Your cart is empty now.
Trademark cancelled - Failure to make Section 8 and 9 filings
- 12 June, 2024
- Nyall Engfield
Can it be revived? Can late renewals be accepted?
A trademark registration that has been canceled due to failure to file the required Section 8 declaration of continued use of the trademark and/or Section 9 renewal (Trademark Cancelled Section 8) cannot be revived or reinstated. The key points are:
1. If the Section 8 and 9 filings are not timely made between the 9th and 10th year after registration (or within the 6-month grace period with an additional fee), the registration will be canceled under Section 8.
2. The USPTO has no authority to waive or extend the deadline for filing a proper Section 8 declaration or Section 9 renewal application.
3. Trademark registrations canceled due to failure to file the Section 8 and 9 filings cannot be revived or reinstated. The registrant must file a new trademark application to pursue registration of the mark again.
4. This is different from the rules for reviving abandoned applications. The rules in Trademark Rule 2.66 that allow for petitions to revive abandoned applications only apply to pending applications, not to canceled or expired registrations.
So in summary, once a trademark registration is canceled under Section 8 for failure to make the required Section 8 and 9 filings, there is no way to revive or reinstate it. The owner's only option is to file a brand new application to re-register the mark, although they can claim their original dates of first use if the mark is still in use in commerce. The downside is that someone may have filed a similar mark in the meantime, that will now block your new application.
Further reading:
https://www.uspto.gov/trademarks/maintain/post-registration-faqs
https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive
Search
Archive
- August 2024
-
- How to avoid being locked out of your Amazon product listings
- If you tattoo a trademark on your body - Skinvertising- can you be sued?
- Burnt Orange - University of Texas Trademark of Pantone 159
- Jungle Superheroes - famous characters similar to Tarzan and the difficulties of maintaining a monopoly
- What happens to the trademark rights if the renewal is missed
