Registered Extension of Protection Maintenance Requirements Maintaining a registration originally based on Section 66(a) - Madrid Protocol
Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79' series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol.
Holders must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in the U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO will refer to such filings as "Section 71 affidavits" or "Declarations under Section 71."
Section 71 affidavits will be filed either electronically using a TEAS form or via paper. The contents required are itemized in 15 U.S.C. §1141k(b). See General Information below for details.
Affidavits must be filed between the 5th and 6th anniversary dates of the issuance of the certificate of extension of protection (i.e. U.S. registration for a §66(a) application). There is a six (6) month grace period after the 6th anniversary date in which an affidavit may be filed with a mandatory grace period fee. Further affidavits must be filed within the year before the 10th year anniversary or in a six (6) month grace period thereafter, with payment of a grace period fee.
Registrations issued under Section 69, 15 U.S.C. §1141i, will require the submission of an affidavit of continuing use or excusable non-use. An extension of protection remains in force for the term of the international registration on which it is based, but only if the holder also files the required affidavits of continued use (or excusable non-use) under Section 71, 15 U.S.C. §1141k. The contents of such affidavits will consist of a listing of the goods and/or services on or in connection with which the mark is in use in commerce and a specimen or facsimile showing the current use of the mark. If the mark is not currently in use, to avoid cancellation, the affidavit must set forth that such nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.
Section 71 affidavits will be examined in the same manner as affidavits presently submitted under Section 8, 15 U.S.C. §1058. The USPTO will notify the holder of the acceptance or refusal of the affidavit, and provide the holder the opportunity to correct any deficiencies found or otherwise respond to issues raised in the course of examination of the affidavits. 37 C.F.R. §§7.37-7.39. Refusals to accept an affidavit may also be the subject of a petition to the Director. 37 C.F.R. §7.40.
Time Periods and Grace Periods
Effective March 17, 2010, the Trademark Act provides for the following time periods.
On or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States, or in the six-month grace period immediately following, with payment of the grace period surcharge;
Within the year preceding the end of each ten-year period after the date of registration in the U.S., or in the six-month grace period immediately following, with payment of the grace period surcharge.
The first date of registration of an extension of protection was February 1, 2005. Thus, the first Section 71 affidavits could not be filed until February 1, 2010.
Method of Filing
The Trademark Electronic Application System (TEAS) provides for the submission of Section 71 declarations or affidavits, through Form #9 in the Registration Maintenance/Renewal Forms category. Declarations or affidavits submitted on paper will also be accepted when mailed to the general address for trademark correspondence. Click here to see an example of an acceptable Section 71 declaration.
Results of Failure to File
If a holder fails to file a Section 71 affidavit within the statutorily required time frame, the U.S. Registration will be cancelled. Upon cancellation, the USPTO will notify the International Bureau of the World Intellectual Property Organization (WIPO) of the invalidation of protection of the mark in the United States. After notification of invalidation, a holder may seek protection for the same mark in the U.S. by submitting a subsequent designation of the international registration. The subsequent designation may contain all or fewer than all of the goods and services in the international registration. After notification of the subsequent designation to the USPTO, the mark will be examined to determine if the holder is entitled to protection under the U.S. Trademark Act as of the effective date of the subsequent designation.
For further information about invalidation of an extension of protection and subsequent designation, please review the Guide to the International Registration of Marks under the Madrid Agreement and Madrid Protocol, available on the WIPO website at http://www.wipo.int/madrid/en/guide/index.html.
Renewal of a Registered Extension of Protection
The holder of a registered extension of protection of an international registration to the United States must renew the international registration with the International Bureau (IB). 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.
The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website.
On-line renewals may be filed through the WIPO Marks E-Renewal System.