Section 8 Declarations: The Deadline That Quietly Cancels Registrations

We regularly meet brand owners who discover, usually when a marketplace or a competitor points it out, that their registration was cancelled years ago. In most of these cases nobody did anything wrong in the application. The registration simply was not maintained.

The schedule

Between the fifth and sixth anniversary of registration, the owner must file a declaration under Section 8 of the Lanham Act (15 U.S.C. § 1058) confirming the mark is still in use. Between the ninth and tenth anniversary, and every ten years after that, the owner files a combined Section 8 declaration and Section 9 renewal. Each window has a six-month grace period with a surcharge. When the grace period closes with nothing filed, the USPTO cancels the registration, and there is no way to file late.

What the filing has to show

The declaration is sworn. It lists the goods and services on which the mark is currently used and includes a current specimen for each class. Goods that are no longer sold under the mark have to be deleted.

That last point deserves emphasis. Owners sometimes keep every item in the registration because it feels like more protection. It is the opposite. Claiming use on goods you no longer sell is a false statement to the USPTO, and the Office audits a share of maintenance filings by asking for proof of use on additional items. A failed audit costs the goods that cannot be supported and can raise questions about the rest. Trimming the list is part of doing the filing properly.

Incontestability

If the mark has been in continuous use for five consecutive years after registration and there is no pending challenge, the owner can also file a Section 15 declaration (15 U.S.C. § 1065). It is optional, but it narrows the grounds on which the registration can later be attacked, and filing it alongside the first Section 8 costs little extra.

Why deadlines get missed

In our experience it is rarely negligence. The correspondence email on file belongs to a former employee or the original filing service. The brand was sold and the assignment never recorded, so the new owner never received reminders. Or a seller holds several marks registered at different times and nobody is tracking them as a set.

Look up your registrations in the USPTO's status system, confirm the email address on file is one you read, and put both windows on your calendar. If you hold more than a handful of marks, a short portfolio review once a year catches these problems while they are still easy to fix.