Details Section 8 declaration, Declaration of incontestability for USA trademark
Your trademark has been registered in the USPTO trademark register in the US. Therefore, it must now be decided between the 5th and 6th year after registration whether the declarations according to § 8 and § 15 of the US Trademark Act are to be made:
Proof of Use (§ 8)
In accordance with Section 8 of the US Trademark Law, the use of the trademark in the US must be demonstrated between the fifth and sixth year after registration of a trademark, otherwise the trademark will be irrevocably canceled. In addition to the payment of the relevant fees, it is also necessary to provide a declaration confirming the use of a declaration confirming its use in the USA. In addition, a so-called specimen (proof of use) must be submitted to the Office at least for each class. This may be, for example, a photograph, a picture, etc. showing the use of the mark on one of the goods or in connection with one of the services of the respective class. The Office may, according to its own decision, request the submission of further use documents from the market owner. Even if only one proof of use has to be submitted per class, it is of the utmost importance to name only those goods or services for which the trade mark is actually used in the USA. It is true that, in this case, all other goods or services will be abolished, incorrect information, on the other hand, will entail much more serious consequences, including the loss of the entire category of goods or services for which the wrong statements have been made including the goods and services of the goods in question Class for which use is actually available. After placing an order, you therefore inform us in a timely manner for which goods or services the brand is currently used in the USA and for which classes the declaration according to § 8 of the US trademark act is to be declared. In addition, please allow us to provide at least one proof of usage within the stated period for each class used. If you have not used the trademark for certain goods or services, please notify us as soon as possible of this circumstance as well as the reasons for the non-use. If there are special reasons for the non-use, the loss of the trademark right may be prevented.
Optional: Declaration of incontestability (§ 15)
Under US trade mark law, the owner of a registered trade mark may declare, for the first time after five years from the date of registration, that his trade mark becomes "incontestable". In this case, "incontestability" § 15 US Trademark Act, is an advantage in the defense against certain attacks by third parties on the mark, such as the assertion that the mark is descriptive for the goods and services in question or it is only one in the USA not protectable family name. In order to be able to make the declaration pursuant to § 15, the following prerequisites must be met:
- there should be no legally binding decision which would deny the proprietor of the trade mark precisely that ownership,
- no such procedure may be pending
- the mark must not have become a generic term
- the mark must have been used for all products and / or services which it has protected in the past five years.
The latter is the essential condition and it must be ensured that the use of the trade mark for all goods / services during the last five years can also be proved in case of doubt. Otherwise, the declaration should be waived at the present time, and a later date should be awaited, at which the conditions are readily met. If the abovementioned conditions are met, the declaration may be submitted together with the declaration required by Article 8 of the US Trademark Law to preserve the trademark protection anyway.