Inbound Madrid Protocol post registration

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To maintain your U.S. registered extension of protection, you must renew your international registration directly with the International Bureau every 10 years from the date it issued. If you don’t renew, the International Bureau will cancel your international registration. You must also renew your U.S. registered extension of protection at the same time that you renew the international registration. If you don't comply with these renewal requirements, your U.S. registration will be canceled.

In addition to renewing with the International Bureau, you must also continue to use your registered trademark in U.S. commerce and provide us evidence of that at periodic intervals. If anyone can show that you're not using your trademark with your goods or services, your registration may be subject to expungement, which could result in some or all goods or services being canceled.

If you’re not domiciled in the United States, you need a U.S.-licensed attorney to file any of the documents discussed on this page. 

There are other, optional documents you can file with the USPTO to amend your U.S. registration as needed.

Maintaining your U.S. registered extension of protection with the USPTO

You must demonstrate that you are using your trademark in commerce in the United States by periodically filing a Declaration of Use or Excusable Nonuse, known as a Section  71 declaration. Use the Section 71 form in TEAS and pay the applicable fees when you file.

The Declaration of Use or Excusable Nonuse must include a verified statement that you’re using your trademark in U.S. commerce, along with a specimen demonstrating that use. 

Before you file, evaluate your trademark usage. If you're not using your trademark in U.S. commerce for some goods or services in the registration, don't include them in your declaration. Alternatively, you can claim excusable nonuse for those goods or services, but you must tell us the special circumstances that are preventing you from using your trademark with those goods or services and when you expect to start again. See keeping your registration alive for more details on these requirements. 

If you don’t file a Section 71 declaration, your U.S. registration will be canceled, and we’ll notify the International Bureau that your registered extension of protection in the United States is no longer valid.  

When to file Section 71 declaration 

You must file your Section 71 Declaration of Use or Excusable Nonuse within each of these deadlines:   

  • Between the fifth and sixth year after the registration date of your extension of protection with the USPTO  
  • Between the ninth and tenth years after the registration date of your extension of protection with the USPTO  
  • Every 10 years after that between the 19th and 20th years, 29th and 30th years, etc. 

There is a six-month grace period after each deadline when you can still file, but you must pay a grace period fee. If you don't file before the end of the grace period, your registration will be canceled.  For more information, view the post-registration timeline for Section 66(a) maintenance filings

Delete goods or services promptly if no longer in use

You are legally required to keep your U.S. registration accurate so that it only lists goods and services for which you can provide evidence of your trademark use in U.S. commerce, or else request an exception in your declaration as excusable nonuse. 

If you permanently stop using your trademark in U.S. commerce for any of the goods or services in your registration, you should promptly delete them from your U.S. registration by filing a Section 7 request to delete goods or services.

You generally won't be charged a fee for deleting goods or services in this way between maintenance filings. If you didn’t update your goods or services prior to filing a required maintenance document and need to delete goods or services as a result, you may be required to pay fees. For information on the legal requirements, see TMEP section 1609

Voluntary surrender or removing goods or services from your registration

You may voluntarily surrender your U.S. registration, in its entirety or just for a portion of the goods or services, by filing the Section 7(e) voluntary surrender form. We will cancel your registration or just delete the indicated goods or services from your registration. There is no fee to file a Section 7(e) voluntary surrender. 

If your U.S. registered extension of protection is canceled

If your U.S. registration is canceled, but you still want a registration for that trademark in the United States, you have three options: 

  • Designate the United States for protection in a new subsequent designation for extension of protection filed through the Madrid Protocol. 
  • File a new application for a U.S. trademark directly with the USPTO. See Trademark basics to get started. 
  • In some circumstances, you can request transformation of your extension of protection.

Transformation into U.S. national application

If your international registration is completely or partially canceled due to a ceasing of effect of your basic application or registration, you may convert your U.S. registered extension of protection to a U.S. national registration. This process is called transformation.  

Transformation is only available if your international registration was canceled because your office of origin canceled your basic application or registration. It's not available if your international registration expired because you failed to renew it, if you surrendered your international registration, or if you voluntarily deleted goods or services from the international registration. 

File your request for transformation directly with the USPTO within three months of the date your international registration was canceled due to a ceasing of effect of the basic application or registration. If you're foreign-domiciled, your U.S.-licensed attorney must file the request. Transformed applications are examined as a domestic application and require a new application fee.

Optional post-registration documents

Section 7 amendment and correction of registration 

You may file a request to amend or correct your U.S. registration at any time, but only in limited circumstances where the change affects only the extension of protection to the United States and does not affect data that is controlled by the International Bureau. You cannot amend the trademark itself or broaden the goods or services. You also cannot change the owner’s name and address except to correct a USPTO data processing error. A fee is required for amendments and corrections, except for corrections due to USPTO error. 

Declaration of incontestability

After your U.S. registration has been in continuous use for five years, you may file a Section 15 declaration of incontestability. There must be no adverse decision or pending proceeding involving rights to the trademark. “Incontestability” strengthens your registration and may protect your trademark from certain petitions to cancel it. This declaration requires a fee and may only be filed after five years of continuous use of your U.S. registration.  

If your trademark qualifies for incontestability between the fifth and sixth years after registration, you can combine the filing with your Section 71 filing using the combined declarations of use and incontestability under Section 71 and Section 15 form. For more information, see TMEP section 1605.

Request new U.S. registration certificate after ownership change

To change the ownership details on a U.S. registered extension of protection, you must record the change with the International Bureau. The International Bureau then notifies us of any ownership changes.  

You may request a new U.S. registration certificate using the Section 7 request in TEAS