Trademark cancelled - Failure to make Section 8 and 9 filings

Trademark cancelled - Failure to make Section 8 and 9 filings

  • 12 June, 2024
  • Nyall Engfield

Can it be revived? Can late renewals be accepted?

Based on the information provided in the search results, a trademark registration that has been canceled due to failure to file the required Section 8 declaration of continued use and/or Section 9 renewal 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.[1][2][5][6]

2. The USPTO has no authority to waive or extend the deadline for filing a proper Section 8 declaration or Section 9 renewal application.[6]

3. Registrations canceled due to failure to file the Section 8 and 9 filings cannot be revived or reinstated.[1][2][6] The registrant must file a new trademark application to pursue registration of the mark again.[1][2][6]

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.[3]

So in summary, once a trademark registration is canceled 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.[1][2]

Citations:
[1] https://www.avvo.com/legal-answers/how-do-i-reinstate-my-canceled-trademark-registran-2876249.html
[2] https://www.uspto.gov/trademarks/maintain
[3] https://www.ny-trademark-lawyer.com/is-it-possible-to-revive-an-abandoned-trademark-application.html
[4] https://www.uspto.gov/trademarks/apply/reviving-abandoned-application
[5] https://www.wilsonlegalgroup.com/blogs/trademark-law/trademark-renewal-and-maintenance
[6] https://www.uspto.gov/trademarks/maintain/post-registration-faqs
[7] https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive

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