[E-trademarks] Amending a sections 8 and 15 declaration

[mrichter richtertrademarks.com]

Vic,

If the window for filing is over you might be out of luck. I recently lost a registration because I filed an excusable non-use declaration then found out that the mark was in use at the relevant time (huge client left hand not knowing what right hand is doing during the pandemic situation!). So I filed the specimen – it was rejected as out of the filing period and then they wouldn’t let me respond to the non-use allegation because I had admitted that it was in use!!! Luckily, I have the logo registered as well so coverage was not completely lost and will refile for the word mark.

Good luck!

Best,
Miriam

Miriam Richter, Attorney at Law, P.L.
Make Your Mark! ®
Trademark, Copyright, and other Intellectual Property Matters
2312 Wilton Drive, Suite 9
Wilton Manors, Florida 33305

954-977-4711 office
954-240-8819 cell
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Vic Indiano via E-trademarks
Sent: Saturday, March 23, 2024 10:54 AM
To: e-trademarks at oppedahl-lists.com
Cc: Vic Indiano <gadgetlawyer at yahoo.com>
Subject: [E-trademarks] Amending a sections 8 and 15 declaration

I recently took over a case where a sections 8 and 15 declaration had been filed.

Prior to the filing, the registration included five goods-- A, B, C, D, and E.

In the declaration,

    1.    goods A and B were deleted;

    2.    Goods D and E were listed as still being used; and

    3.    Nothing was said about goods C.  It was neither listed as deleted nor listed as still being used.

It would seem that the best way to reinstate goods C would be to file a voluntary amendment, that would include statements relating to

(a) goods C still being in use;
(b) a specimen showing goods C;
(c) a declaration similar to the declaration that one normally files in connection with a sections 8 and 15 declaration; and
(e) a miscellaneous statement describing what happened, the reason for the amendment etc.

Am I on the right track?
Does anyone else have any better ideas?
Am I missing something?

Thank you in advance for your help in your thoughts.

Vic


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