TMEP 1604.19: Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application

October 2017 Edition of the TMEP

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1604.19    Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application

A §8 affidavit or declaration and a §9 renewal application 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 filed electronically, the filing fee for the §8 affidavit or declaration is $125 per class, the filing fee for the renewal application is $300 per class, and the filing fee for the combined §8 and §9 document is $425 per class. If filed on paper, the filing fee for the §8 affidavit or declaration is $225 per class, the filing fee for the renewal application is $500 per class, and the filing fee for the combined §8 and §9 document is $725 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 or declaration and the §9 renewal application.

Example:  The period for filing a §8 affidavit or declaration and §9 renewal application expires on November 19, 2009. A combined §8 and §9 document is filed November 21, 2009, during the six-month grace period.  The proper fees are as follows: (1) filing fee for the §8 affidavit or declaration, per class; (2) grace period surcharge for the §8 affidavit or declaration, 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 or declaration 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.  When the combined filing is submitted electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

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 filled out and mailed, faxed, or hand-delivered to the USPTO.

See TMEP §1605.05 regarding a combined filing under §§8 and 15 of the Act.