T.M.E.P. § 1604.19
Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
Executive summary:
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1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
Under 37 C.F.R. 2.166, an affidavit or declaration under §8 of the Act and a renewal application under §9 of the Act may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act. 37 C.F.R. 2.166.
The filing fee for the combined §8 and §9 filing is the sum of the cost of the individual filings. For example, if the filing fee for the §8 affidavit is $100 per class, and the filing fee for the renewal application is $400 per class, then the filing fee for the combined §8 and §9 document is $500 per class.
If the combined §8 and §9 document is filed during the grace period, the filing fees per class and the grace period surcharge per class must be paid for both the §8 affidavit and the §9 renewal application.
Example: A registration expires on January 19, 2005. A combined §8 and §9 document is filed January 21, 2005, during the six-month grace period. The proper fees are as follows: (1) filing fee for the §8 affidavit, per class; (2) grace period surcharge for the §8 affidavit, per class; (3) filing fee for the §9 renewal application, per class; and (4) grace period surcharge for the §9 renewal application, per class.
Failure to include the proper fees is a deficiency that may require a deficiency surcharge. See TMEP §§1604.17 et seq. and 1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for curing one or more deficiencies in a combined §8 and §9 filing, even if both the §8 affidavit and the §9 renewal application are deficient. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one document.
To expedite processing, it is recommended that the combined §8 and §9 filing be submitted through TEAS, at http://www.uspto.gov/teas/index.html. When the combined filing is submitted electronically, the USPTO immediately issues a confirmation of filing via e-mail that includes the date of receipt and a summary of the submission. This confirmation is evidence of filing should any question arise as to the filing date. See TMEP §301 for additional information about electronic filing.
Alternatively, the owner of the registration can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be mailed, faxed or hand-delivered to the USPTO.
See TMEP §1605.05 regarding a combined filing under §§8 and 15 of the Act.