Trademark cancelled - Section 8

Trademark registration cancelled because registrant did not file an acceptable declaration under section 8

When a trademark registration is "Cancelled - Section 8" because the registrant did not file an acceptable declaration under Section 8, it means that the trademark owner failed to provide necessary documentation to the United States Patent and Trademark Office (USPTO) demonstrating the continued use of the mark in commerce. Section 8 of the Trademark Act requires such a declaration to be filed at specific intervals to maintain the registration of the mark.

Here’s what can be done if a trademark registration is cancelled for this reason:

1. Petition to Revive cancelled trademark registration (if applicable)

• Timing is Crucial: If the cancellation was recent, you might be eligible to file a "Petition to Revive" the cancelled registration. This is possible if the failure to file the acceptable Section 8 Declaration was unintentional. You'll need to explain the reasons for the oversight and provide the required documents and fees. There’s a strict timeline for filing this petition, so act quickly.

2. File a New Application

• Starting Over: If too much time has passed or if a Petition to Revive is not successful, you may need to file a new trademark application. This means going through the application process again, including paying the fees and waiting for the examination process to be completed. It's as if you're applying for the trademark for the first time, however you can backdate the use date to when you started using the trademark.

3. Assess and Learn

• Understand What Went Wrong: It's important to understand why the declaration wasn't filed or accepted. Was it a misunderstanding of the requirements, an oversight, or a procedural error? Knowing what went wrong can help prevent similar issues in the future.

4. Legal Consultation

• Seek Professional Advice: Consulting with a trademark attorney can provide you with specific guidance tailored to your situation. An attorney can help you navigate the process of reviving a cancelled registration, if possible, or advise on the best steps to take to reapply for your trademark.

5. Continued Use and Monitoring

• Maintain Use of the Mark: Continue using your trademark in commerce to establish and maintain your rights, even if you have to reapply. Also, keep monitoring for any potential infringements during this period to protect your brand.

6. Prepare for the Future

• Stay Informed: To prevent future cancellations, make sure you understand and docket all the maintenance requirements for a trademark registration, including the deadlines for filing Section 8 Declarations, Section 9 Renewals, and any other required documentation.

Under what circumstances is a petition to revive accepted?

To revive or reinstate a trademark registration that has been cancelled or expired due to failure to renew under Section 8, you can file a petition to the USPTO to accept a late renewal under certain circumstances. Here are the key steps:

1. Petition to Revive - File a Petition to the Director under Trademark Rules 2.146 or 2.147. This petition requests that the USPTO accept a late renewal of the registration despite it being cancelled or expired. This can be done electronically through the USPTO's Trademark Electronic Application System (TEAS).
2. Unintentional of Unavoidable Delay - Provide a statement giving the reasons for the delayed renewal and evidence supporting either an "unintentional" delay or a "unavoidable" delay in filing the Section 8 renewal.
3. Newly Filed Section 8 - Include a newly filed Section 8 renewal application along with the statutory fees for both the petition and the renewal application.
4. Explanation and Fees - for an "unintentional" delay, you must renew within 2 years of the expiration date and pay additional fees. This statement must be clear and convincing. For an "unavoidable" delay, there are higher fees but no time limit after expiration.
5. Timeliness: File the petition within two months of the date of cancellation or the date you became aware of the cancellation (whichever is earlier). If more time has passed, provide a reasonable explanation for the delay in filing.
6. Evidence of Use - Provide proof that the mark was still in use in commerce as of the renewal deadline that was missed - submit evidence showing that the trademark was in use in commerce at the time the Section 8 affidavit was due. If the mark was not in use, provide a statement to that effect and explain the steps taken to resume use.
7. Specimen of Use - Include a specimen showing how the trademark is used in commerce. This specimen should be something that shows the mark as it is used on or in connection with the goods/services (e.g., labels, tags, advertisements).
8. Signed Declaration - Include a signed declaration stating that all the information provided in the petition is true and correct. This can be done electronically.

If the petition is granted, the USPTO will reinstate the trademark registration and update the records. However, the burden is high to prove an "unavoidable" delay, so arguing "unintentional" is generally advisable if possible.

Can I use trademarks that have been cancelled?

When similar trademarks are cancelled due to failure to file a Section 8 Declaration, it can present an opportunity for new applicants, but also comes with potential risks. Here are the benefits and considerations for someone looking to trademark in a space where similar marks have been cancelled:

Benefits

1. Less Competition: With similar marks cancelled, the trademark register is cleaner, potentially making it easier for new trademarks to be registered without facing objections based on confusion with existing registrations.

2. Stronger Position: If you successfully register your mark after similar ones have been cancelled, your position in defending against potential infringers strengthens, as there are fewer registered marks that could be confused with yours.

3. Opportunity to Fill a Void: The cancellation of similar trademarks might indicate a gap in the market or a chance to establish your brand in a space where competitors have let their protections lapse.

Considerations

1. Potential for Revival: Cancelled trademarks can sometimes be revived if the original registrant successfully petitions to the USPTO showing the failure to file was unintentional and the petition is filed within a certain period. This means a previously cancelled mark could potentially "come back to life" and pose a challenge to your application or use.

2. Common Law Rights: Even if a trademark is cancelled for failing to file a Section 8 Declaration, the original owner might still have common law rights to the mark based on continuous use in commerce. This could lead to potential legal challenges based on prior use, even if the formal registration has lapsed.

3. Due Diligence is Key: Before proceeding with a trademark application in this scenario, it's crucial to perform comprehensive due diligence, including searching for unregistered (common law) uses of the similar marks. This can help assess the risk of potential challenges.

4. Consider Legal Advice: Consulting with a trademark attorney can provide valuable insights into the specific risks and benefits in your situation. An attorney can help navigate potential challenges, including advising on the likelihood of a cancelled mark being revived or the implications of existing common law rights.

5. Monitoring the Register: After registering your mark, it's wise to monitor the trademark register for any attempts to revive similar cancelled marks, so you can respond appropriately if necessary.

In summary, while the cancellation of similar marks can create opportunities for new applicants, it's important to proceed with caution and be prepared for potential challenges.

When can a cancelled trademark registration not be revived?

A canceled trademark may not be revived under certain circumstances. The United States Patent and Trademark Office (USPTO) has specific rules and guidelines that determine whether a petition to revive a canceled trademark can be granted. Here are the primary circumstances under which a canceled trademark cannot be revived:

1. Failure to Show Unintentional Delay:

   • If the failure to file the required Section 8 affidavit or declaration of use (or other necessary renewal documents) is not shown to be unintentional, the petition to revive will be denied. The petitioner must convincingly demonstrate that the delay in filing was unintentional.

2. Lack of Evidence of Use:

   • If the trademark was not in use in commerce at the time the Section 8 affidavit was due, and there is no compelling explanation or evidence showing that the mark was used continuously or that steps were taken to resume use, the petition may be denied.

3. Late Filing Beyond the Allowable Period:

   • The petition must be filed within a strict timeframe. Generally, a petition to revive must be filed within two months of the date of cancellation or within two months of the date when the trademark owner first became aware of the cancellation (whichever is earlier). If this deadline is missed, the petition cannot be considered.

4. No Reasonable Explanation for Delay:

   • If the trademark owner does not provide a reasonable explanation for any delay in filing the petition after becoming aware of the cancellation, the USPTO may deny the petition.

5. Failure to Pay Required Fees:

   • If the petitioner does not pay the required fees associated with filing the petition to revive, the USPTO will not process the petition, resulting in denial.

6. Non-Compliance with Formal Requirements:

   • If the petition does not comply with all formal requirements, such as providing a clear statement of facts, necessary declarations, and appropriate specimens, it may be rejected. Complete and accurate submissions are critical.

7. Petition Filed After Trademark Registration Expiration:

   • If the cancellation occurred due to the expiration of the trademark registration and not just a failure to file the Section 8 affidavit, revival might not be possible. In such cases, a new trademark application may be required.

Key Points to Consider

• Intent to Use: Demonstrating a genuine intent to continue using the trademark is crucial.
• Documentation and Evidence: Providing thorough documentation and evidence of use can strengthen the petition.
• Legal Guidance: Consulting with a trademark attorney can help navigate the complexities of the revival process and increase the chances of success.

What is Status: 710 - cancelled - Section 8?

That is the internal codes that the USPTO uses track the status of trademark applications and registrations. Here are the relevant status codes for dead/cancelled trademarks: