TMEP 1604: Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act

This is the October 2015 Edition of the TMEP

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1604    Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act

15 U.S.C. §1058   Duration, affidavits and fees.

  • (a) Time Periods for Required Affidavits. Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
  • (1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this Act or the date of the publication under section 12(c).
  • (2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
  • (3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.
  • (b) Requirements for Affidavit. The affidavit referred to in subsection (a) shall—
  • (1)(A) state that the mark is in use in commerce;
  • (B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;
  • (C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
  • (D) be accompanied by the fee prescribed by the Director; or
  • (2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;
  • (B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
  • (C) be accompanied by the fee prescribed by the Director.
  • (c) Deficient Affidavit. If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.
  • (d) Notice of Requirement. Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under section 12(c).
  • (e) Notification of Acceptance or Refusal. The Director shall notify any owner who files any affidavit required by this section of the Director's acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
  • (f) Designation of Resident for Service of Process and Notices. If the owner is not domiciled in the United States, the owner may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the owner does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

Under 15 U.S.C. §1058, the owner of a registration must periodically file affidavits or declarations of use or excusable nonuse of the mark. The purpose of the affidavit or declaration of use or excusable nonuse (“§8 affidavit or declaration”) is to remove marks that are no longer being used in commerce from the register.