Maintaining A Federal Trademark Registration

Maintaining A Federal Trademark Registration
What is a Section 8 Affidavit?
	A Section 8 affidavit is an affidavit of continued use or excusable nonuse under 15 U.S.C. § 1058. During the year preceeding the expiration of the 6th year of registration for the initial term of the registration, and for the year preceeding each ten year period of registration, the trademark owner must state in an affidavit that the mark is in use for the goods or services identified in the registration, present evidence of their use and pay the required fee. If the mark is not in use, then it is necessary to submit the affidavit stating that the mark is not in use along with a statement of the special circumstances which excuse the nonuse and is not due to any intention to abandon the mark along with the payment of the required fee. Failure to file the necessary Section 8 affidavit by the appropriate deadline dates will result in the automatic cancellation of the registration by the Trademark Office.
What is a Section 15 Affidavit?
	A Section 15 affidavit is an affidavit that the mark has been in use continuously for a period of five (5) years subsequent to the registration date, and is in use at the time of filing the affidavit 15 U.S.C. § 1065. In order to file the affidavit, the mark must have been in use continuously for five years, is in use when the affidavit is filed, that there are no adverse decisions pertaining to ownership of the mark, and there are no court or trademark office proceedings regarding the validity of the mark. Upon filing and acceptance of the affidavit. the registered mark can only be attacked and cancelled on the basis that the mark is/was: 1) obtained or maintained fraudulently, 2) not in use and has been abandoned, 3) functional, 4) generic, 5) immoral, deceptive or scandalous; 6) comprises a flag or coat of arms; 7) comprises a name, portriate or signature identifying a particular living person. Essentially, upon acceptance of the affidavit, a third party's claim of prior rights can not be used to challenge the registration thereby making the registration stronger.
What is a Section 9 Affidavit?
	A Section 9 Affidavit consists of the requirement to file a renewal application every ten years in order to keep the registration in full force and effect. 15 U.S.C. § 1059. It requires the filing of an application to renew the registration, submission of a Section 8 Affidavit (use of the mark) and payment of the prescribed fee.
What is a Belated Filing?
	Under United States law, it is now possible to file either a Section 8 (Use) or Section 9 (Renewal) Affidavit during the six (6) month period after the due date for the filing. There are additional governmental charges for the belated filings.

	Send us the information we need, and we will take it from there.