We wrote an article recently discussing a Trademark Statement of Use, which included discussions of the purpose and legal requirements of a Statement of Use. In this article, the top-rated Trademark Lawyers at Revision Legal discuss a different trademark form called a Trademark Declaration of Use. If you have been searching for the “best Trademark Law Firm near me,” give Revision Legal a call at 231-714-0100 or 855-473-8474.

A Statement of Use and a Declaration of Use are both required forms that must be completed and filed with the United States Patent and Trademark Office (“USPTO”). However, the forms are different and are filed at very different stages in the trademarking process. A Statement of Use is filed at the very beginning. If an application is based on at-that-time-current usage of the trademark, then a Statement of Use is filed as part of the USPTO trademark registration application. If an intent-to-use trademark application is filed, then a Statement of Use must be filed within about six months of the USPTO issuing a Notice of Allowance for the proposed trademark.

By contrast, a Declaration of Use is completed and filed years after a trademark has been registered with the USPTO. Indeed, Declarations of Use must be filed on an ongoing basis. The first Declaration of Use must be filed between the fifth and sixth anniversary of the trademark’s registration. Then, subsequent Declarations of Use must be filed every ten years. A Declaration of Use is the key document that must be filed to keep a trademark registration valid.

In explanation, the legal validity of a trademark is based on the use of the trademark in commerce. “Use” means placing the trademark on the product, on the packaging, on materials included with the product, etc. For trademarks involving services, “use” means placing the trademark on advertising, on signage where the services are provided, on websites, etc. Failure to use a trademark will cause the trademark to lapse in terms of legal protections and the ability to register — or maintain the registration — of the trademark.

Statement of Use: Purpose, Timing, and Requirements

A Statement of Use (SOU) serves as the applicant’s sworn declaration that the trademark is currently being used in commerce in connection with the goods or services identified in the application. There are two contexts in which an SOU is filed:

• Use-based application (Section 1(a)): The applicant is already using the mark in commerce at the time of filing and submits the SOU as part of the initial application package, along with a specimen showing that use.
• Intent-to-use application (Section 1(b)): The applicant files based on a bona fide intention to use the mark in commerce. After the USPTO issues a Notice of Allowance, the applicant has six months to either file the SOU (showing actual use has now begun) or file a six-month extension request. Up to five extensions are available, giving the applicant a maximum of 36 months from the Notice of Allowance to establish use and file the SOU.

The SOU must include a specimen demonstrating actual use of the mark on the identified goods or in connection with the identified services. For goods, a photograph of the mark as it appears on the product, its packaging, or a label or tag is typical. For services, acceptable specimens include screenshots of a website where services are offered under the mark, brochures, or advertisements. The SOU must also state the date the mark was first used anywhere and the date of first use in interstate commerce.

If the SOU is filed with an inadequate specimen or an inaccurate use date, the examining attorney will issue an office action. Responding incorrectly to that office action can delay or ultimately defeat the registration, which is one reason experienced trademark counsel is valuable at this stage.

Declaration of Use: Ongoing Maintenance After Registration

Once a trademark is registered, the owner is not done with USPTO filings. A Declaration of Use (also called a Section 8 Declaration, named for 15 U.S.C. § 1058) must be filed to demonstrate that the mark remains in active commercial use. The filing schedule is:

• Between the 5th and 6th anniversary of the registration date: File a Section 8 Declaration with a current specimen of use. A six-month grace period is available with a surcharge.
• Between the 9th and 10th anniversary of the registration date: File a combined Section 8 Declaration and Section 9 Renewal Application. Another six-month grace period with surcharge applies.
• Every 10 years thereafter: The combined Section 8 and Section 9 filing must be repeated to maintain the registration.

The Section 8 Declaration requires the registrant to provide a specimen showing current use in commerce for each class in the registration. If the mark is no longer used for some of the listed goods or services, those must be deleted from the registration when the Declaration is filed. Retaining goods or services in a registration for which the mark is not actually being used leaves the registration vulnerable to a cancellation petition filed by a third party.

Section 15 Declaration of Incontestability

When filing the first Section 8 Declaration between years five and six, many trademark owners simultaneously file a Section 15 Declaration of Incontestability under 15 U.S.C. § 1065. This is optional but highly advantageous. Incontestable status is available if: (1) the mark has been in continuous use in commerce for five consecutive years following registration; (2) there is no pending proceeding involving the mark before the USPTO or in the courts; (3) the registration has not been cancelled; and (4) the registrant files the declaration within one year of the five-year anniversary of continuous use.

Incontestability substantially limits the grounds on which third parties can challenge the validity of the mark. Under 15 U.S.C. § 1115(b), an incontestable registration is conclusive evidence of the registrant’s exclusive right to use the mark in connection with the registered goods or services. Challengers cannot attack the mark as merely descriptive, lacking secondary meaning, or not functioning as a trademark—all defenses that are available against contestable registrations. This makes incontestability one of the most powerful tools for strengthening a trademark portfolio, and trademark owners should always evaluate whether to combine a Section 15 Declaration with their Section 8 filing.

Common Mistakes That Jeopardize Trademark Registrations

Missing the Section 8 or Section 9 deadline—even by one day after the grace period—results in cancellation of the registration with no path to revival. The USPTO will not accept late filings. Other mistakes include:

• Submitting a specimen that does not show the mark as currently registered (e.g., a modified logo that has not been separately registered).
• Failing to delete goods or services from the registration for which use has been discontinued, which invites third-party cancellation petitions.
• Filing the Section 8 Declaration under an old address or entity name without first recording an assignment or change-of-address form.
• Relying on USPTO reminder notices, which the USPTO does not send—deadlines must be independently tracked.

Trademark portfolio management is not a set-it-and-forget-it exercise. If you have registered trademarks and are uncertain whether your maintenance filings are current, the trademark attorneys at Revision Legal can audit your portfolio and handle all necessary filings. Call us at 231-714-0100 or 855-473-8474.