Legal Definitions - declaration under § 8

A declaration under § 8 refers to a mandatory legal document that a trademark owner must file with the U.S. Patent and Trademark Office (USPTO) at specific intervals after their trademark has been registered. This document, also commonly known as a "Declaration of Use," serves as proof that the trademark is still actively being used in commerce in connection with the goods or services for which it was registered.

The primary purpose of this declaration is to ensure that the trademark system only maintains registrations for marks that are genuinely in use in the marketplace. This prevents individuals or companies from "hoarding" trademarks they are not actually using, which could block others from using those marks. Failure to file this declaration within the required timeframe will result in the cancellation of the trademark registration.

Here are some examples illustrating the application of a declaration under § 8:

• Software Company Maintaining a Brand:

  Imagine "TechSolutions Inc." registered the trademark "CodeFlow" for its project management software five years ago. As the five-year anniversary of their registration approaches, TechSolutions Inc. receives a reminder from the USPTO about the upcoming deadline for their Section 8 Declaration. To maintain their trademark registration, TechSolutions Inc. compiles evidence such as screenshots of their software displaying the "CodeFlow" mark, recent sales invoices, and marketing materials showing the mark in use. They submit this declaration to the USPTO, proving that "CodeFlow" is still actively used in commerce for their software services.

• Restaurant Chain Renewing Its Logo:

  "Gourmet Bites LLC" successfully registered the trademark "FlavorFusion" for its chain of fusion restaurants ten years ago. Now, it's time for their second Section 8 Declaration filing (which occurs between the ninth and tenth year after registration, and then every ten years thereafter). Gourmet Bites LLC gathers photographs of their restaurant signage, copies of menus featuring the "FlavorFusion" logo, and recent advertising campaigns. This documentation demonstrates to the USPTO that the trademark is still in active use for restaurant services, allowing them to keep their registration valid and protect their brand identity.

• Clothing Brand Facing a Change in Business Focus:

  "Urban Threads Co." registered the trademark "StreetVibe" for a line of streetwear apparel seven years ago. However, over the past two years, Urban Threads Co. has shifted its business focus entirely to accessories like hats and bags, and has not produced any apparel under the "StreetVibe" mark. When the time comes to file their Section 8 Declaration, Urban Threads Co. realizes they cannot truthfully attest to the continued use of "StreetVibe" for apparel. If they fail to file the declaration for apparel or cannot prove its use, the registration for "StreetVibe" specifically for apparel will be canceled, illustrating how the declaration ensures that trademarks remain registered only for the goods or services for which they are genuinely in use.