What we need from you -- 5-to-6-year papers in a trademark registration
Target audience. This page is written with either of two readers in mind:
If you are not in either of these categories then this page is unlikely to be of interest to you.
Note: this page is meant to be of general interest but should not be taken as a substitute for advice of competent US trademark counsel. Before making any decisions about the issues mentioned here, you should retain competent US trademark counsel who can consider all of the details of your particular situation. Reading this page does not create an attorney-client relationship.
Making sure you know your filing basis. A US trademark registration will have come into existence due to the filing of a US trademark application. The trademark application may have been filed under any of several "filing bases":
Regardless of the particular filing basis that gave rise to the registration, there is a requirement that so-called "Section 8 papers" be timely filed or the US trademark registration will be canceled. The papers cannot be filed sooner than the fifth anniversary of the registration date, and must be filed prior to the sixth anniversary of the registration date. This defines a one-year "filing window" during which the papers must be filed to avoid cancelation.
If the filing basis was Section 1 or Section 44(e) then there is also a six-month "grace period" during which the Section 8 papers may be filed along with a late fee. Importantly, if the filing basis was Section 66(a), there is no six-month grace period. It is thus critically important to keep close track of whether the registration came from a Madrid Protocol trademark application.
When to file the Section 8 papers. Some trademark owners put off filing the Section 8 papers until near the end of the one-year window. This is, of course, unwise, for the simple reason that if the USPTO finds fault with the Section 8 papers there may be little or no remaining time to remedy such a fault. It is extremely desirable to file the Section 8 papers on the day the window opens or shortly thereafter.
Prior to filing the Section 8 papers there are several issues that must be addressed. These include:
These issues will be discussed in turn.
Sorting out any changes in the name of the owner. During the five years that have passed between the grant of the trademark registration and the present day, the owner name may have changed, whether due to assignment or merger or change of name. It is important to obtain an Abstract of Title from the USPTO and to compare the name in the registration certificate with the information in the Abstract of Title. If need be, assignment or other papers affecting title may need to be recorded so as to provide a clear chain of title from the registrant name to the name of the party that now plans to file the Section 8 papers.
Keep in mind that if the registration was granted on an application under Section 66(a) (Madrid Protocol), then any name change papers must be recorded with the International Bureau of WIPO and not with the USPTO. On the other hand, if the registration was granted on an application under Section 1 or Section 44(e), then any name change papers must be recorded with the USPTO and not with WIPO.
Updating the owner's address if it has changed. During the five years that have passed between the grant of the trademark registration and the present day, the owner's address may have changed, whether due to assignment or merger or change of name. It is important to obtain an Abstract of Title from the USPTO and to compare the name in the registration certificate with the information in the Abstract of Title. If need be, assignment or other papers affecting title may need to be recorded so as to provide a clear chain of title from the registrant name to the name of the party that now plans to file the Section 8 papers.
Keep in mind that if the registration was granted on an application under Section 66(a) (Madrid Protocol), then any name change papers must be filed with the International Bureau of WIPO and not with the USPTO. On the other hand, if the registration was granted on an application under Section 1 or Section 44(e), then any name change papers must be filed with the USPTO and not with WIPO.
(If needed) getting a new Power of Attorney in place. It may happen that the registrant wishes to use different trademark counsel for the 5-to-6-year papers than the counsel used for the initial prosecution of the trademark application. Alternatively it may happen that the registrant filed and prosecuted the trademark application pro se but now wishes to use trademark counsel for the 5-to-6-year papers. In either event, it is desirable to have a Power of Attorney from the registrant which may be filed with the USPTO.
(If needed) getting a new Domestic Representative in place. If the registrant is located outside of the United States, it is advantageous to appoint a Domestic Representative within the United States, if this has not already been done. For example the law firm of the attorney named in the Power of Attorney may serve as Domestic Representative.
Figuring out whether all trademark classes are still in use. Under US law, it is extremely important to file the Section 8 Affidavit only with respect to the class or classes for which the mark is actually in use in interstate commerce. If one or more of the classes listed in the registration are not classes for which the mark is actually in use in interstate commerce, it is important to delete such class or classes in the Section 8 papers.
The consequences of getting this wrong are severe. Courts have canceled trademark registrations in which it developed that the registrant signed an Affidavit stating that the mark was still being used in interstate commerce with respect to a trademark class for which the mark was not, in fact, still in use.
Figuring out whether all of the goods/services in each class are still in use. Even within a particular trademark class, it is extremely important that the Section 8 Affidavit be filed onlywith respect to goods/services for which the mark continues to be in use. If one or more items of goods or services within a class are not goods/services for which the mark continues to be in actual use in interstate commerce, it is important to delete the one or more items of goods or services from that class in the Section 8 papers.
What does "interstate commerce" mean? For purposes of US trademark law, "interstate commerce" means either or both of the following:
What does "use" mean? For goods, "use" means actual shipments of the goods in commerce, with the mark upon the goods (for example by means of a package label or printing on the goods). For services, "use" can mean actual offering of the services in commerce, with the mark appearing in the offer of services.
Figuring out what specimens to use. The Section-8 papers are required to include a so-called "specimen of use" for each trademark class that is being renewed. For each trademark class the specimen must show use for one of the items listed in that class.
In the case of a "goods" class, the specimen may show (for example) the actual goods as they look when they pass in interstate commerce, showing perhaps the mark on the goods. Or the specimen may show product packaging for the goods, with the mark on the product packaging.
For goods, it is easy to identify some kinds of would-be specimens that are almost certain to be rejected by the USPTO. Advertisements, for example, are routinely rejected, as are promotional materials and shipping invoices and brochures and business cards and letterhead.
In the case of a "services" class, the specimen may show, for example, a web site offering the services, or promotional materials or advertisements offering the services.
In any case, the specimen must show the mark in a manner that indicates the origin of the goods/services. The mark, in other words, must show the mark used as a trademark. The mark as shown in the specimen must match the drawing of the mark that appears in the trademark registration. The specimen must show goods/services listed for one or another of the trademark classes for which the Section 8 papers are being filed. Stated differently, there must be as many specimens as there are trademark classes in the Section 8 papers.
For e-filing, it is desirable if the specimens can be in JPG (JPEG) format.
Figuring out whether there have been five years of exclusive and continuous use of the mark with the goods/services. If the registrant is able to say that it has used the mark exclusively and continuously for five years, then the registrant is entitled to file not only a Section 8 Affidavit but also a Section 15 Affidavit. The value of the Section 15 Affidavit is that it makes a record that the registration is "incontestable". An incontestible registration is at less risk of being canceled (in a cancelation proceeding) than a registration that is not incontestable.
Thus, if the mark has indeed been exclusively and continuously used for five years, it is very desirable for the registrant to file Section 15 papers.
Deciding how the Section 8 papers will be signed by the registrant. While it is possible to file Section-8 papers on paper, it is the strong preference of Oppedahl Patent Law Firm LLC to file the section-8 papers electronically. With an electronically filed Section-8 filing, there are three ways for the registrant to sign:
For a registrant who is geographically distant from our office, choice A is not workable.
Our preference is choice C. With this approach, we prepare the papers and then we send an email to the registrant (or, if the registrant is represented by trademark counsel outside of the US, to the trademark counsel so that it may be forwarded to the registrant). The registrant opens the email message and the message contains a link to a special web page. The web page contains the text of the Section-8 (and, optionally, Section-15) papers, and has a space where the registrant can enter a typewritten "signature". After entering the e-signature, the registrant clicks a "submit" button. The e-signed application comes back to us and we e-file it with the USPTO.
Approach C is quick and simple and saves time for us. It saves the registrant the possible expense of sending a fax back to us (as would be the case with approach B).
Approach B is what must be employed if approach C is not available. With approach B, we prepare the papers that require signature and then we send the papers as a PDF file in an email attachment. We email the papers to the registrant (or, if the registrant is represented by trademark counsel outside of the US, to the trademark counsel). The PDF file gets printed out and the registrant signs it with pen and ink. The signed paper is then faxed to us or may be scanned as an image file and emailed to us. We charge a substantial additional professional fee if approach B is used instead of approach C.
To be able to proceed appropriately, we need to know which of the signing approaches (presumably either B or C) the registrant will be comfortable with.
What comes four years later. After the Section 8 papers have been filed and accepted by the USPTO, the next important due date is the so-called "Section 9 papers". The Section 9 papers must be filed between the ninth and tenth anniversaries of the registration date, and between the nineteenth and twentieth anniversaries of the registration date, and so on ad infinitem. Failure to file the Section 9 papers will lead to the registration being canceled.
For a registration granted on an application based upon Section 1 or Section 44(e), the Section 9 papers are filed directly with the USPTO.
For a registration granted on an application based upon Section 66(a) (Madrid Protocol), renewals must be filed every ten years, directly with the International Bureau of WIPO. The renewal must be paid during the six months before expiry of the period of protection (before the ten-year anniversary of registration) or may be paid with a late fee during the six months after the ten-year date.
In addition, for a registration granted on an application based upon Section 66(a), the registrant must file with the USPTO affidavits of continued use under Section 71 every ten years. In particular the Section-71 affidavits must be filed within the six-month period preceding the end of every ten-year period after the date on which the USPTO issued the certificate of extension of protection, or within a three-month grace period with an additional surcharge