When Is a Section 8 Declaration of Use Due for Your Trademark?

A U.S. trademark registration is not permanent. It survives only if you file a Section 8 declaration of use on schedule, swearing that the mark is still in use in commerce for the goods and services listed, and backing that up with a specimen. The first one is due in the window between the fifth and sixth anniversaries of your registration date. Then a combined Section 8 declaration and Section 9 renewal is due between the ninth and tenth anniversaries, and every ten years after that. Each window has a six-month grace period with a surcharge, and after the grace period the registration is cancelled with no way to revive it. Our trademark renewal and maintenance practice exists largely because that last sentence surprises people.

The Section 8 declaration of use schedule

Count from the registration date on your certificate, not the filing date and not the date you first used the mark:

• Years 5 to 6: Section 8 declaration of continued use, usually combined with a Section 15 declaration of incontestability.
• Years 9 to 10: combined Section 8 declaration and Section 9 application for renewal.
• Every ten years after that: another combined Section 8 and 9 filing.

Each deadline can be met up to six months late with an additional fee. The USPTO sends courtesy reminders by email to the correspondence address on file, but those reminders go to whoever handled the application, which is often a former employee or a prior law firm. Treat the reminder as a bonus, not a system.

Registrations obtained through the Madrid Protocol under Section 66(a) file a Section 71 declaration instead, on a comparable schedule tied to the U.S. registration and the international registration dates. The substance is the same: prove use or lose the goods.

What the declaration must show

The declaration is a verified statement that the mark is in use in commerce for each good and service listed, filed with the current USPTO fee per class. If the mark is not in use for some items, you delete them before filing. Listing goods you no longer sell is the fastest way to invite a post-registration audit, and a knowingly false claim of use can expose the registration to a fraud challenge later.

Two details cause most rejections. The declaration must be filed by the current owner of the registration; a declaration filed in the name of a predecessor company or a founder who assigned the mark years ago is void, and if the deadline has passed by the time you notice, the registration is gone. And the mark shown in the specimen must match the mark as registered. A refreshed logo that drops an element or changes the wording may not support the old registration.

Specimens the USPTO accepts and rejects

You need one specimen per class, showing the mark in actual use:

• Goods: labels, tags, packaging, or photographs of the product itself bearing the mark, or a web page that shows the mark near the product with a way to order it.
• Services: advertising, brochures, signage or web pages that show the mark used in offering or rendering the services.

Rejected specimens include mock-ups, digitally altered images, printer’s proofs, and web pages that show the mark but no way to buy. Web page specimens must show the URL and the date the page was accessed. Keep a dated file of specimens as a matter of routine, rather than hunting for one in month eleven of the window.

Excusable nonuse

If the mark is temporarily not in use, you can still file a Section 8 declaration claiming excusable nonuse, but only when use stopped for reasons beyond your control: a trade embargo, a natural disaster, a pending regulatory approval, a sole proprietor’s illness. A decision to pause a product, a lack of demand, or a supply chain cost increase is a business choice and does not qualify. The declaration must state when use stopped, why, what you are doing to resume, and roughly when you expect to.

Pairing the filing with Section 15 and preparing for an audit

If the mark has been in continuous use for five consecutive years after registration, file the Section 15 declaration of incontestability in the same submission. It costs an additional fee and gives the registration conclusive status against the most common attacks, which we explain in what a Section 15 declaration gives you.

Be aware that the USPTO randomly audits Section 8 and Section 71 declarations that cover several goods or services and asks for proof of use on additional items. Our post on USPTO post-registration audits covers the response. The short version: list only what you sell, and keep specimens for all of it.

What happens if you miss the deadline

Once the grace period closes, the registration is cancelled or expires. There is no petition to reinstate it, no showing of unintentional delay that helps, and no fee that fixes it. Your only path is a new application, examined from scratch with a new filing date, which means any third party that filed a similar mark in the meantime now sits ahead of you. A registration that was incontestable the day before becomes a brand with common-law rights only.

That is also why renewal deadlines belong in a docket that someone owns, with the grace period calendared separately, and why ownership records need to be kept current. Companies with more than a handful of marks typically run that calendar through our IP portfolio management service. And a registration that lapses in the middle of a dispute hands the other side a gift; our trademark enforcement and TTAB team checks maintenance status before any letter goes out for exactly that reason.

If your registration is approaching its fifth or ninth anniversary, Capitol Law Partners can review each listed good against current use, select specimens and file the Section 8 declaration before the surcharge applies. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our Section 8 and trademark renewal page or schedule a consultation.