What Is a Combined Section 8 & 15 Declaration?

Trademarks are very important in the process of branding your company and this is because, in the current world with so many companies, you will need to protect the identity of your company.

However, registering a trademark is one thing—using it means filing it periodically with the United States Patent and Trademark Office (USPTO).

Among all these critical steps one of the most important ones is the Combined Section 8 & 15 Declaration.

While this filing maintains the status of your trademark it can also bolster its legal force, thus offering it added protection against infringement.

What is Section 8 Declaration?

Section 8 Declaration is a legal document that has to be submitted to the United States Patent and Trademark Office, in order to preserve the federal trademark registration.

Its main function is to determine whether the trademark is still in use in the course of business. This makes certain that the USPTO’s trademark registry is current and does not contain marks that are inactive.

Trademark owners are required to file a Section 8 Declaration in the 5th through the 6th year of their registration date and may do so up to six months later if needed.

In addition to the filing, there must be proof of use of the trademark in commerce such as the labels, packaging,e or advertisement of the services using the mark.

If the Section 8 Declaration is not submitted on time, the trademark registration can be terminated, and this means that the owner loses important rights and legal shields connected with the mark.

Understanding Section 15 Declarations

Section 15 Declaration is nice to have filed for trademark owners, though it is not mandatory. This is an affidavit that a registered trademark has been in use in commerce for at least five consecutive years from the date of registration.

Filing this declaration amounts to the “incontestability” of the trademark which enhances its legal protection tremendously.

Incontestability Definition

Incontestability of a trademark means that it would not be able to be attacked under certain legal provisions. For instance, it cannot be an argument that it is descriptive or it does not have enough differentiation.

This gives the trademark stronger protection and you get to recover your losses in case of a legal battle.

Eligibility for Filing

To file a Section 15 Declaration, the following conditions must be met:

• The mark must have been used for five consecutive years in commerce.
• There should be no lawsuits or negative judgments concerning the rights of the trademark.
• The mark cannot be registered on the Supplemental Register but has to be registered on the Principal Register.

Filing a Section 15 Declaration is not necessary to maintain a trademark registration but it provides an extra layer of protection which is very useful to ensure that the brand remains unaffected by outside interference.

What is a combined section 8 & 15 declaration?

A Combined Section 8 & 15 Declaration is simply a trademark filing procedure that enables the owner of a registered trademark to make both Section 8 and Section 15 Declarations at the same time.

It is especially advantageous to those trademark owners who satisfy the conditions for both filings at the same time and therefore, save money on administrative procedures.

two key points of filing a Combined Section 8 & 15 Declaration:

• This trademark is being used in commerce currently as it is required by Section 8. It has also remained in use for five consecutive years without being contested in light of Section 15 which enables it to be regarded as “incontestable”.
• This filing is normally made between the fifth and the sixth year from the time the trademark was registered. While it preserves the registration of the trademark, it also strengthens its legal framework, which means that the mark remains a desirable and unassailable asset for the owner.

This availability and the legal advantages of the Combined Section 8 & 15 Declaration explain why registration and protection of trademarks and their owners are relevant for comprehensive IP protection.

How to file Section 8 & 15 Declaration

A Combined Section 8 & 15 Declaration is a process that is well-defined to meet the requirements of the USPTO. Below are the key steps to successfully complete this filing:

Verify Trademark Eligibility

Ensure that your trademark has been used in business operations for not less than five years and there are no legal complaints against it.

Further, make certain that the trademark was registered on the Principal Register of the United States Patent and Trademark Office.

Consult an Experienced Trademark Attorney

Consider seeking legal guidance to ensure your declaration meets all legal and procedural requirements.

Our trademark attorney can help you navigate complex issues, such as determining acceptable specimens and avoiding costly errors in the filing process.

How to use the USPTO Online Filing System

Go to the USPTO’s TEAS and choose the correct form of the Combined Section 8 & 15 Declaration.

Complete the Declaration Form

Please provide all the mandatory information concerning the trademark, its usage at present, and the goods and services the trademark refers to.

Keep all the information you input accurate and in line with your registration details.

Pay the Required Fees

The fee for the combined declaration should be submitted. The fee will vary depending on the number of classes of goods or services which is to be included in the application.

Submit the Filing

After providing all the information the declaration should be checked and then submitted through the TEAS system. It is also advisable to keep a record of the confirmation of submission.

Monitor USPTO Response

After filing your application it will be examined by the USPTO and if necessary, the examiner will contact you for further information or supporting documents.

Reaching out to the recipient should be as fast as possible to prevent a delay or rejection.

Consequences of Not Filing or Filing Incorrectly

When trademark owners fail to file a Combined Section 8 & 15 Declaration or when they file it in a wrong manner they stand to lose a lot.

These issues may lead to the loss of legal protections and other challenges, including:

Trademark Cancellation

The worst that can happen when you fail to file your trademark within the stipulated time is that your trademark registration is nullified.

After being canceled it is no longer protected under federal laws and is free for others to use without permission.

Loss of Incontestable Status

Omission of the Section 15 component of the declaration or filing errors will cost one the chance to make the trademark incontestable.

As has been seen and argued here, without the kind of status that makes it beyond reasonable doubt that the mark is unique to the product, it is comparatively easier for the challenger to prosecute the mark in legal cases.

Susceptibility to Legal Actions

An incorrectly filed declaration is a disadvantage to a party in a case because it reduces your chances of winning. Other people or competitors may seize that chance to challenge the authenticity of the trademark thus inviting legal cases that are expensive.

Higher financial and administrative cost

Amending filing errors or reinstating a canceled trademark is likely to attract extra charges, time, and energy.

Sometimes, the application may have to be resubmitted for the trademark, which means that a new registration process will be needed.

Lack of Actions to Safeguard a Brand

A canceled or endangered trademark weakens the brand’s reputation and value; the company could suffer from legal fines and/or civil lawsuits.

It also limits your capacity to protect yourself from infringement of those rights.

Why You Should Hire Our Attorney to Help with the Filing

Trademark maintenance has some challenges especially when filing a Combined Section 8 & 15 Declaration.

Our experienced trademark attorney can provide invaluable support throughout this process, offering the following benefits:

Assessing Eligibility

Our attorney can determine whether your trademark is ready to be filed, whether it qualifies for use in commerce, and whether it is incontestable, thus saving you from making improper or ineligible filings.

Guarantee to accurate documentation

Specimen and good or services identification can be difficult especially when providing enough specimens.

Our attorneys are always there to help you to choose the right type of evidence and make sure it corresponds to your registration.

Avoiding Costly Errors

They can result in rejection or loss of trademark rights if, for instance, wrong dates are included, wrong statements or forms are filled in incorrectly or incompletely.

These errors are prevented by attorneys to make sure your declaration is truthful and comprehensive.

Handling USPTO Communications

In case the USPTO has some questions or needs to receive additional information, our attorney can easily reply to these questions, which will help to avoid some problems and delays.

Long-Term Protection

Lawyers can provide recommendations on other issues that may surround your filing and how to shore up your trademark protection in the event of an attack.

If you have questions about handling the Section 8 and 15 Declarations, reach out to Drishti Law at 773-234-1139 for a free consultation. Our experienced attorneys are here to guide you through the process, helping to ensure that your brand receives the protection it deserves under state and federal laws.