USA Trademarks: Declaration of Use and Declaration of Incontestability

Trademark owners who have registered their trademark in the United States face the task of not only securing their rights but also maintaining them over the long term. Two key declarations that play a central role in this are the Declaration of Use and the Declaration of Incontestability. These documents serve to confirm the continued use of the trademark and strengthen its legal status. This article explains their significance, deadlines, and best practices for submitting these declarations.

What is the Declaration of Use?

The Declaration of Use, also known as the Section 8 Declaration, is a requirement imposed by the United States Patent and Trademark Office (USPTO). It serves to confirm that the registered trademark is still being used in commerce in the United States.

Purpose of the Declaration of Use

The United States follows the principle of "Use It or Lose It," which means that trademark rights only exist as long as the trademark is actually used. The Declaration of Use is intended to prevent unused trademarks from blocking the register.

Deadlines for the Declaration of Use

The Declaration of Use must be filed:

• Between the 5th and 6th year after registration.
• Subsequently, during each 10-year renewal period.

If the declaration is not filed on time, the trademark may be canceled.

Contents of the Declaration of Use

The declaration must:

1. Confirm the continued use of the trademark.
2. Be supported by evidence (e.g., product photos, promotional materials, or invoices).
3. Include fees submitted to the USPTO.

Examples of Use Evidence

• Product Photos: A photo of a product displaying the trademark, such as packaging with the brand logo.
• Invoices: Sales invoices or delivery receipts related to the trademarked product, ideally with dates and details of U.S. customers.
• Advertising: Screenshots of advertisements prominently featuring the trademark, such as online ads, social media campaigns, or print ads.
• Webshop Evidence: A screenshot of a product page from an online store where the trademarked product is offered with a visible trademark.
• Event Materials: Photos or programs from trade shows or events where the trademark was prominently displayed.

What is the Declaration of Incontestability?

The Declaration of Incontestability, also known as the Section 15 Declaration, significantly increases the legal security of a trademark. It renders the trademark "incontestable," meaning it can only be challenged by third parties in very limited circumstances.

Purpose of the Declaration of Incontestability

This declaration secures the trademark after five years of uninterrupted use. It provides protection against certain types of challenges, such as claims that the trademark is descriptive or lacks distinctiveness.

Requirements

To file the Declaration of Incontestability, the following conditions must be met:

• The trademark must have been in continuous use for five years.
• There must be no pending legal disputes over the trademark.
• The trademark must be properly registered, and all prior obligations, such as the Declaration of Use, must have been fulfilled.

Deadline

The Declaration of Incontestability can be filed no earlier than five years after registration. While it is not legally required, it is highly recommended to strengthen the trademark.

Best Practices for the Declaration of Use and Declaration of Incontestability

1. Timely Planning: Record the relevant deadlines immediately after trademark registration and set up reminders to act in a timely manner.
2. Thorough Documentation: Keep all documents ready that prove the use of the trademark, such as sales records, advertisements, or online activities. These documents must be current and clear.
3. Professional Review: Have the submission reviewed by a specialized attorney. Errors or incomplete documentation can lead to rejection or even loss of the trademark.
4. Combined Filing: It is possible to file the Section 8 and Section 15 Declarations simultaneously once the trademark has been registered for five years. This saves time and fees.
5. Regular Use: Ensure the trademark is continuously used in all registered classes. Evidence of partial use is often insufficient.
6. Strategic Advice: For internationally operating companies, the long-term trademark strategy should be aligned with the requirements of the U.S. market.

Conclusion

The Declaration of Use and the Declaration of Incontestability are essential steps to secure and protect a trademark in the United States over the long term. While the Declaration of Use documents the continued use of the trademark, the Declaration of Incontestability enhances the legal protection and stability of the trademark. By planning ahead, seeking professional advice, and preparing thoroughly, trademark owners can ensure that their trademark remains valuable in the long term.