[E-trademarks] Filing Section 8 declaration during the grace period

Tue Jun 11 13:44:44 UTC 2024

Hi Jessica,

I believe that the Section 8 filing simply states the mark is in use in
commerce, and use has to be during the relevant time you are filing
declaration (before end of grace period if filing in grace period, or before
start of grace period if filing before it).  

Confirming this, in TMEP 1604.10
(https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1600d1e889.html),
describing substitute declarations, it says in #3 the use for a grace period
filing that a substitute declaration need only state it was in use before
the end of the grace period:

A §8 affidavit or declaration that does not state that the mark is in use
in commerce is deficient.  The owner must submit a substitute affidavit or
declaration stating that the mark was in use in commerce 
.during the
relevant period specified in §8 of the Trademark Act, 15
<https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-510834c1-3800-4410-82
34-81085d283a9a.html>  U.S.C. §1058, as follows:

*	(1) If the §8 affidavit or declaration was filed during the sixth
year after the date of registration or publication under §12(c) of the Act,
the substitute affidavit or declaration must state that the mark was in use
in commerce on or in connection with the goods/services/collective
membership organization before the expiration of the sixth year after the
date of registration or publication under §12(c), if accurate; or 
*	(2) If the §8 affidavit or declaration was filed within one year
before the end of any ten-year period after the date of registration, the
substitute affidavit or declaration must state that the mark was in use in
commerce on or in connection with the goods/services/collective membership
organization within one year before the end of the ten-year period after the
date of registration, if accurate; or 
*	(3) If the §8 affidavit or declaration was filed during the grace
period, the substitute affidavit or declaration must state that the mark was
in use in commerce on or in connection with the goods/services/collective
membership organization before the expiration of the grace period, if
accurate. 

Hope that helps!

 <http://www.linkedin.com/in/steven-cooper-wfmb>
<https://www.instagram.com/ipattorneysteve/>  

Steven T. Cooper
Partner, Ware Fressola Maguire & Barber LLP

Email:  <mailto:stc at warefressola.com> stc at warefressola.com
Phone: 203-261-1234 | Mobile: 203-414-7294

755 Main Street, Bradford Green Bldg. 5
Monroe, CT 06468
 <http://www.warefressola.com/> www.warefressola.com

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of
Jessica R. Friedman via E-trademarks
Sent: Tuesday, June 11, 2024 8:49 AM
To: For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: [E-trademarks] Filing Section 8 declaration during the grace period

If you file a Section 8 during the grace period, do you have to state that
the mark was in use as of the end of the six-year period? TMEP Section 1604
doesnt seem to say. 

Jessica R. Friedman

Attorney at Law

300 East 59 Street, Ste. 2406

New York, NY 10022

Phone: 212-220-0900

Cell: 917-647-1884

E-mail:  <mailto:jrfriedman at litproplaw.com> jrfriedman at litproplaw.com

URL:  <http://www.literarypropertylaw.com> www.literarypropertylaw.com

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