership into the automated records of the Trademark Operation, if necessary.


If the records of the Assignment Recordation Branch do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration.  To establish ownership, the party must:  (1) record documents in the Assignment Recordation Branch of the USPTO that show each change of ownership, and include a statement in the response to the Office action that the documents have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit or declaration.  37 C.F.R. §3.73(b)(1); TMEP §502.01 .


“Documentary evidence of a chain of title from the original owner to the assignee” (37 C.F.R. §3.73(b)(1)(i)) normally consists of the same type of documents that would be recorded in the Assignment Recordation Branch, e.g., assignment documents, certificates of merger, or certificates of change of name.  In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.


The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired.  If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.


See TMEP §1604.07(a) regarding an affidavit or declaration filed by a party who was not the owner of the registration at the time of filing.


TMEP 1604 .07(c)   Acceptance Notice Issued in Name of Owner of Record

The notification of acceptance of a §8 affidavit or declaration is issued in the name of the owner of record, as shown in the Trademark database.


When a party other than the original owner files a §8 affidavit or declaration, the USPTO will accept the affidavit or declaration if the new owner submits documentary evidence of the chain of title ( see TMEP §1604.07(b) ), even if the new owner does not record the documents of ownership in the Assignment Recordation Branch.  37 C.F.R. §3.73.  However, the USPTO will not issue the notice of acceptance of the §8 affidavit or declaration in the name of the new owner unless the new owner:  (1) records the appropriate document in the Assignment Recordation Branch; and (2) notifies the Post Registration staff that the document has been recorded.  37 C.F.R. §3.85.


See TMEP §§504 et seq . regarding the circumstances in which the “Ownership” field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Post Registration staff that the document has been recorded.   See also TMEP §505.02 regarding requests to update ownership information after registration, TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, TMEP §502.01 regarding establishing ownership of a registration, and TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.


TMEP 1604 .07(d)   Changes of Legal Entity

The procedures for establishing ownership, as discussed in TMEP §1604.07(b) , also apply to changes of name and changes of legal entity.  See TMEP §1604.07(e) regarding changes of name.


A change in the state of incorporation is a change of legal entity, creating a new party.


The death of a partner, or other change in the membership of a partnership, creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant state law permits this.


A merger of companies into a new company normally constitutes a change of legal entity.


Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present owner.  If there is a court order, a copy of the order should be submitted.


TMEP 1604 .07(e)   Changes of Name

A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §8 affidavit or declaration.  Therefore, if the owner records a change of name with the Assignment Recordation Branch and subsequently files the §8 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.  


However, if it is unclear from the records of the Assignment Recordation Branch whether the party who filed the affidavit or declaration is the owner of record, the owner must either record evidence of the change of name in the Assignment Recordation Branch or submit proof of the change of name.   See 37 C.F.R. §3.73(b) and TMEP §1604.07(b) .  For a corporation, this is done by recording or submitting a certificate of change of name issued by the Secretary of State (or other authorized body) of the state of incorporation.


See TMEP §1604.07(c) regarding issuance of the notice of acceptance of the affidavit or declaration in the name of the new owner.


TMEP 1604 .07(f)   Correction of Mistake in Setting Forth the Name of the Owner

If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out, the mistake can be corrected.   In re Atlanta Blue Print Co. , 19 USPQ2d 1078 (Comm’r Pats. 1990).  No deficiency surcharge is required in this situation.


See TMEP §1604.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.


See TMEP §1201.02(c) for examples of correctable and non-correctable errors.


TMEP 1604 .08   Execution of Affidavit or Declaration

TMEP 1604 .08(a)   Persons Who May Sign Affidavit or Declaration

Under 37 C.F.R. §2.161(b), the §8 affidavit or declaration must include a statement that is signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner.  A “person who is properly authorized to sign on behalf of the owner” is:  (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the owner.  37 C.F.R. §2.193(e)(1).


Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.   See TMEP §611.03(a) .


TMEP 1604 .08(b)   Date of Execution of Affidavit or Declaration

Under 37 C.F.R. §2.161(b), the verified statement must be executed on or after the beginning of the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058, (i.e., on or after the fifth anniversary of the date of registration or publication under §12(c), on or after the beginning of the one-year period before the end of each ten-year period after the date of registration, or during the available grace period).  Because the purpose of the affidavit or declaration is to attest to the use or excusable nonuse of the mark within the time periods specified in §8 of the Act, the affidavit or declaration cannot be executed before these time periods begin.


An affidavit or declaration filed within the period specified in §8 of the Act, but executed before that period, is deficient.  The owner of the registration will be required to submit a substitute or supplemental affidavit or declaration attesting to use in commerce (or excusable nonuse) on or in connection with the goods or services within the relevant period specified in §8 of the Act.


If the prematurely executed §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act.  If the prematurely executed §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.


Date of Execution Omitted .  If the §8 affidavit or declaration is signed, but the date of execution is omitted, the Post Registration staff must require that the owner of the registration set forth the date of execution for the record.  If the affidavit or declaration was executed within the relevant filing period, no deficiency fee is required.  If there are no other outstanding issues, the owner may provide the Post Registration staff with the date by telephone or e-mail and the Post Registration staff must enter a Note to the File in the record.  If the affidavit or declaration was not executed within the relevant filing period, the affidavit or declaration is deficient, and the owner must submit a substitute or supplemental affidavit or declaration, as discussed above.


TMEP 1604 .08(c)   Signature of Electronically Transmitted Affidavit or Declaration

See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through TEAS.


TMEP 1604 .08(d)   Form and Wording of Verification

The format of the verification may be:  (1) the classical form for verifying, which includes an oath (jurat) ( see TMEP §804.01(a) ); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath ( see TMEP §804.01(b) ).


TMEP 1604 .09   Goods and/or Services Set Forth in §8 Affidavit or Declaration

TMEP 1604 .09(a)   Goods and/or Services Must Be Specified or Expressly Incorporated by Reference

Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(e)(1), the affidavit or declaration must specify the goods/services recited in the registration on or in connection with which the mark is in use in commerce, and/or the goods/services for which excusable nonuse is claimed.  See TMEP §1604.10 regarding use in commerce, and TMEP §1604.11 regarding excusable nonuse.  The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., “all goods/services listed in the registration” or “all goods/services listed in the registration except... [specifying the goods/services not covered by the affidavit or declaration]”).  Incorporation by reference is recommended, to avoid inadvertent omissions.


If the owner is alleging use with respect to some of the goods/services and excusable nonuse for other goods/services, the owner must clearly indicate which goods/services are in use and which goods/services are not in use.


TMEP 1604 .09(b)   Deletion of Goods and/or Services

If the owner of the registration intends to delete goods/services from the registration, this should be expressly stated in the affidavit or declaration.  37 C.F.R. §2.161(e)(2). Once an owner expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted. For example, reinsertion is prohibited after the owner submits a TEAS §8 form indicating that certain goods, services, or classes are to be deleted, as the form states that the filing does not cover the deleted goods, services, or classes and that they are to be permanently deleted from the registration.


TMEP 1604 .09(c)   Failure to List All Goods and/or Services Recited in Registration

An affidavit or declaration that fails to list or incorporate by reference all the goods/services recited in the registration, and does not include a statement of intent to delete the omitted goods/services, is deficient.  The Post Registration staff will issue an Office action requiring the party to either file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services or state that the omitted goods/services should be deleted.


If the owner files a substitute or supplemental affidavit or declaration adding the omitted goods/services, the owner must verify that the mark was in use in commerce on or in connection with the goods/services during the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058.  This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the deadline set forth in §8 of the Act with the deficiency surcharge required by §8(c) of the Act.  See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.


If the owner does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services within the period for response to the Office action ( see TMEP §1604.16 ), the omitted goods/services will be deleted from the registration.  


TMEP 1604 .09(d)   New Goods and/or Services Cannot Be Added

Goods and/or services that are not listed in the registration may not be set forth in the §8 affidavit or declaration.


TMEP 1604 .10   Use in Commerce

The §8 affidavit or declaration must state that the mark is in use in commerce on or in connection with the goods and/or services listed in the registration, unless excusable nonuse is claimed.  37 C.F.R. §2.161(f)(1).  See TMEP §1604.11 regarding excusable nonuse.  The use in commerce requirement may be satisfied if the mark has not been abandoned and the use 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. 15 U.S.C. §1127. The §8 affidavit or declaration does not have to specify the type of commerce (e.g., interstate) in which the mark is used.  The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that Congress can regulate, unless there is contradictory evidence in the record.


A §8 affidavit or declaration that does not state that the mark is in use in commerce is deficient.  The owner must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods and/or services listed in the registration during the relevant period specified in §8 of the Trademark Act, 15 U.S.C. §1058, as follows:


(1) If the §8 affidavit or declaration was filed during the sixth year after the date of registration or publication under §12(c) of the Act, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or

(2) If the §8 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services within one year before the end of the ten-year period after the date of registration, if accurate; or

(3) If the §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the grace period, if accurate.

If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act.  If the §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.


While a substitute affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the substitute affidavit or declaration must attest to use within the time period specified in §8 of the Act.  Therefore, if the substitute affidavit or declaration does not state that the mark was in use in commerce on or in connection with the goods/services within the relevant period specified in §8 of the Act, the USPTO will not accept the §8 affidavit or declaration, and the registration will be cancelled.


TMEP 1604 .11   “Excusable Nonuse” of Mark

37 C.F.R. §2.161  (Extract) A complete affidavit or declaration under section 8 of the Act must:


. . .


(f) . . .

(2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]

The purpose of Section 8 of the Trademark Act is to remove from the register those registrations that have become deadwood.   See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969).  It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration.   In re Moorman Mfg. Co., 203 USPQ 712 (Comm’r Pats. 1979).  Thus, if the mark is not in use in commerce but the owner believes the registration should not be cancelled, the owner may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark.  15 U.S.C. §1058(b)(2).   Ex parte Kelley-How-Thomson Co. , 118 USPQ 40 (Comm’r Pats. 1958).


Requirements for Affidavit or Declaration


Since "showing" implies proof, merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient.   In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharm. Prod., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co. , 118 USPQ 106 (Comm’r Pats. 1958).  The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume.  37 C.F.R. §2.161(f)(2).  If the mark was registered under §44(e) and the owner was unable to commence use due to special circumstances beyond the owner’s control that excuse the nonuse, the owner should state that the mark was never in use and give the approximate date when use is expected to begin. Affidavits or declarations should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts to support a finding of excusable nonuse.


Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner's control or "forced by outside causes."   In re Conusa Corp., supra ; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.


The goods/services for which excusable nonuse is claimed must be specified.  See TMEP §§1604.09 et seq. regarding proper specification of the goods and services in a §8 affidavit or declaration.


In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.


Presumption of Abandonment


If the mark has not been in use for three consecutive years and the owner has done nothing to try to resume use of the mark, the Office may presume that the owner has abandoned the mark.  15 U.S.C. §1127.   See Imperial Tobacco Ltd. v. Phillip Morris Inc. , 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).  


Examples of Special Circumstances That Do and Do Not Excuse Nonuse


In addition to a showing that there is no intention to abandon the mark, the owner must show that nonuse is due to special circumstances beyond the owner's control that excuse nonuse.  The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:


Business Decision.   Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.

Decreased Demand.  Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse.  The purpose of the requirement for an affidavit or declaration is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions.   See In re Conusa Corp., supra; In re Parmalat S.p.A., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prod., Inc., supra; Ex parte Denver Chem. Mfg. Co., supra.

Trade Embargo or Other Circumstance Beyond Owner’s Control.  Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.

Sale of a Business.  Temporary nonuse due to the sale of a business might be considered excusable.

Retooling.  The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time.  However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.   In re New Eng. Mutual Life Ins. Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).

Orders on Hand.  If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.

Illness, Fire, and Other Catastrophes.  Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use.  Such nonuse is often excusable.  However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence.   New Eng. Mutual Life Ins., supra.

Negotiations with Distributors.  A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.   In re Parmalat, supra; In re Moorman, supra.

Use in Foreign Country.  Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress.   In re Conusa, supra.

Use of Mark on Different Goods/Services.  Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.   Ex parte Kelley-How-Thomson Co., supra.

Use of Mark in Another Form.  Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.   In re Cont'l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).

Supplementary Evidence or Explanation of Nonuse


If the USPTO determines that the facts set forth do not establish excusable nonuse, the owner may file supplementary evidence or explanation, within the response period set forth in the Office action.  If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.


New Affidavit or Declaration Claiming Use


If there is time remaining in the statutory filing period (including the grace period) and the owner responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.


TMEP 1604 .12   Specimen Showing Current Use of Mark in Commerce

TMEP 1604 .12(a)   Specimen for Each Class Required

A §8 affidavit or declaration must include a specimen or facsimile showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(g). When requested by the USPTO, additional specimens must be provided. 37 C.F.R. §2.161(g).


See TMEP §§904.03 et seq. regarding trademark specimens, and TMEP §§1301.04 et seq . regarding service mark specimens.


The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services listed in the registration.  A specimen that shows use of a materially different mark ( see TMEP §1604.13 ), or shows use of the mark on other goods or services, is unacceptable.  An affidavit or declaration that does not include an acceptable specimen for each class of goods/services is deficient.   See 37 C.F.R. §2.161(g).


If a single specimen supports multiple classes, the owner may so indicate, and the Post Registration staff need not require multiple copies of the specimen.  The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.


Under 37 C.F.R. §2.161(g)(2), the specimen must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long.  If a specimen exceeds these size requirements, the USPTO will create a facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen.  If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff will require a substitute specimen that meets the size requirements of the rule, and an affidavit or declaration verifying the use of the substitute specimen.


If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act.   See 37 C.F.R. §2.164; see also TMEP §1604.12(c) regarding substitute specimens.


The USPTO will not return specimens filed with a §8 affidavit or declaration.


TMEP 1604 .12(b)   Specimens in Electronically Filed Affidavits or Declarations

If the owner files the §8 affidavit or declaration through TEAS, the owner must submit a digitized image in .jpg or .pdf format.  37 C.F.R. §2.161(g)(3).


Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration.  In this situation, the Post Registration staff should first send an e-mail to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again.  If it cannot, the Post Registration staff must ask the owner to submit:  (1) the specimen (or a facsimile of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration.  This statement does not have to be verified.  Alternatively, the owner may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §8 of the Act.  No deficiency surcharge is required.  See TMEP §1604.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.


The Office prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System (“TEAS”).  In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled “Response Forms” at http://www.uspto.gov .


TMEP 1604 .12(c)   Substitute Specimens

If a specimen for any class is omitted or is deficient, the owner must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act, 15 U.S.C. §1058, as follows:


(1) If the §8 affidavit or declaration was filed during the sixth year after the date of registration or publication under §12(c) of the Act, 15 U.S.C. §1062(c), the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or

(2) If the §8 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce within one year before the end of the ten-year period after the date of registration, if accurate; or

(3) If the §8 affidavit or declaration was filed during the grace period, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the grace period, if accurate.

If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act.  If the §8 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.


While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §8 of the Act.  Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §8 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.


See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.


TMEP 1604 .13   Differences in the Mark as Used on the Specimen and the Mark as Registered

The mark to which the §8 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration.  Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change.  A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use.   In re Int’l Nickel Co., Inc. , 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp. , 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967).   See also Torres v. Cantine Torresella S.r.l. , 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland American Wafer Co ., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).


Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark.   See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of “PETER PAN” mark).  Whether the change in a mark as used on the specimen is a material change is a question of fact that the Post Registration staff must determine on a case-by-case basis.


Generally, the standard used to determine whether a change is material under §8 is the same as the standard used to determine whether the mark in a registration may be amended under 15 U.S.C. §1057(e).  If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §8 affidavit or declaration should be accepted.  In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered.  See TMEP §§ 807.14 et seq . and 1609.02(a) for additional information about material alteration.


However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark.  If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §8 requirement.  In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression.   In re DeWitt Int’l Corp. , 21 USPQ2d 1620 (Comm’r Pats. 1991).  If the mark, as used on the §8 specimen, creates a separate impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.


If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the owner may file a substitute specimen.  If the owner files a substitute specimen after expiration of the relevant filing period specified in §8 of the Act, the owner must pay the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c), and 37 C.F.R. §2.6.  See TMEP §1604.12(c) regarding substitute specimens, and 37 C.F.R. §2.164 and TMEP §§1604.17 et seq. regarding the procedures for correcting deficiencies in a §8 affidavit or declaration.


TMEP 1604 .13(a)   Possible Amendment of Mark in Registration

If the USPTO accepts the §8 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registered remains the mark of record.  If the owner wants to change the mark in the registration to agree with the mark currently used, the owner must file a separate request for amendment under §7(e) of the Act, 15 U.S.C. §1057(e), and pay the fee required by 37 C.F.R. §2.6.   See Ex parte Petersen & Pegau Baking Co. , 100 USPQ 20 (Comm’r Pats. 1953).  See TMEP §§1609.02 et seq . regarding amendment of a registered mark under §7(e).


However, amending the mark in a registration under §7(e) to agree with the mark as shown on a §8 specimen is not mandatory.


TMEP 1604 .14   Designation of Domestic Representative by Foreign Owner

Under 15 U.S.C. §1058(f), if the owner of the registration is not domiciled in the United States, the affidavit or declaration may include the name and address of a United States resident upon whom notices or process in proceedings affecting the registration may be served.  The USPTO encourages parties who do not reside in the United States to designate domestic representatives.  To expedite processing, the USPTO recommends that designations of domestic representative be filed through TEAS, at http://www.uspto.gov.   See TMEP §610.


The designation should be signed by the individual owner, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”).  In the case of joint owners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(8); TMEP §611.03(h) .


TMEP 1604 .15   Office Actions and Notices Regarding Affidavit or Declaration

Upon receipt of a §8 affidavit or declaration, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declaration has been filed.


When a §8 affidavit or declaration is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.


If a §8 affidavit or declaration is filed on paper, no acknowledgment of receipt of the affidavit or declaration is sent before it is examined, unless the applicant includes a stamped, self-addressed postcard with the affidavit or declaration ( see TMEP §303.02(c) et seq .).


If, upon examination, the USPTO determines that the affidavit or declaration is acceptable, the USPTO sends a notice of acceptance.  If the affidavit or declaration is not acceptable, the USPTO issues an action stating the reasons for refusal.  37 C.F.R. §2.163.


Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the affidavit or declaration. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §8 affidavit or declaration. 37 C.F.R. §2.161(h)-(h)(1).


The propriety of the original registration is not re-examined in connection with the affidavit or declaration under §8.


TMEP 1604 .16   Response to Office Action

Deadline .  Under 37 C.F.R. §2.163(b), the owner must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) of the Act, whichever is later.  If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3).  If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee.


The owner may file a petition to the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive 37 C.F.R. §2.163(b) so that a late response to an Office action can be accepted.  However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured.   See TMEP §1708 .  The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.163(b).  See TMEP §1712.02(b). The “unintentional delay” standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §8 affidavit or declaration.   TMEP §1714.01(f)(ii)(D) .


Signature .  The response must be signed by a qualified practitioner, or by the owner of the registration or someone with legal authority to bind the owner.  If the owner is represented by a qualified practitioner, the practitioner must sign.  37 C.F.R. §§2.193(e)(2)(i) and 11.18(a).  If the owner is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic owner must sign.  37 C.F.R. §§2.163(b) and 11.14(e); TMEP §611.03(b) .  In the case of joint owners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(2)(ii).  See TMEP §§611.06 et seq . for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq . regarding persons who are qualified to represent others before the USPTO in trademark cases.


When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq .


Correction of Deficiencies .  See TMEP §§1604.17 et seq . for information about the procedures, deadlines, and surcharge for correcting deficiencies.


TMEP 1604 .17   Correction of Deficiencies in §8 Affidavit or Declaration

37 C.F.R. §2.164  Correcting deficiencies in affidavit or declaration.


(a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from the Office, as follows:

(1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of the Act.  If the affidavit or declaration is timely filed within the relevant filing period set forth in section 8(a)(1) or section 8(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge.  Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.

(2) Correcting deficiencies in affidavits or declarations filed during the grace period.  If the affidavit or declaration is filed during the six-month grace period provided by section 8(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.

(b) If the affidavit or declaration is not filed within the time periods set forth in section 8 of the Act, the registration will be cancelled.


TMEP 1604 .17(a)   Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §8(a) of the Act

If the affidavit or declaration is filed during the periods set forth in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c).


Any deficiency must be cured before the end of the relevant filing period set forth in §8 of the Act or within the set period for response to the Office action, whichever is later.  15 U.S.C. §1058(c).  If no response is filed, or if the owner does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3). If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee.   See TMEP §1604.16 .


TMEP 1604 .17(b)   Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period  

If the affidavit or declaration is filed during the six-month grace period under §8(a)(3) of the Act, 15 U.S.C. §1058 (a)(3), deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c).


Deficiencies must be cured within six months of the issuance date of the Office action.  37 C.F.R. §2.163(b).   See TMEP §1604.16 .


TMEP 1604 .17(c)   Defects That Cannot be Cured After Expiration of the Grace Period

The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §8 of the Act (including the grace period).  15 U.S.C. §1058(a).  Untimely filing cannot be cured after expiration of the grace period, even with a deficiency surcharge.   See TMEP §1604.04 regarding the deadline for filing the affidavit or declaration.


TMEP 1604 .18   Petition Under 37 C.F.R. §2.146

The action of the Post Registration staff on a §8 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the owner may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 2.165(b).  A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c).  See TMEP §§1705–1705.09 regarding petition procedure.


TMEP 1604 .18(a)   Response to Examiner’s Refusal Required Before Petition  

A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal.  37 C.F.R. §2.165(a).


If the Post Registration staff continues the refusal to accept the affidavit or declaration, the owner may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date.  See TMEP §1705.04. If the owner does not file a petition within six months, the registration will be cancelled.  37 C.F.R. §2.165(b).


TMEP 1604 .18(b)   Decision on Petition Is Final Action of the USPTO  

The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO.  In the absence of a request for reconsideration ( see TMEP §1604.18(c) ), or an appeal to an appropriate court ( see TMEP §1604.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.


TMEP 1604 .18(c)   Request for Reconsideration of Denial of Petition  

Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition.  A second petition fee must be paid with the request for reconsideration.   See TMEP §1705.08 regarding requests for reconsideration of petition decisions.


TMEP 1604 .18(d)   Appeal to Federal Court

The owner of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition.  15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).


The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition.  15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1).  Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.


Under 37 C.F.R. §2.165(c), a decision on petition is necessary before the owner can file an appeal or commence a civil action in any court.


TMEP 1604 .19 [updated to April 2017 revision]   Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application

A §8 affidavit or declaration and a §9 renewal application may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act.  37 C.F.R. §2.166.


The filing fee for the combined §8 and §9 filing is the sum of the cost of the individual filings.  For example, if filed electronically, the filing fee for the §8 affidavit or declaration is $125 per class, the filing fee for the renewal application is $300 per class, and the filing fee for the combined §8 and §9 document is $425 per class. If filed on paper, the filing fee for the §8 affidavit or declaration is $225 per class, the filing fee for the renewal application is $500 per class, and the filing fee for the combined §8 and §9 document is $725 per class.


If the combined §8 and §9 document is filed during the grace period, the filing fees per class and the grace period surcharge per class must be paid for both the §8 affidavit or declaration and the §9 renewal application.

Example:  The period for filing a §8 affidavit or declaration and §9 renewal application expires on November 19, 2009.


 A combined §8 and §9 document is filed November 21, 2009, during the six-month grace period.  The proper fees are as follows:  (1) filing fee for the §8 affidavit or declaration, per class; (2) grace period surcharge for the §8 affidavit or declaration, per class; (3) filing fee for the §9 renewal application, per class; and (4) grace period surcharge for the §9 renewal application, per class.


Failure to include the proper fees is a deficiency that may require a deficiency surcharge.  See TMEP §§1604.17 et seq. and 1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

Only a single deficiency surcharge is required for curing one or more deficiencies in a combined §8 and §9 filing, even if both the §8 affidavit or declaration and the §9 renewal application are deficient.  Similarly, only a single deficiency surcharge is required to correct several deficiencies within one document.


To expedite processing, it is recommended that the combined §8 and §9 filing be submitted through TEAS, at http://www.uspto.gov.  When the combined filing is submitted electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

Alternatively, the owner of the registration can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.


See TMEP §1605.05 regarding a combined filing under §§8 and 15 of the Act.


®®®®®®® From Not Just Patents® Legal Services: See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

StepsToATrademark.com


Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590    

WP@NJP.legal


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us