[E-trademarks] Amending a Sections 8 and 15 Declaration

Wed Mar 27 06:49:50 EDT 2024

If you include some goods in the "deleted goods or services" section and do not list all of the remaining goods or services in the "remaining goods or services" section of the TEAS form, it would be possible to say nothing about the goods or services that are excluded from both lists.

This is only possible if some goods or services are deleted, but that is Vic's fact pattern.

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On Tue, Mar 26, 2024, 11:02 AM <e-trademarks-request at oppedahl-lists.com> wrote:
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Date: Mon, 25 Mar 2024 17:51:55 +0000
From: Kevin Grierson <kgrierson at cm.law>
To: "For trademark practitioners. This is not for laypersons to seek
        legal advice." <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] Amending a Sections 8 and 15 Declaration
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How do you file a Section 8 without saying anything about certain goods?  The default declaration indicates that the mark is still in use on all the goods that were not deleted.  I would think that the TEAS form would not let you complete a filing without providing a specimen for, or deleting, each class (other than a declaration of excusable non-use).

So how was a Section 8 filed without saying anything about goods C?

Kevin Grierson????
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Vic Indiano via E-trademarks
Sent: Saturday, March 23, 2024 3:46 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Vic Indiano <gadgetlawyer at yahoo.com<mailto:gadgetlawyer at yahoo.com>>
Subject: [E-trademarks] Amending a Sections 8 and 15 Declaration

EXTERNAL EMAIL

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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