Why a mark has to be in use
A trademark exists to identify goods and services in the market, so many countries expect a registered mark to be used. Some ask the owner to declare it, with evidence, at fixed points in the life of the registration. Others do not ask, but allow someone to challenge a mark that has not been used for a period of time. See why an unused trademark can be lost.
United States: Section 8 and related filings
- Years 5 to 6. A Section 8 declaration of use is due between the fifth and sixth years after the registration date. There is a six-month grace period, with an additional fee.
- Years 9 to 10, and every ten years. A combined Section 8 declaration and Section 9 renewal is due between the ninth and tenth years, and then every ten years (between the 19th and 20th years, and so on). The grace period is again six months, with additional fees.
- US protection obtained through the Madrid System (Section 71). The same intervals apply. The international registration must also be renewed directly with the International Bureau of WIPO every ten years.
- Section 15. An optional declaration of incontestability, available after five years of continuous use. It can be filed with the Section 8 declaration or later.
Source: USPTO, keeping your registration alive. A missed deadline can end the registration, so please do not rely on the grace period.
Other countries
Some other countries have their own use requirements, with their own timing. We work from the rules of the country concerned. Send us the registration number and the country and we tell you whether, when and what is needed.
What is included
- Recording the due dates for each of your registrations
- Reminders well ahead of the deadline, with a quote
- Asking you for evidence of use, and checking it against the goods and services
- Preparing and filing the declaration, and paying the official fee
- Sending you confirmation once the office has recorded it
How it works
- Send us the detailsRegistration numbers and countries. If we filed the mark, we already have them.
- We confirm the datesWe check the register for the exact date and for what the office asks.
- You send evidenceProof that the mark is in use for the goods or services listed.
- We fileOn your go-ahead, with our fee and the official fee shown separately.
- ConfirmationWe send you proof that the declaration was recorded.
The declaration is signed for the owner and has to be accurate. If the mark is not in use for some of the goods or services, tell us: they may have to be taken out. We cannot file a declaration we know to be untrue.
Common questions
What is a declaration of use?
A signed statement, with evidence, that the mark is in use for the goods or services it covers. Some countries ask for one at set points in the life of a registration, and a registration can be lost if it is not filed.
When is the US Section 8 declaration due?
Between the fifth and sixth years after the registration date. There is a six-month grace period, with an additional fee. After that, a combined declaration and renewal is due between the ninth and tenth years, and then every ten years.
Is the Section 8 declaration a renewal?
No. The declaration between years five and six keeps the registration alive but does not renew it. The renewal comes with the declaration between years nine and ten. See trademark renewal.
What if my mark is not used for everything it covers?
Tell us. The declaration has to be accurate, so goods or services that are not in use may have to be taken out. We explain what applies in your country before anything is signed.
Do other countries ask for the same?
Some do and some do not, and the timing differs. Others do not ask for a declaration but allow someone to challenge a mark that has not been used for a period. See why an unused trademark can be lost. Send us the country and the registration number and we check.
What does it cost?
The quote shows our fee and the official fee separately, in writing, before anything is filed. See Prices.
