Trademark Maintenance Reminder Client Letter
(Section 8 & 15 Continued Use and Incontestability)

Summary

This template client letter informs a client of upcoming maintenance requirements and deadlines for the client's U.S. trademark registration. It includes important information about preparing and filing a declaration of use or excusable nonuse (Section 8 Declaration or Affidavit) and a declaration of incontestability (Section 15 Declaration or Affidavit). This template includes practical guidance, drafting notes, and alternate clauses. A Section 8 Declaration must be filed between the fifth and sixth year of registration (or within the six-month grace period following the end of the sixth year, for an additional fee). Importantly, failure to do so will result in cancellation of the registration. Given this potentially dire outcome, attorneys send clients trademark maintenance reminders as a matter of course to help ensure the clients' registrations remain valid and in good standing. A Section 8 Declaration can be filed on its own or can be filed along with a Section 15 Declaration if the client can claim incontestability (to be deemed incontestable, a mark must be registered on the Principal Register and must have been in continuous and exclusive use for five or more years since the date of registration). If a filing is accepted and a registration becomes incontestable, the registration becomes conclusive evidence (subject to certain statutory defenses) of: • The validity of the registered mark and its registration • The registrant's ownership of the mark • The registrant's exclusive right to use the mark in commerce See 15 U.S.C. §§ 1065, 1115(b). Filing a Section 15 Declaration is not required but is usually desirable where the client meets the prerequisites. While a Section 15 Declaration can be filed at any time after the five-year anniversary of the registration, it is typically filed at the same time as the Section 8 Declaration, given that the timing for claiming incontestability and filing a Section 8 Declaration coincide. (When filing both at the same time, you can use a combined form—known as a Combined Declaration of Use and Incontestability under Sections 8 & 15, or a Combined Section 8 & 15 Declaration—available here. Note that all maintenance filings must be filed electronically, with limited exceptions. See U.S. Patent and Trademark Office (USPTO), Examination Guide 1-20 (Revised) (Feb. 2020).) It is thus advisable to send a maintenance reminder at least six months prior to the fifth year of registration so that if the client wants to file the Combined Sections 8 & 15 Declaration, they can do so at the first possible opportunity to achieve incontestability as soon as possible. This letter assumes that the client is the current owner of the trademark registration. If the client no longer owns the registration, the registration must be assigned to the new owner prior to filing the trademark maintenance documents (for more on assignment, see Assignments of Trademarks). If there has been a change in ownership since registration, but an assignment has not been recorded with the USPTO, the USPTO will not accept maintenance documents in the name of the new owner on the ground that there has been a break in the registration's chain of title. See Trademark Manual of Examining Procedure 1604 (§ 1604.07(b)). For additional guidance on trademark maintenance, see Trademark Registrations: Maintenance and Renewal and Trademark Registration and Maintenance Resource Kit.