“Use it or lose it”: filing declarations of use with the USPTO
What do best practices and considerations for trade mark maintenance in the US entail?
We explore how trade mark professionals can manage US declarations of use and protect their clients’ IP.
One of the main differences between UK and US trade mark law is the US post-registration requirement for rights owners to prove that they are actively using the mark.
This is achieved through the filing of Section 8: Declaration of Use and/or Excusable Non-use documents at the required points in the trade mark's lifecycle.
Key Trade Mark Maintenance Documents and Their Purpose
The USPTO operates on a “use it or lose it” principle when it comes to trade mark rights, with a view to encouraging rights owners to play an active role in the market and to enforce their registered marks.
Its aim is to avoid the US trade mark register becoming cluttered with marks that owners have no intention of using — or that they have stopped using — that may be stifling genuine competition.
Rights owners who fail to prove they have actively used their marks during their registration period risk having the mark cancelled.
Consequently, making accurate and comprehensive declarations of use is an important part of trade mark maintenance.
Failure to do so could result in having to reapply to register a mark, bringing with it the risk that another company may apply for a similar mark in the interim and oppose your application.
Section 8 Declaration of Use and/or Excusable Non-use
The Section 8 Declaration must be filed between the fifth and sixth year after the initial registration of the mark, then in the tenth year and every subsequent ten years.
The USPTO offers a grace period of six months after each deadline, although increased fees become applicable.
In the declaration, applicants must list the trade mark registration number, the name and address of the current owner, and a sworn statement that the trade mark is still in use.
The declaration must be signed by the rights owner, or a person authorised to act on behalf of the rights owner, such as a US trade mark attorney.
Crucially, rights owners must also provide specimens of use for each mark, in each class that it is registered.
Failure to provide acceptable specimens is the primary reason that Declarations of Use fail to be accepted by the USPTO.
To avoid rejection, it is important to maintain good trade mark hygiene continuously, rather than rushing to gather evidence of use at the last minute when the filing is due.
This involves keeping detailed records of the trade marks used in the course of commerce. The records should include relevant dates, locations, and evidence such as invoices, advertisements, and packaging.
It is important to show evidence of continuous use throughout the five-year period. The USPTO regularly undertakes audits of filings to ensure that the mark is genuinely being used in all classes in which it’s registered, so it’s essential to have evidence available.
Excusable Non-use
If you are filing for Excusable Non-use, your submission should include the list of goods and services for which the mark is not in use, the date of last use, and the approximate date when use is expected to resume.
You should also provide a detailed reason for non-use, and the steps that are being taken to resume use. Sahil cited the example of companies that paused production on certain products during the COVID pandemic. They are still able to maintain marks even if they are not currently in use, as long as a Declaration of Excusable Non-use is filed.
Declaration of Use (Section 8) and Section 15 Claim of Non-contestability
If possible, it is recommended that rights owners file a Claim of Non-contestability simultaneously with the Declaration of Use.
This adds an extra layer of protection at the USPTO. It consists of a statement that there have been no legal decisions adverse to the owners claim of ownership of the trade mark or to the owners right to register and keep the trade mark.
You must also confirm that there are no pending legal proceedings at the USPTO or in any other court.
This is a useful tactic because, once a claim has been filed and accepted, another entity cannot contest the mark at a future date.
An example of this mechanism would be the case of Park and Fly vs. Dollar Park and Fly, where the latter attempted to have the former’s mark cancelled on the basis of its being too descriptive.
However, Park and Fly proved that it had not faced any claims in the first five years of registration, and Dollar Park and Fly’s claim was denied at the federal and Supreme Court.
Section 9 Trade Mark Renewal
The Section 9 Trade Mark renewal submission is filed every ten years and coincides with the second filing of the Section 8 Declaration of Use. The trade mark renewal protects the mark against cancellation. It’s important to note that there is no grace period for renewals. Failure to file results in abandonment and there is no guarantee that a re-application will succeed.
Section 71 Declaration of Use for Filings under the Madrid Protocol
The purpose of this filing is to maintain a registered extension of protection in the US under the Madrid protocol. The first filing must take place between five and six years after the extension of protection was granted and the second must take place between nine and ten years after it was granted. Thereafter, it must be filed every ten years maintain the extension of protection. There is a grace period of six months in which to file declarations of use under section 71.
Further tips for maintenance filings
Successfully maintaining trade mark ownership depends on timely, accurate filings. Make sure you have all the relevant dates in your calendar and prepare your submissions well in advance, so you don’t risk missing the grace periods and having your mark cancelled.
It is essential that your filing is not fraudulent. The USPTO experiences high volumes of fraudulent filings and regularly introduces new policies to combat fraud. If your filing is found to be fraudulent, you may be banned.
The USPTO provides helpful videos covering acceptable specimens of use and common mistakes.
To watch a full webinar on this topic on-demand, visit: CITMA - U.S. declarations of use updat