You must file a Section 71 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th)-year anniversary date). Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of … Trademark Act, if the international registration is not renewed, the IB will notify the USPTO that the international registration has expired. A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration. ... (USPTO). Every ten years you must submit a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 combined filing. If fewer than all classes are being surrendered, the automated records will be updated to indicate the specified classes that have been cancelled.Note: If the registration being surrendered is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB), the TTAB will process the surrender in accordance with TBMP §602.02(a). Declaration of Incontestability of a Mark under Section 15. Of course, for a registration covering one product or service for which the … Just before a trademark turns five years old, the USPTO will send a notification to you letting you know that the time has come for the mark to graduate to the next period of its life, through filing what is called a Section 8 affidavit. To prepare and file the electronic form, you must click on “Section 7 Request for Amendment or Correction of Registration Certificate” at the top of this section. After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. The Section 8 and 9 Renewal is only applicable to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). So, in the example above, the second Renewal would need to be filed between January 21, 2039 and January 21, 2040. Section 8: Declaration of Use and/or Excusable Nonuse in Commerce Unless the owner has specifically claimed excusable nonuse, the mark is in use in commerce on or in connection with the goods/services, or to indicate membership in the collective membership organization identified above, as evidenced by the attached specimen(s) showing the mark as used in commerce. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. USPTO Trademarks › National Spinning Co., Inc. › Vybran Application #72089082. This type of filing is a Combined Section 8/9 filing . Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. For more information on who may represent registrants before the USPTO, please see TMEP §§602 et seq. (15 United States Code, Section 1058) and explained below. On the 10th-year anniversary, and every 10 years after that, you should file the Declaration of Use of Mark in Commerce and a Renewal. ... (Section 8 or 71) was recently filed. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. REGISTRATION DATE. Failure to file the Section 8 Declaration will result in cancellation of the registration. Find upcoming programs related to IP policy and international affairs. §1141m. Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States. Preview Section 71 form [PDF] prior to accessing the electronic version through the numbered link, above. If not filed, the registration will become automatically cancelled. Here are the fees you can expect during renewal: Section 8 Declaration: A per-class fee of $225 is required for each Section 8 Declaration of Use. To claim that a mark registered on the Principal Register is now incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. Declaration of Use and Excusable Nonuse under Section 71. After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. A Section 15 Declaration is a statutory request that the trademark be recognized by law as “incontestable”. You must file a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th) anniversary date). File a trademark application and other documents online through TEAS. Additionally, if the trademark meets the requirements of §15 of the Trademark Act, the trademark owner may additionally file an optional Declaration of Incontestability, which makes the trademark immune to challenge. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. Claiming the benefits of the 1946 Act does not affect or alter the terms of the 1905 or 1881 Act registration. So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030. ... Normal due date of the first renewal (combined Section 8-9): March 15, 2023; Last possible date to file the first renewal (combined Section 8-9) (with … Section 9 Renewal: Renewals have a per-class fee of $300. If you include the grace period, the Renewal would need to be filed by July 21, 2040. Registration cancelled because registrant did not file an acceptable declaration under Section 8. Visit the USPTO's Trademark Electronic Application System (TEAS) to file an Affidavit of Use and an Application for Renewal. Surrender of registration for cancellation. Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States. Payment … You should respond to each point raised in the Office Action fully and completely. The USPTO is currently improving our content to better serve you.