TMEP 1604.04(a): Premature Filing of §8 Affidavit or Declaration

October 2017 Edition of the TMEP

Previous: §1604.04 | Next: §1604.04(b)

1604.04(a)    Premature Filing of §8 Affidavit or Declaration

The affidavit or declaration cannot be filed before the periods specified in §8(a) of the Act.  The purpose of the affidavit or declaration is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit or declaration filed before that period. Cf. In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).  If an affidavit or declaration is filed before the period specified in §8(a)(1) and (a)(2) of the Act, the USPTO will issue a notice advising the owner: (1) that the affidavit or declaration is premature; (2) of the appropriate time for filing the affidavit or declaration; (3) that the fee(s) submitted will be held; and (4) that the owner may file a new affidavit or declaration at the appropriate time or may request a refund at any time.  There is no deficiency surcharge.  The prematurely filed affidavit or declaration will remain in the record for informational purposes only.  The owner of the registration must file a newly executed affidavit or declaration before the end of the grace period, or the registration will be cancelled and the USPTO will refund the fees.

See TMEP §1604.08(b) regarding the date of execution of a §8 affidavit or declaration.