When seeking trademark renewal instructions, we ask our clients whether a mark has been in continuous use for 5 years. The answer to this question is very important.
In the United States, trademark registrations have to be renewed for the first time between the 5th and 6th anniversary of their registration date. This requirement is designed to remove abandoned, unused marks from the register.
A “Combined Sections 8 & 15 Declaration” is the document typically filed during this time to confirm the trademark owner’s continued, appropriate use of its trademark in commerce in the United States, in connection with the goods and services covered in its registration.
The Section 8 Declaration is mandatory. It confirms that the trademark is in use in commerce with the goods or services listed in the registration.
The Section 15 Declaration is optional. It is a claim of incontestable rights in a trademark based on continuous use of the trademark in the United States for five years. Following the filing of a Section 15 declaration, various aspects of the registration cannot be challenged by third parties. This declaration can only be filed for trademarks that are registered on the Principal Register, that have been in continuous use for five years, and that aren’t the subject of legal proceedings.
Filing a Section 15 Declaration confers a number of benefits. Importantly, the registration becomes conclusive evidence of the mark’s validity, ownership, and exclusive right to use. Incontestability also eliminates challenges based on the claim that the mark is merely descriptive or lacks distinctiveness. And incontestability makes it difficult for a third party to claim prior common law rights. There are some exceptions to incontestability: a mark can still be challenged if it becomes generic, if it is abandoned, or if it was obtained by fraud.
The current USPTO filing fee for the Section 15 declaration is $250, and is definitely worth the investment if a mark has been in continuous use.
