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Post Registration Timeline for Madrid Protocol-Based Registrations

Place your mouse over the steps for more information on each step.


Step 1. Mark registers: After a U.S. registration issues, to keep the registration “alive” or valid, the U.S. registration owner must file specific documents and pay fees at regular intervals. The deadlines for filing Section 71 declarations of use and excusable nonuse are calculated from the registration date shown on the U.S. registration certificate. However, the deadlines for renewing the international registration with the International Bureau of the World Intellectual Property Organization are calculated from the international registration date. Failure to file both of these documents will result in the cancellation of your U.S. registration. The USPTO does not issue reminders of these deadlines. Go to step 2 for required post registration documents and go to Step 2a for optional post registration documents.

Step 2. Required post registration documents: The following documents must be timely filed to maintain a registration. Go to Step 3.

Step 2a. Optional post registration documents: The following documents are not mandatory to maintain a registration. For optional documents that may be filed anytime go to Step 3a and for optional documents that may be filed every 5 years or more go to Step 4a.

Step 3. Owner files Section 71 declaration of use or excusable nonuse: Between the 5th and 6th year after the USPTO issues the U.S. registration, the U.S. registration owner must file directly with the USPTO a declaration of use or excusable nonuse. This declaration requires a fee and specimens of use. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the U.S. registration and invalidation of the extension of protection of the international registration to the United States. The USPTO does not issue a reminder of this deadline. Go to Step 4.

Step 3a. Section 7(d) request for new U.S. registration certificate: The owner of a registered extension of protection to the U.S. may only request a new U.S. registration certificate for the unexpired part of the registration period after filing the appropriate change request with the International Bureau of the World Intellectual Property Organization. Any change in ownership, such as by assignment, transfer, or change of name, must first be recorded at the International Bureau (IB). The IB will notify the USPTO of any changes of ownership that affect the extension of protection to the United States, including partial changes of ownership of less than all of the goods and/or services. The USPTO will update its electronic records to reflect the change. If the owner would like a new U.S. registration certificate, the owner must submit a separate request and pay the required fee. Go to Step 3b.

Step 3b. Section 7(e) voluntary surrender of U.S. registration: A U.S. registration owner may voluntarily surrender the U.S. registration, in its entirety or for a portion of the goods and/or services. No fee is required. Go to Step 3c.

Step 3c. Sections 7(g) and 7(h) amendment and correction of U.S. registration: A U.S. registration owner may file a request to amend or correct the U.S. registration at any time, but only in limited circumstances where the change will affect only the extension of protection to the United States. No amendments to the mark or to broaden the goods and/or services are allowed. A fee is required, except for corrections due to USPTO error.

Step 4. Owner files Section 71 declaration of use or excusable nonuse: Between the 9th and 10th year after the registration date and every 10 years thereafter, the U.S. registration owner must file directly with the USPTO a declaration of use or excusable nonuse. This declaration requires a fee and specimens of use. The filing may also be made within a 6-month grace period after the 10th year with the payment of an additional fee. Failure to file this declaration will result in the cancellation of the U.S. registration and invalidation of the extension of protection of the international registration to the United States. In addition, the international registration must be renewed with the International Bureau every 10 years from the date of international registration. Failure to file this renewal will result in the cancellation of the U.S. registration. The USPTO does not issue a reminder of these deadlines.

Step 4a. Section 15 declaration of incontestability: A Section 15 declaration may be filed for a mark on the Principal Register that has been in continuous use in commerce for a period of 5 years after the date of the U.S. registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark. “Incontestability” enhances the legal presumptions the U.S. registration receives. This declaration requires a fee.

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Last Modified: 10/5/2012 3:10:00 PM